Rondele Acquisitions, LLC v. Monteagle Media
Claim Number: FA0511000596032
PARTIES
Complainant is Rondele
Acquisitions, LLC (“Complainant”), represented by Andrew S. Ehard, of Merchant & Gould, P.C., P.O. Box 2910, Minneapolis, MN
55402-0910. Respondent is Monteagle Media (“Respondent”),
Wildbrook Run, Bloomfield Hills, MI 48304.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pubcheese.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 14, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 14, 2005.
On November 16, 2005, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <pubcheese.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On November 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 6, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@pubcheese.com by e-mail.
A timely Response was received and determined to be complete on December
5, 2005.
On December 13, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Rondele Acquisition, LLC (Complainant) has a principal place of
business in Merril, Wisconsin.
Complainant has used the designation PUB CHEESE as a trademark in
connection with cheese products since at least 1981.
Complainant and its predecessors in interest have continuously used the
PUB CHEESE mark and owns two United States trademark registrations for the
marks PUB CHEESE and PUB CHEESE and design as outlined in Registration Nos.
2,538,049 and 1,918,175. Complainant’s
Registration 1,918,175 is incontestable by operation of law.
Complainant has invested substantial sums of money in developing and
marketing its PUB CHEESE products and has developed substantial goodwill and
customer loyalty under this trademark.
Complainant operates a website at <rondele.com>.
As a result of Complainant’s decades of bearing the mark, Complainant’s
PUB CHEESE mark has become well known and is entitled to a broad level of
protection.
Respondent has registered the domain name <pubcheese.com>.
Upon information and belief,
Respondent registered the domain on September 11, 2003. The Respondent has no statutory or common
law trademark rights or any other rights or legitimate interests in the mark
PUB CHEESE or in the infringing domain name <pubcheese.com>. The Respondent is not licensed or
authorized to use the PUB CHEESE mark of the Complainant for any purpose.
Respondent registered and used in bad faith a domain name that is
confusingly similar to the mark of Complainant. There is no evidence the domain name was registered for a
legitimate reason. The evidence shows
that Respondent registered the domain name for the purpose of commercial
gain. Respondent’s website displays the
wording PUB CHEESE and offers cheese products virtually identical to the
products offered by Complainant.
Respondent is using the domain name to lure unsuspecting consumers
seeking to find the Complainant to a commercial website that advertises and
promotes virtually the identical cheese products.
Complainant maintains that Respondent is attempting to attract for
commercial gain, Internet users to its website, by creating a likelihood of
confusion with Complainant’s mark as to the sponsorship, source, and
affiliation of Respondent’s site.
On March 14, 2005, Complainant wrote a cease and desist letter to
Respondent. Respondent apparently
answered by telephone. Complainant
wrote several more letters to Respondent regarding the use of the domain name.
B. Respondent
Miracle Max (Respondent) has a principal place of business in
Bloomfield Hills, MI and sells a high-end cheese spread just in the Metro
Detroit Area. The business was
established in September of 2003. My
wife and I run this very small business and the website is our only source of
information for our customers. Our
product is called MIRACLE MAX PUB CHEESE AND SPEAD. Pub cheese is only one element of the name. It is really centered
on Miracle Max, our golden retriever and mascot. We manufacture a cheese spread that is for sale in just 15 stores
as listed on the website. Our website
simply directs customers who want Miracle Max Pub Cheese and Spread to these 15
stores. We are not a threat to Rondele
in the least. They did not even become
aware of our product until it was on the market for two years. Pub Cheese is a generic type of cheese
originating in England. Neither the
Complainant’s nor the Respondent’s product in any way would qualify as “Pub
Cheese.” It is similar to Swiss cheese
being sold under the Kraft or Kroger brand name. By registering the website <pubcheese.com>, my wife
and myself simply wanted a site that could tell the story of our cheese. At the time, we did not even know of the
Rondele product that used the word Pub Cheese.
C. Additional Submissions
None
FINDINGS
1.
Complainant is
a business organization that apparently sells cheese products under the name
Rondele Specialty Foods. One of these
products is Pub Cheese, a gourmet spreadable cheese. Pub Cheese is marketed on the website
<rondele.com/pubcheese>.
2.
Complainant
owns a United States Trademark Office Registration for a typed drawing
containing the words PUB CHEESE, and a second registration for a design plus
words, letters, and/or numbers containing the words PUB CHEESE. Each of these registrations bear the
notation that “No claim is made to the exclusive right to use ‘cheese’ apart
from the mark as shown.”
3.
Complainant
alleges that Respondent registered the domain name <pubcheese.com> on
September 11, 2003. Respondent does not
contest this allegation, and there being no other information in the pleadings
to show otherwise, the date is taken as established.
4.
Respondent
markets on the <pubcheese.com> website a product called MIRACLE
MAX’S Pub Cheese & Spread.
5.
Respondent
alleges that the business selling MIRACLE MAX’S Pub Cheese & Spread has
been in business for three years.
Complainant does not challenge this assertion so it is taken as proved.
6.
Respondent’s
domain name, <pubcheese.com> is identical to Complainant’s word
mark, PUBCHEESE.
7.
Complainant
fails to prove that Respondent is without rights to or legitimate interests in
the domain name.
8.
Complainant
fails to prove that Respondent registered and used the domain name in bad
faith.
9.
Complainant’s
demand for relief must be denied.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Complainant’s ownership of the registration
with the United States Patent and Trademark Office for the word mark, PUB
CHEESE, is sufficient to permit Complainant to proceed under Policy ¶
(4)(a)(i). See Am. Online, Inc. v.
Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that
successful trademark registration with the USPTO creates a presumption of
rights in the mark).
Complainant contends that the <pubcheese.com>
domain name is identical to Complainant’s PUB CHEESE mark because the domain
name incorporates Complainant’s mark in its entirety with the only differences
being the omission of the space between the words “pub” and “cheese” and the
addition of the generic top-level domain “.com.” Minor alterations to Complainant’s registered mark are
insufficient to negate the identical aspects of Respondent’s domain name
pursuant to the Policy. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com to he identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names.”); see also Victoria’s Secret v. Hardin,
FA96694 (Nat. Arb. Forum Mar. 31, 2001).
Complainant prevails under the requirements
of Policy ¶ (4)(a)(i).
Complainant contends that the Respondent has
no statutory or common law trademark rights or any other rights or legitimate
interests in the mark PUB CHEESE or in the infringing domain name. Respondent is not licensed or authorized to
use the PUB CHEESE mark of the Complainant for any purpose. Once such a showing is made, the burden
shifts to Respondent to establish rights or legitimate interests in the
disputed domain name. See G. D. Searle
v. Martin Mktg., FA118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that, where the complainant has asserted that the respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is uniquely within the knowledge and control
of the respondent); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000).
Respondent contends that PUB CHEESE is a generic term descriptive of a
type of cheese originating in England.
Respondent contends that the term PUB CHEESE is like Swiss cheese as a
descriptive term referring to a type of cheese rather than in a trademark
sense. Respondent notes that Complainant’s
product is sold as Rondele Pub Cheese and Respondent’s product is sold as
Miracle Max Pub Cheese and Spread.
The Panel is of the opinion that PUB CHEESE,
as used by Respondent, is being used because of its descriptive quality rather
than due to any trademark value the term may have. “It is Complainant’s burden to prove that a Respondent lacks
rights or legitimate interests in the Domain Name. Because there is a reasonable connection between Respondent’s use
of the domain name as a descriptor, rather than for any trademark value,
Complainant has not succeeded in proving that Respondent lacks rights or
legitimate interests in the Domain Name.”
See N.J. Divorce Ctr., Inc. v. iGenesis Ltd., FA584783 (Nat. Arb.
Forum Dec. 14, 2005).
Respondent’s contention that the term, PUB
CHEESE, is generic, seems correct.
Complainant offers no evidence to rebut this contention except its bald
assertion that PUB CHEESE is a famous mark.
“Genericness, if established, will defeat a
claim of trademark rights, even in a mark which is the subject of incontestable
registration.” See Rollerblade, Inc.
v. CBNO and Ray Redican Jr., D2000-00427 (WIPO Aug. 24, 2000); see
also Soccerplex, Inc. v. NBA Inc., FA94361 (Nat. Arb. Forum May 25, 2000)
(finding that the complainant failed to show that it should be granted
exclusive use of the domain name <soccerzone.com>, as it contains two
generic terms and is not exclusively associated with its business).
Clearly, PUB CHEESE, is not a term
exclusively associated with Complainant’s business. Even the trademark registrations state that Complainant has no
exclusive right to use the term, Cheese.
Complainant certainly cannot claim the exclusive right to use the term,
Pub. When it is not proven that
Respondent has converted a famous mark into a domain name calculated to benefit
from association with the mark and instead appears to be a case where the
public created a generic term matching the mark, Respondent has not been proven
to be without rights and legitimate interests in the generic domain name. See
Rollerblade, Inc. v. CBNO and Ray Redican Jr., supra.
Where Respondent has shown that the domain
name is comprised of generic and/or descriptive terms, and in any event, is not
exclusively associated with Complainant’s business, the Complainant has not met
its burden in proving that Respondent had no rights or legitimate interest in
the domain name. See Energy Source,
Inc. v. Your Energy Source, FA96364 (Nat. Arb. Forum Feb. 19, 2001); see
also Successful Money Mgmt. Seminars, Inc., v. Direct Mail Express, FA96457
(Nat. Arb. Forum Mar. 7, 2001) (finding that “seminar” and “success” are
generic terms to which the complainant cannot maintain exclusive rights); see
also Coming Attractions, Ltd. v. Comingattractions.com, FA94341 (Nat. Arb.
Forum May 11, 2000) (finding a respondent had the right to register the subject
domain name, <comingattractions.com> based upon the generic use of the
term “coming attractions”). Common
words and descriptive terms are legitimately subject to registration as domain
names on a first-come, first-served basis.
See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May
12, 2000).
Respondent contends that before any notice of
the dispute, its use of the domain name corresponding to the domain name in
connection with a bona fide offering of goods or services was
accomplished. See Policy ¶
4(c)(i). Respondent advertised its
product, Miracle Max Pub Cheese and Spread on the <pubcheese.com> website
for years prior to notice of this suit.
Under the circumstances of this case, it is found that this constitutes
a bona fide offering of goods or services under the Policy.
Complainant does not prevail under Policy ¶
4(a)(ii).
Complainant bears the burden of proving that
Respondent registered and used the domain name in bad faith. The elements set out in the Policy require
some willful intent be shown on the part of Respondent to support bad
faith. See Policy ¶ (4)(b). Respondent alleges that at the time of
registration and first use, Respondent “did not even know of the Rondele
product that used the word Pub Cheese.”
“If at the time of registration Respondent lacked actual knowledge or
belief of the Complainant’s trademark rights… then a finding of bad faith
registration is precluded. To hold
otherwise would imply that the mere fact of trademark registration necessitates
a finding of bad faith. However, a
finding of bad faith by its nature entails that there be some intentional act
on the part of the party purported to be acting in bad faith such that that
party reasonably believes or should believe it is offending the rights of
another.” See N.J. Divorce Ctr.,
Inc. v. iGenesis Ltd., supra.
Complainant shows no evidence of bad faith
other than bald assertions without supporting facts. Where the facts involve a generic term, and there is no direct
evidence that Respondent registered the domain name with the intent of
capitalizing on Complainant’s trademark interest, no bad faith has been
proved. See Lumena s-ka zo.o. v.
Express Ventures LTD, FA94375 (Nat. Arb. Forum May 11, 2000); see also
Goldmasters Precious Metals v. Gold Masters srl, FA95245 (Nat. Arb. Forum
Aug. 21, 2000).
Complainant does not prevail under Policy ¶
4(a)(iii).
DECISION
Complainant not having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 27, 2005
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