Canned Foods, Inc. v Ult. Search Inc.
Claim Number: FA0012000096320
The Complainant is Canned Foods, Inc., Berkley, CA, USA ("Complainant") represented by Jennifer L. Lefere. The Respondent is Ult. Search Inc., Central, Hong Kong ("Respondent") represented by John Berryhill.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "groceryoutlet.com", registered with Tucows.
The panelists certify 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 a panelist in this proceeding.
Panelists are Judge Theodore Kupferman (Retired), Diane Cabell, and Judge Karl V. Fink (Retired) as Chair.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 22, 2000; the Forum received a hard copy of the Complaint on December 26, 2000.
On December 28, 2000, Tucows confirmed by e-mail to the Forum that the domain name "groceryoutlet.com" is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 2001 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 Respondentís registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on January 19, 2001.
Respondent submitted a Response to the Complaint, Complainant submitted an Additional Response and Respondent submitted an Additional Response. All submissions by the parties were considered by the panel.
On January 31, 2001, pursuant to Complainantís request to have the dispute decided by a Three-Member Panel, the Forum appointed as panelists Judge Theodore Kupferman (Retired), Diane Cabell, and Judge Karl V. Fink (Retired) as Chair.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant is the owner of the common law service mark "Grocery Outlet". Complainant has been in business since August 1961 and has been offering the described services under the mark "Grocery Outlet" since at least 1987.
Complainant is also the owner of and has been using the domain name "groceryoutlet.com" since March 2, 1998. The name was originally registered in the name of Complainantís web designer.
The domain name "groceryoutlet.com" is identical to the common law service marks, "Grocery Outlet" and "groceryoutlet.com," both of which are owned by Complainant. Complainant has invested substantial amounts of money in developing and marketing its business under the "Grocery Outlet" mark.
In June 2000, Complainant submitted the proper paper work to transfer the domain name to Complainant. Complainant paid for the transfer with a check which was negotiated. Later when it was claimed by Network Solutions that the payment had not been made, a duplicate payment was made by credit card. Despite this, the domain name registration was deleted and it became available to the public.
Respondent registered "groceryoutlet.com" immediately when the domain name became available. Complainant was unable to get the domain name back from Network Solutions or the current Registrar, Tucows.
Respondent is not offering any bona fide goods or services related to the domain name. Respondent is using the domain name as a generic site consisting of links to providers of various services.
Respondent is using the domain name solely for the purpose of commercial gain by misleadingly diverting customers of Complainant to Respondentís web site.
Respondent has engaged in a pattern of behavior of registering domain names previously registered to others and creating a generic site that does not offer any bona fide goods or services.
Respondentís domain name business is simply an attempt to trade on and profit from the goodwill built up by prior registrants.
Complainantís customers continue to visit the domain name "groceryoutlet.com" expecting to find services provided by Complainant.
Only since receiving the Complaint has Respondent revised its web pages at nearly all the domain names submitted with the Complaint to offer additional information or services. Respondentís actions in changing its web sites to more appropriately reflect the domain names is an admission that it was not making use of those domain names.
All the Respondent has done is to register a generic term as a domain name through an ICANN accredited registrar. Complainant has not met a single condition of the Policy, and the Complaint should be denied.
There is no common law jurisdiction in which trade or service mark rights will accrue to a generic designator of goods or services. The name of a product or service itself is the very antithesis of a trade or service mark. Roux Laboratories v. Clairol, Inc., 427 F2d 823 (C.C.P.A. 1970).
Complainant appears to separately claim a trade or service mark right in the term "groceryoutlet.com". For the purpose of establishing such a right, this term is indistinguishable from the term "Grocery Outlet".
Legitimate rights and interests on the part of the Respondent do not need to constitute trademark rights, but may include use or preparation to use the domain name in connection with a bona fide offering of goods or services.
Complainant admits in the Complaint that "Respondent is using the domain name as a generic site consisting of links to providers of various services." The Respondent agrees with the Complainant.
The Respondent, Ultimate Search, Inc., is in the business of developing themed search portals among other internet development projects, as made apparent in the Complainantís own evidence. The Complainant is correct that the Respondent derives revenue from directing web traffic from the portal site Ė as is the common practice among portal sites generally.
There are no parties who have a registered trademark in the term Grocery Outlet, and a general interest search on the term "Grocery Outlet" reveals that it is in widespread generic use.
There are numerous generic press references employing the term "grocery outlet" to refer to a grocery outlet.
If there were any applicable ICANN policy against making abandoned domain names available for re-registration, then the domain name registration system would be configured to permanently remove all previously registered domain names from availability.
The Complainant owned the domain name under dispute (groceryoutlet.com) for several years during which it maintained a website marketing its goods and services . Complainant lost its domain name registration through the registrarís error or misunderstanding. When the domain became thus available, the Respondent registered it and has been using it as a generic descriptor of the siteís content.
We find that the mark claim has not been proven, that the Respondentís interest is legitimate and that bad faith has not been proven.
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.
Identical and/or Confusingly Similar
The panel does not address the validity of the Complainantís common law trademark rights in the term "grocery outlet" except to say that substantial evidence was supplied to indicate that the mark rights extended only to the words when they appeared in combination with a particular design and that no rights whatsoever exist as to the words themselves either by registration or by common law since they are generic terms for the goods and services sold by the Complainant, which is in fact an outlet for the sale of groceries. Generic terms receive no protection in US trademark law when they are used to label the goods and services that they describe. Evidence was supplied that Claimant knew this to be the case when it disclaimed protection for these terms in its federal trademark registration.
The Complainantís mark is comprised of generic terms that are not exclusively associated with Complainantís services. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (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); see also Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration").
Although the domain name is identical to a term in which the Complainant alleges trademark rights, the panel is unable to determine whether or not finds Complainant is not entitled to protection under the ICANN policy.
Complainant has not proven this element.
Rights or Legitimate Interests
Respondent claims that its domain name was registered to be usedfor use in connection with Respondentís various Internet development projects, which constitutes demonstrable preparations as well as a bona fide use. See SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
The Respondent is using the domain "groceryoutlet.com" for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site. The panel finds that this is a legitimate interest in the domain name.
Complainant has not proven this element.
Registration and Use in Bad Faith
Complainant failed to provide sufficient evidence to support a 4(b) claim of bad faith.
The suggested elements of Section 4(b) of the Policy are as follows.
(i) circumstances indicating that you [the domain holder] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
No evidence was presented on this point.
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;
Complainant alleges that Respondent has registered many domain names, but establishes no connection between these names and any other trademarks. Consequently, one cannot conclude that it is Respondentís purpose to prevent mark owners from reflecting their marks online. The most that Complainant asserts is that Respondent has a pattern of registering domain names that once belonged to other parties and this is not an actionable offense under the UDRP.
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
No evidence was presented as to any "primary purpose" of disrupting the Complainantís business. The disruption to Complainantís business appears to have been caused by the accidental lapse in the registration, something over which the Respondent had no control.
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant alleges that there is customer confusion, particularly by its own customers expecting to find familiar material at this domain address. Complainant did not, however, provide any evidence of such confusion or that this was Respondentís intended design. It appears to be the natural consequence of losing the domain registration. Where the domain name is a generic term, it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them. There are dozens of other enterprises that use the term "Grocery Outlet," therefore one cannot conclude that Complainant must necessarily be the special target. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainantís trademark interest).
No claim is made that Respondent is trying to pass itself off as affiliated with the Complainant. The Complaint acknowledges in Section 5(b)(ii) that these customers cannot find the familiar features they saw when Complainant owned the domain, implying which indicates that the two websites are not similar in appearance.
Complainant alleges that Respondent derives revenue from its site when users click on the links. If this allegation were substantiated, it would support a finding of a legitimate right or interest in the domain, not bad faith. The mere fact that Respondent gains income from the domain name is not, in itself, bad faith no more thannor is the fact that not all of Respondentís domain names resolve to useful or informative websites. It is not the ownership of multiple domains that constitutes bad faith, it is the intent to harm the mark owner that defines cybersquatting. Such intent was not established.
Complainant has not proven this element.
THE PANEL DIRECTS THAT THE DOMAIN NAME "groceryoutlet.com" REMAIN WITH RESPONDENT, ULT. SEARCH, INC.
Judge Karl V. Fink (Retired), Chair
Diane Cabell, Panelist
Judge Theodore Kupferman (Retired), Panelist
Dated: February 13, 2001
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