Triple Crown Nutrition, Inc. v. Walter De Ruysser
Claim Number: FA1402001545525
Complainant is Triple Crown Nutrition, Inc. (“Complainant”), represented by Eran Kahana of Maslon Edelman Borman & Brand, Minnesota, USA. Respondent is Walter De Ruysser (“Respondent”), represented by Dirk Caluwaerts of Bureau M.F.J. Bockstael nv, Belgium.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <triplecrownhorsefeeds.com>, registered with Ascio Technologies, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2014; the National Arbitration Forum received payment on February 25, 2014.
On February 28, 2014, Ascio Technologies, Inc confirmed by e-mail to the National Arbitration Forum that the <triplecrownhorsefeeds.com> domain name is registered with Ascio Technologies, Inc and that Respondent is the current registrant of the name. Ascio Technologies, Inc has verified that Respondent is bound by the Ascio Technologies, Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@triplecrownhorsefeeds.com. Also on March 3, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received from Respondent and determined to be complete on March 19, 2014.
On March 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant, internationally known manufacturer and seller of a variety of horse feed products and supplies, has used the TRIPLE CROWN mark since 1966. Complainant’s products are sold through an authorized distributor network covering the USA, Canada, Japan, Latin America, Puerto Rico and the Caribbean, but not in Belgium, Luxembourg or The Netherlands.
b) Complainant has rights in the TRIPLE CROWN mark, used in connection with the manufacture and sale of horse feed products and supplies. Complainant owns registrations for the TRIPLE CROWN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 901,870 registered November 3, 1970). Complainant also owns Trademark Registrations in other jurisdictions around the world, including with the German Patent and Trade Mark Office (“DPMA”) (Reg. No. 30029167 registered July 4, 2000).
c) Complainant has been in business for nearly forty years and has made significant investments in advertising and promotion of its products, including through its own primary website, <triplecrownfeed.com>, and social networking sites such as Facebook, LinkedIn, and Pinterest.
d) Respondent’s <triplecrownhorsefeeds.com> domain name is confusingly similar to Complainant’s TRIPLE CROWN mark. It incorporates Complainant’s mark in its entirety while adding the generic or descriptive terms “horse” and “feeds” and the generic top-level domain (“gTLD”) “.com.”
e) Respondent does not have any rights or legitimate interests in the <triplecrownhorsefeeds.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its TRIPLE CROWN mark in any way. The WHOIS record for the disputed domain name identifies the registrant as “Walter De Ruysser.” The <triplecrownhorsefeeds.com> domain name resolves to a website offering third-party horse feed products that compete with those offered by Complainant.
f) Respondent registered and is using the <triplecrownhorsefeeds.com> domain name in bad faith. The disputed domain name diverts potential customers away from Complainant and creates the mistaken conclusion among Internet users that Respondent’s competing horse feed business is directly affiliated with Complainant.
g) Respondent has opportunistically taken advantage of Complainant’s hard-earned goodwill associated with its TRIPLE CROWN mark because Respondent registered the <triplecrownhorsefeeds.com> domain name thirty-nine years after Complainant’s first use of the mark, which is internationally known.
h) Respondent has knowledge of Complainant’s TRIPLE CROWN mark prior to registering the <triplecrownhorsefeeds.com> domain name because Complainant’s mark has been in use for nearly four decades and Complainant registered its own <triplecrownfeed.com> domain name ten years prior to Respondent’s registrations of the disputed domain name.
B. Respondent
a) Respondent owns rights in the TRIPLE CROWN mark by virtue of its Trademark Registration with the Benelux Trade Mark Register (Reg. No. 644431 registered February 17, 1999). This Trademark is used in connection with the sale of horse feeds in Belgium, The Netherlands and Luxembourg. Complainant filed an Application with OHIM for the TRIPLE CROWN mark, which Respondent contested, and OHIM subsequently dismissed Complainant’s Trademark Application.
b) Respondent is a Belgium-based competitor and has built a well-known business platform for his specific products over many years. Triple Crown Horse Feed is the name of the product sold by Respondent.
c) Respondent contends it did not register and is not using the <triplecrownhorsefeeds.com> domain name in bad faith because at the time of registration, Complainant had not used the expression “triple crown horse feeds” to market its products, Respondent chose this domain name to refer to his specific products, and Respondent had a legitimate business interest which he connected to the disputed domain name.
d) Respondent registered the domain name on May 20, 2010.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name is confusingly similar to a Trademark in which Complainant has rights.
2) Since Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 contends it has rights in the TRIPLE CROWN mark, used in connection with the manufacture and sale of horse feed products and supplies. Complainant owns registrations for the TRIPLE CROWN mark with the USPTO (Reg. No. 901,870 registered November 3, 1970). Complainant also owns a Trademark Registration with the DPMA (Reg. No. 30029167 registered July 4, 2000). Respondent resides or operates in a different country than that in which Complainant holds its Trademark Registrations. However, to establish that it has rights in a mark, a complainant need not own a registration in a respondent’s country of operation, it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the TRIPLE CROWN mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns valid Trademark Registrations for the mark in at least two jurisdictions. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <triplecrownhorsefeeds.com> domain name is confusingly similar to Complainant’s TRIPLE CROWN mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic or descriptive terms “horse” and “feeds” and the gTLD “.com” which is, a product which both Respondent and Complainant sell. The addition of a generic or descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The addition of a gTLD is also irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <triplecrownhorsefeeds.com> domain name is confusingly similar to Complainant’s TRIPLE CROWN mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent does not have any rights or legitimate interests in the <triplecrownhorsefeeds.com> because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its TRIPLE CROWN mark in any way. However, Respondent does not claim to be authorized by Complainant to use the TRIPLE CROWN mark, nor that he is commonly known by the <triplecrownhorsefeeds.com> domain name.
Respondent asserts it owns rights in the TRIPLE CROWN mark by virtue of its Trademark Registration with the Benelux (Belgium, Netherlands, and Luxembourg) Trade Mark Register (Reg. No. 644,431 registered February 17, 1999). Respondent explains that this Trademark is used in connection with the sale of horse feeds in Belgium, The Netherlands and Luxembourg. Respondent states that Complainant filed an Application with the Office for Harmonization in the Internal Market (“OHIM”) for the TRIPLE CROWN mark, which Respondent contested, and OHIM subsequently dismissed Complainant’s Trademark Application.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent states it is a Belgium-based competitor and has built a well-known business platform for its specific products over many years in the threeBenelux nations. There is no evidence of record that Complainant does any business in any of these nations. Respondent explains that Triple Crown Horse Feed is the name of the product sold by Respondent. Using a disputed domain name for a legitimate business purpose satisfies a respondent’s burden under Policy ¶ 4(a)(ii). See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “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,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name). Therefore, the Panel finds that Respondent has rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) in the <triplecrownhorsefeeds.com> domain name because Respondent is making a bona fide offering of goods and services via the disputed domain name.
In Kelly v. Qsoft Consulting Ltd., D2003-0221 (WIPO Apr. 30, 2003), the panel determined that the respondent had concurrent rights and interests in the domain name because the parties had each made legitimate uses of their marks in their respective jurisdictions. There, the respondent did not have any trademark rights at the time it registered the disputed domain name, but it was able to obtain its Trademark Registration in the U.K. prior to the commencement of the proceeding. In contrast with this case, Respondent here has actually obtained a Trademark Registration with the Benelux Trademark Authority in 1999 well before it registered the <triplecrownhorsefeeds.com> domain name in 2005. The Panel notes that the parties operate within the same industry; however, the Panel also notes that the two parties operate in separate geographic markets, which may lessen the likelihood of any direct competition. If there is any overlap in any jurisdiction, any aggrieved party may seek redress in the courts.
Complainant notes in its Complaint that its products are sold through Complainant’s authorized distributor network covering the United States, Canada, Japan, Latin America, Puerto Rico and the Caribbean while Respondent states that it sells horse feeds in the Benelux countries of Belgium, the Netherlands, and Luxembourg. In Kelly, the Panel analyzed whether the complainant had used the mark in question in respondent’s country of residence at the time the disputed domain name was registered. There, the Panel determined the complainant had not demonstrated the extent to which it had established common law rights to the trademark in the U.K. Here, the Panel notes that although Complainant has Trademark Registrations in two jurisdictions, Complainant has not provided any evidence of registration or use of its TRIPLE CROWN mark in the Benelux countries. Therefore, the Panel finds that Respondent has rights and legitimate interests in the TRIPLE CROWN mark pursuant to Policy ¶ 4(a)(ii) because it owns a valid Trademark Registration that predates its registration of the disputed domain name and it operates in a separate geographical market from Complainant.
Complainant has also failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since the Panel concludes that Respondent has rights or legitimate interests in the <triplecrownhorsefeeds.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent contends it did not register and is not using the <triplecrownhorsefeeds.com> domain name in bad faith because at the time of registration Complainant had not used the expression “triple crown horse feeds” to market its products, and Respondent held its own Trademark Registration. Respondent claims there can be no requisite bad faith when Respondent’s only intention in registering the domain name was to market its TRIPLE CROWN goods on the Internet. The Panel finds that Respondent has rights and legitimate interests in this domain name and thus cannot have had the requisite Policy ¶ 4(a)(iii) bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <triplecrownhorsefeeds.com> domain name REMAIN WITH Respondent.
M. Kelly Tillery, Esquire, Panelist
Dated: April 3, 2014
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