Texas Tamale Company, Inc. v. Lee Harper / Gourmet Foods USA
Claim Number: FA1509001636022
Complainant is Texas Tamale Company, Inc. (“Complainant”), represented by John C. Cain of Fleckman & McGlynn, PLLC, Texas, USA. Respondent is Lee Harper / Gourmet Foods USA (“Respondent”), represented by Michael Whittaker, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thetexastamalewarehouse.com>, registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on September 1, 2015; the Forum received payment on September 1, 2015.
On September 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thetexastamalewarehouse.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2015 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@thetexastamalewarehouse.com. Also on September 3, 2015, 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 and determined to be complete on September 23, 2015.
Complainant submitted a timely Additional Submission, which was received on September 28, 2015.
On September 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
On October 3, 2015, Forum received Respondent’s timely Additional Submission.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the TEXAS TAMALE mark with respect to its business of offering Mexican style food products and related goods and services. Complainant registered the TEXAS TAMALE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,045,295, registered Jan. 17, 2006), and has therefore demonstrated rights in the mark per Policy ¶ 4(a)(i). See USPTO registration). Respondent’s <thetexastamalewarehouse.com> domain name (the “Domain Name”) is confusingly similar to Complainant’s TEXAS TAMALE mark, modifying the fully incorporated mark only by adding the article, “the,” to the beginning of the mark, and the generic term, “warehouse,” and the “.com” generic top-level domain (“gTLD”) to the end of it.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name per Policy ¶ 4(c)(ii). Next, Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). Instead, Respondent has used the domain to offer Mexican food products which directly compete with Complainant’s business.
Respondent has registered and used the <thetexastamalewarehouse.com>
domain name in bad faith. Respondent’s offerings of directly competing
products evinces Policy ¶ 4(b)(iii) bad faith disruption. Next, Respondent has
attempted to profit from Internet user confusion, demonstrating Policy ¶
4(b)(iv) bad faith registration and use. Last, Respondent registered the Domain
Name with actual or at least constructive notice of the TEXAS TAMALE mark and
Complainant’s rights in the mark.
B. Respondent
Complainant has no protectable interests in generic/descriptive terms “Texas” and “Tamale.” Complainant’s purported mark and Respondent’s Domain Name are both comprised solely of generic/descriptive terms.
Respondent has rights and legitimate interests in the Domain Name. Without any knowledge of Complainant or its trade name, Respondent began his business offering tamales and other Mexican-style food products as a sole proprietorship under the name, THE TEXAS TAMALE WAREHOUSE, in April 2007. He registered the Domain Name at about the same time. See Unsworn Declaration of Don Lee Harper). Further, Respondent registered that name as the assumed name of his business in Tarrant County, Texas, on August 28, 2007 and reaffirmed that assumed name again on November 30, 2011, when he changed his business address. See Certificates of Assumed Name). He used THE TEXAS TAMALE WAREHOUSE as his trade name from April 2007 until August 2015, when, having received a cease-and-desist demand from Complainant, he changed the name of his business to “Texas Lone Star Tamales” and registered a new domain name, texaslonestartamales.com, in an effort to reach amicable resolution of the tradename issues with Complainant. The Domain Name currently directs Internet users to his website at the new domain name only to expedite his customers’ transition to the new business name. He plans to discontinue any further use of the Domain Name when this transition is complete.
Respondent chose the name THE TEXAS TAMALE WAREHOUSE in 2007 because it accurately described his location and business.
The fact that he sells goods which compete with Complainant does not change the fact that he uses the Domain Name in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i).
Respondent’s descriptive Domain Name evidences its good faith registration and use. Respondent has not intended to divert or disrupt Complainant’s legitimate business, demonstrated by the fact his website is very dissimilar in appearance to that of Complainant. Compare Resp., at Attached Ex. G (Complainant’s home webpage), with Resp., at Attached Ex. H (Respondent’s webpage). Further, Respondent has attempted to gain commercially on his own merits, and not by attempting to trade on the name and good will of Complainant. Complainant has provided no evidence of customer confusion.
Complainant is guilty of Laches in delaying the assertion of this dispute. Justice requires Complainant’s claim to be denied as Respondent has conducted his business using his business name and the Domain Name to establish and grow his business and good will with his customers for over eight years, with no challenge from Complainant.
C. Complainant’s Additional Submissions
Respondent cannot dissect Complainant’s Mark into its component parts and then argue that “Texas” and “tamale” are descriptive, generic terms not entitled to protection. Based upon its federal trademark registrations, Complainant’s TEXAS TAMALE mark has acquired secondary meaning and Complainant has protectable rights in it.
In 2007, before he began using the name “The Texas Tamale Warehouse,” Respondent should have exercised common, reasonable trademark practices and searched the record for any prior use of “Texas Tamale.” His willful blindness in not doing so should not be rewarded. He should be charged with constructive knowledge of Complainant’s right in its Mark.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant uses the TEXAS TAMALE mark with respect to its business of offering Mexican style food products and related goods and services. It registered the TEXAS TAMALE mark with the USPTO under Registry Number 3,045,295 (Jan. 17, 2006), and has therefore demonstrated rights in the mark per Policy ¶ 4(a)(i). See Compl., at Attached Ex. F (USPTO registration). Policy ¶ 4(a)(i) rights are demonstrated where a valid USPTO registration exists. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Nat. Arb. Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i). The Panel finds that Complainant has rights in the TEXAS TAMALE mark within the meaning of Policy ¶ 4(a)(i).
Next, Respondent’s <thetexastamalewarehouse.com> Domain Name is confusingly similar to the TEXAS TAMALE mark. It modifies that mark only by adding the article, “the,” to the beginning of the fully incorporated mark, and the generic term, “warehouse,” and the “.com” generic top-level domain (“gTLD”) to the end of the mark, all while eliminating spacing between words of the mark. Such alterations are insufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See John Fairfax Publ’ns Pty Ltd. v. Pro-Life Domains Not for Sale, FA 213460 (Nat. Arb. Forum Jan. 6, 2004) (“The addition of the article ‘the’ does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i).”); see also 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)); see also Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Nat. Arb. Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). The Panel finds that Respondent’s <thetexastamalewarehouse.com> is confusingly similar to the TEXAS TAMALE mark under Policy ¶ 4(a)(i).
While Respondent contends that the Domain Name is comprised of common and generic/descriptive terms and as such is not entitled to protection, the Panel finds that determination of this issue is not necessary under Policy ¶ 4(a)(i). This portion of the Policy considers only whether Complainant has rights in the mark and whether the Domain Name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show that it does. 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 interest in the 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 asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by the following: (1) Respondent is not commonly known by the name TEXAS TAMALE, and (2) Respondent has not been licensed or permitted to use the TEXAS TAMALE Mark or any domain names incorporating that mark, and uses the Domain Name to misdirect consumers searching for Complainant to its own website, which is not a bona fide offering of goods and services. Based upon these allegations and the supporting facts offered by Complainant, it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
To meet this burden, Respondent shows that he began using THE TEXAS TAMALE WAREHOUSE in April 2007 and used that as his trade name until August 2015, when he changed it in an attempt to reach an amicable settlement of the present dispute with Complainant. He registered THE TEXAS TAMALE WAREHOUSE as an assumed name for his business with the county clerk of Tarrant County, Texas on August 8, 2007 and reaffirmed it when he changed his business address on November 30, 2011. See, Exhibit D (Certificates of Assumed Name) to Response. He registered the Domain Name on or about April 13, 2007 and has used it in connection with his business since then. At the time he began his business and registered the Domain Name he was not aware of Complainant or its trademark rights. He chose that name because it accurately described his location and his business. He did not learn of Complainant until December 2014, when he was contacted by Complainant’s attorney. In 2014 his gross sales exceeded $450,000 and his customers numbered in excess of 5000. See Exhibit C (Unsworn Statement of Don Lee Harper) to Response. This evidence is not disputed, except to the extent that Complainant asserts that Respondent is guilty of willful blindness in having failed to check the record before he began his business in 2007 to determine if his trade name was already taken. On these facts, Respondent has proven that the circumstances listed in Policy ¶ 4(c)(i) and (ii) as demonstrating rights and legitimate interests are present in this case. Before any notice to him of the dispute, he was using the Domain Name and THE TEXAS TAMALE WAREHOUSE in connection with a bona fide offering of goods and services. Also, he was commonly known, at a minimum to his more than 5,000 customers, as THE TEXAS TAMALE WAREHOUSE. This amply demonstrates his legitimate rights and interests in the Domain Name. See 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); see also Always On UPS Sys. Inc. v. Always-On, Inc., FA 114467 (Nat. Arb. Forum Aug. 22, 2002) (finding that because the respondent submitted evidence—press release and product information—that demonstrated that it was commonly known as “always-on” since April of 2000, and it used <alwayson.com> and <always-on.com> to provide software applications to its customers, it had rights or legitimate interests in the disputed domain names). The fact that Respondent used the Domain Name to sell goods that competed with those of Complainant is not sufficient to cause his offering of such goods to become other than bona fide. Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
Complainant argues that Respondent should be charged with constructive notice of Complainant’s Mark before using it in the name of his business and his Domain Name, since it was registered in January 2006. Most UDRP panels have rejected the concept of constructive notice under the Policy, however, and this Panel concurs. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration.").
Based upon the foregoing, the Panel finds that Respondent has rights and legitimate interests in respect of the Domain Name.
Registration and Use in Bad Faith
Considering the findings of the Panel with respect to Rights and Legitimate Interests, the Panel need not and does not address the issue of bad faith registration and use of the Domain Name.
The Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thetexastamalewarehouse.com> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister Panelist
Dated: October 5, 2015
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