Happy's Pizza Company v.
Navigation Catalyst Systems Inc.
Claim Number: FA0705000975493
PARTIES
Complainant is Happy's Pizza Company (“Complainant”), represented by Mark
D. Schneider, of Gifford, Krass, Sprinkle, Anderson &
Citkowski P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <happyspizza.com>, registered with Go Daddy
Software, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Diane Cabell, Houston Putnam Lowry, and Joel
M. Grossman, Chair, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 1, 2007; the
National Arbitration Forum received a hard copy of the Complaint on May 2, 2007.
On May 2, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <happyspizza.com> domain name is
registered with Go Daddy Software, Inc.
and that Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 4, 2007, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 24, 2007 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@happyspizza.com by e-mail.
A timely Response was received and determined to be complete on May 24, 2007.
A timely Additional Submission was
submitted by Complainant and determined to be complete on May 29, 2007.
A timely Additional Submission was submitted by Respondent on June 1,
2007. Both of these Additional Submissions were considered by the Panel.
On June 5, 2007, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Diane Cabell, Houston Putnam Lowry, Chartered Arbitrator, and Joel M.
Grossman, Chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has common law trademark rights in the
term “Happy’s Pizza,” and that Respondent’s domain name, <happyspizza.com>, is identical to or confusingly similar to
the mark. Complainant notes that it has
filed a trademark application with the U.S. Patent and Trademark Office for the
mark, and that the application is now pending. Complainant submitted a Declaration as part of
its trademark application stating that the mark has been used in commerce since
December 1993, and Respondent’s registration of the domain name was July 8,
2004. Complainant further asserts that
Respondent has no legitimate rights or interests in the name. Specifically, Complainant states that
Respondent is not commonly known by the domain name, and does not offer bona fide goods or services to the
public as a pizza parlor or other type of restaurant. Complainant asserts that Respondent is not
making a legitimate noncommercial use of the domain name, since it is using the
name to advertise restaurant services or products. Finally, Complainant contends that Respondent
registered and continues to use the name in bad faith. Respondent asserts that Complainant has “a
long history as a cybersquatter” and cites other cases in which courts or other
ICANN panels have so held. Complainant
further asserts that Respondent is using the domain name to disrupt
Complainant’s business and to confuse the public as to the source of
Respondent’s domain name.
B. Respondent
Respondent challenges Complainant’s assertion that it has a common law
trademark in the “Happy’s Pizza” name. Respondent points out that Complainant has not submitted any
evidence which would demonstrate that the public associates the term with
Complainant, or that there is a secondary meaning in the term. In fact, Respondent asserts that the only
evidence in the record to support the existence of a common law trademark is
Respondent’s self-serving statement as part of its trademark application that
it has used the mark “Happy’s Pizza” in commerce since 1993. Absent additional evidence, Complainant cannot
assert a common law trademark in the “Happy’s Pizza” name. In the absence of such evidence, Complainant
has no basis to challenge the validity of Respondent’s domain name. Second, Respondent asserts that the mark is a
compilation of two common terms, happy and pizza, and Complainant cannot
monopolize these common terms. Respondent
asserts that it has legitimate rights and interests in the domain name, as it
is permitted to register common words or a combination of common words for the
purpose of Internet advertising. Finally,
Respondent contends that it registered the domain name and continues to use the
domain name in good faith. It had no
notice of Complainant’s use of the mark when it registered the domain name, it
has never offered to sell the domain name to Complainant, and it has been using
the name in a legitimate Internet business. The fact that Respondent may have been deemed
a cybersquatter in other cases is immaterial to the present case, which must be
judged on its merits.
C. Additional Submissions
In its Additional Submission Complainant challenges Respondent’s
assertion that the domain name is merely a combination of two common words,
happy and pizza. Complainant assert that
the possessive apostrophe in the term “Happy’s Pizza” takes the term out of the
universe of common words or terms, because it refers to a particular person’s
pizza. Additionally, Complainant
contends that it is irrelevant that Respondent did not know of the mark when it
registered the domain name, as the mark was used and commonly known in
commerce.
In its Additional Submission Respondent asserts that Complainant’s use
in commerce is quite limited, to the
FINDINGS
The Panel determines that Complainant has not
introduced sufficient evidence to prove that it has common law rights in the
“Happy’s Pizza” mark. Therefore, Complainant
has not satisfied Policy ¶ 4(a)(i). Because it cannot meet its initial burden
under the Policy, the Panel finds that the relief sought by Complainant must be
denied. In light of its finding on this
threshold issue, the Panel declines to discuss the issues of Respondent’s
rights or legitimate interests in the domain name, or of Respondent’s bad
faith.
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 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;
(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 threshold issue in this case is whether
“Happy’s Pizza” can be deemed a “trademark or service mark in which Complainant
has rights.” The Policy does not require
a complainant to own a federally registered trademark; Complainant may
establish common law trademark rights through evidence that is has done
business with the name in question “in a sufficient manner to cause a secondary
meaning identifiable to complainant’s goods or services.” Molecular
Nutrition, Inc. v. Network News & Pub’ns, FA 156715 (Nat. Arb. Forum June 24, 2003). As the panel in Molecular Nutrition stated: “…the Policy
puts the burden squarely on Complainant to establish the fundamental trademark
or service mark rights that serve as the foundation for these proceedings.”
In the instant case, Complainant has
submitted no evidence to establish its common law rights in the mark. The statement in its trademark application
that the mark has been used in commerce since at least December 31, 1993 is
insufficient to meet this burden. See Weatherford Int’l Inc. v.
Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although
Complainant asserts common law rights in the WELLSERV mark, it failed to submit
any evidence indicating extensive use or that its claimed mark has achieved
secondary source identity. [A claim that the mark is well-known] must be
supported by evidence and not self-serving assertions.”). This is especially true when the assertion is being
directly challenged by a respondent in its answer.
In the instant case, as in Weatherford, Complainant has failed to
submit evidence beyond the self-serving Declaration in its trademark
application. That Declaration says
nothing about extensive use of the mark. All it does is aver that earlier statements in
the trademark application are true. The
only earlier statement in the application concerning use of the mark in
commerce is this: “the mark was first used at least as early as 12/31/1993, and first used in commerce at least as early as
12/31/1993, and is now in use in such commerce.” There is nothing in this statement which
indicates the extensiveness of the use in commerce, or supports an assertion
that the term has taken on a secondary meaning relating to Complainant. Even after this deficiency was pointed out in
the Response, Complainant added nothing on this point in its Additional
Submission other than a Declaration from its Chief Operating Officer saying “on
information and belief, since 1993 Complainant has been offering restaurant
services to the public under the Happy’s Pizza service mark.” As in the original complaint, there is no
discussion of the extent of the use of the service mark, or any evidence
concerning secondary meaning. Indeed,
even the fact of use of the mark since 1993 is offered only “on information and
belief.” The Panel thus concludes that
Complainant has failed to meet its threshold burden of showing rights in a
trademark or service mark, even in a common law trademark.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Diane Cabell, Houston Putnam Lowry, Chartered
Arbitrator, Joel M. Grossman, Chair, Panelists
Dated: June 15, 2007
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