Molecular Nutrition, Inc. v. Network News and Publications c/o Dennis Baratta
Claim Number: FA0305000156715
Complainant is Molecular Nutrition, Inc., Jupiter, FL (“Complainant”) represented by Pamela A. Johnson, of Isaacson Rosenbaum Woods and Levy PC. Respondent is Network News and Publications c/o Dennis Baratta, Smyrna, GA (“Respondent”) represented by Dennis Baratta, of Network News and Publications.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <molecularnutrition.com>, registered with Dotster.
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.
Dennis A. Foster, Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2003; the Forum received a hard copy of the Complaint on May 5, 2003.
On May 8, 2003, Dotster confirmed by e-mail to the Forum that the domain name <molecularnutrition.com> is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 2003 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 29, 2003.
On June 9, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
-- Complainant operates a nutritional supplements business in the United States, selling its products primarily over the Internet and through a variety of distributors located in more than ten states.
-- Complainant has been using the trademark “Molecular Nutrition” since March of 2001 in connection with its products and currently owns the domain name <molecularnutrition.net>, which it registered on April 16, 2000.
-- The disputed domain name is identical or confusingly similar to Complainant's mark, as they both contain the same words. Complainant has received many complaints from its customers that they have attempted to reach Complainant through the disputed domain name. Complainant is losing sales because of this confusion.
-- Respondent has no legitimate interest in the disputed domain name. Respondent is not involved in any industry connected to nutrition. Since it registered for the domain name, Respondent has not used the domain name for the good faith offering of goods and services or for any other purpose.
-- Respondent is holding the disputed domain name in bad faith. Respondent does not appear to be using the disputed domain name. Complainant offered to buy the name from Respondent for $1,000, but Respondent refused to sell it unless Complainant was willing to make a much higher offer.
-- Respondent, founded in 1996, is in the business of producing publications regarding nutritional supplements, health issues and direct marketing topics.
-- Complainant has not established rights to the trademark or service mark "molecular nutrition". Respondent has searched the United States Trademark Office and found only an abandoned notice with Complainant's application for that mark. "Molecular" and "nutrition" are merely descriptive and general terms and common words, and thus unlikely to ever be eligible for trademark recognition.
-- Respondent does have rights and legitimate interests in the disputed domain name. Rights and interests in a domain name are decided based on the principle of first-registration in the case of registration of a domain name made up of generic and descriptive words. In this case, Respondent's registration of the disputed domain name preceded Complainant's existence and use of the "Molecular Nutrition" mark. Moreover, since the disputed domain name was first registered, Respondent has intended to use it in conjunction with a planned publication, Molecular Nutrition,.
-- Respondent did not register and is not using the disputed domain name in bad faith. Respondent registered the name on April 16, 2000 for its own business interests prior even to the founding of Complainant in July, 2001. Respondent and Complainant did engage in a series of communications, initiated by Complainant, during which Complainant first offered Respondent $500, then $1,000 for the name. The latter offer was accompanied by various threats and coercive language which only increased Respondent's determination to refuse to sell for a price which Respondent told Complainant was much too low in any event.
-- Complainant operates a nutrition supplements business and has been selling products under the name "Molecular Nutrition" since 2001 over the internet and through distributors. It does not have a registered trademark or service mark in that name.
-- Respondent produces publications concerning nutritional supplements and registered the disputed domain name <molecularnutrition.com> on April 16, 2000.
-- Complainant and Respondent engaged in a series of communications, initiated by Complainant, during which Complainant offered as much as $1,000 for the disputed domain name, an offer that Respondent declined.
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 has not furnished the Panel with any evidence that Complainant currently owns a valid trademark or service mark registration in the name, "Molecular Nutrition", or any similar trademark name. Failing to furnish the Panel with such evidence, Complainant may sustain the very first element of its case only by providing the Panel with alternative evidence that its use of the name "Molecular Nutrition" has given Complainant common law trademark rights in that name. Prior panels have recognized “common law” trademark rights as appropriate for protection under the Policy if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services. See for example United Artists Theatre Circuit, Inc. v Domains for Sale Inc., D2002-0005 (WIPO Mar. 27, 2002) and Meijer, Inc. v Porksandwich Web Services, FA 97186 (Nat. Arb. Forum July 6, 2001).
In this case, Complainant alleges that it has been selling its products over the Internet and through distributors under its mark for a little more than two years. Even if the Panel accepts Complainant's contention that its sales involve as many as ten states in the United States, Complainant has supplied the Panel with no documentation to determine the volume and scale of such sales. Furthermore, the Panel possesses no independent knowledge that any significant group in the population identifies the relatively non-distinctive words, "Molecular Nutrition", exclusively, or even primarily, with Complainant's products to produce a secondary meaning.
Given that 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, the Panel cannot find in the record any basis to conclude that Complainant has obtained trademark or service mark rights in the name "Molecular Nutrition" at common law.
Having failed to establish the first element required under paragraph 4(a)(i) of the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <molecularnutrition.com> domain name remain registered to Respondent, Network News and Publications c/o Dennis Baratta.
Dennis A. Foster, Panelist
Dated: June 24, 2003
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