New Pig Corporation v. Adam Dicker
Claim Number: FA0611000843597
Complainant is New Pig Corporation (“Complainant”), represented by Matthew
W. Gordon, of Pietragaool, Bosick & Gordon LLP, The
Thirty Eighth Floor,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pig.com>, registered with Enom, Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Honorable Charles K. McCotter, Jr. (Ret.) and Honorable James A. Carmody, as Panelists and Honorable Karl V. Fink (Ret.), as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2006.
On November 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <pig.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 2006 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 11, 2006.
The National Arbitration Forum received timely Additional Submissions from Complainant on December 18, 2006 and from Respondent on December 21, 2006. Both were determined to be complete pursuant to Supplemental Rule 7.
All submissions were considered by the Panel.
On January 2, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Charles K. McCotter, Jr. (Ret.) and Honorable James A. Carmody, as Panelists and Honorable Karl V. Fink (Ret.), as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner of a family of “PIG” trademarks. Complainant has been using its “PIG” marks to identify its goods and services since at least 1987. The trademark “PIG” was registered December 24, 1987 by the United States Patent and Trademark Office. The goods and services provided under Complainant’s marks include industrial absorbents, containment products, waste handling equipment, distribution, sales and service related to such products.
As a result of Complainant’s longstanding use of its “PIG” trademarks in the United States and worldwide, Complainant has built up goodwill in the “PIG” mark and the “PIG” mark is well recognized among the public.
The domain name at issue is identical or confusingly similar to the trademark in which the Complainant has rights.
Respondent has no rights or legitimate interests in the domain name. Respondent is not using, and to Complainant’s knowledge has not used <pig.com> for any bona fide offering of goods or services.
The domain name has been registered and is being used in bad faith. Respondent’s reliance on the goodwill surrounding Complainant’s mark to redirect Internet users to a search engine website with various commercial links for its own commercial gain equates to bad faith use and registration of a domain name.
Respondent’s business generates revenues by operating pay per click sites. It has been repeatedly held that pay per click sites are not a legitimate use of a domain name.
The link on Respondent’s website to Complainant’s website indicates that Respondent is aware of Complainant.
Therefore, Respondent either knew of or should have known of Complainant’s “PIG” trademark.
Complainant sought an amicable resolution of this dispute by submitting a fair offer to purchase the website. An offer of $21,000 was made on November 3, 2006 through <sedo.com> where the domain name was listed for sale. The offer expired on November 10, 2006 without response by the Respondent.
Respondent registered the domain name <pig.com>, and has connected the domain name to provide paid search results, controlled by a third party, in response to the keyword “pig.”
Respondent purchased the domain name for US $50,000 to use in connection with the word “pig,” therefore no bad faith is shown by not responding to a purchase offer in the amount of $21,000. Respondent purchased the domain name in order to derive value from Internet traffic on the basis of the word “pig.” Such a purpose for registration and use of a domain name is legitimate.
The Respondent is a Canadian, who has not been
engaged in the provision of anything related to cleaning oil spills, nor is the
Respondent under any duty of constructive notice relating to
Respondent’s plan for the domain name is to capitalize on the use of common word “pig” in the same manner as the Respondent has developed an informational page relating to elephants at <elephant.com>, using third-party paid search advertising. As noted in the WHOIS data for the domain name, <pig.com> was originally registered in 2000, and the Complainant has never alleged in that time that the registration and use of <pig.com> by the prior owner infringed any right claimed by the Complainant.
Given the well-known primary meaning of the word “pig,” the notion that the Respondent was motivated to purchase the domain name out of an intent arising from an obscure specialty product relating to oil spill clean-up is not credible.
Complainant has placed a spectacularly high maximum bid of $2.74 to have its advertisement for absorbents displayed in response to Internet searches for the word “pig.” Complainant caused the display of its own ad on the Respondent’s website, and that such a result was entirely independent of any consciously directed activity of the Respondent.
The only link relevant to the Complainant is the result of the Complainant’s own action. None of the other links displayed at <pig.com> have any relationship to the Complaint’s oil absorbent products, and thus do not infringe the Complainant’s mark nor do they “divert” consumers who are searching for products or services relevant to the ordinary meaning of the word “pig.”
Complainant alleges no “pattern” of domain registration designed to deprive Complainant of the ability to reflect its mark in a domain name; the Respondent has been engaged in a pattern of domain registration, including other animal domain names as <elephant.com>, <worm.com>, <seals.com>, and <giraffes.com>.
C. Additional Submissions
Many Forum decisions have held that pay per click sites are not a bona fide offering of goods or services under the Policy.
The cases cited by Respondent regarding legitimacy of pay per click sites stand for the proposition that pay per click sites are legitimate if they are not registered for their value as a trademark or with another’s trademark in mind.
Contrary to Respondent’s claim, Complainant did not “use a keyword bidding system to place itself, temporarily and for the purposes of this proceeding, as the top advertiser returned in response to the word “Pig” in the Google advertising system.” Complainant has the top spot because of its continuous efforts to increase recognition of the “PIG” mark. No one even comes close to the Complainant when committing resources to be identified with “PIG.”
According to <pig.com> as of December 12, 2006, the domain name is for sale. Complainant views this as indisputable evidence of bad faith.
Respondent’s pay per click site amounts to no more than a parked website which is exploited to the detriment of Complainant. Respondent has put no effort into developing the site.
Complainant’s Supplement is not authorized by the UDRP Rules.
The Policy confers the submission of additional material beyond the Complaint and the Response to the “sole discretion” of the Panel, at the Panel’s request. There has been no such request from the Panel.
Here, the Complainant’s Supplemental Submission contains no facts or evidence which could not have been filed in the Complaint.
When the term at issue is inherently distinctive, bad faith intent may be inferred, but here we are dealing with the word “pig” and only the “pig.”
At page 2 of the Complainant’s supplement, the Complainant hypothesizes that an Internet user visiting <pig.com> would expect to find information relating to “swine or pork.” The Respondent agrees. If the Complainant were to obtain the domain name, then no Internet user looking for swine or pork is going to find it at <pig.com>.
While the Complainant states that, on average, it spends $4M per year on unspecified promotion of its products, no documentation is provided for this assertion. The swine and pork industries dwarf the Complainant’s sale of its specialized product, and it is reasonable to assume that the Panel members themselves were aware of the word “pig” prior to this dispute and, like the Respondent, had never heard of the Complainant or its products.
The Complainant now admits that the Complainant itself is responsible for the appearance of its own advertisement on the Respondent’s webpage.
For the reasons set forth below, the Panel finds Complainant has not proven that the domain name should be transferred.
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.
Respondent does not contest Complainant’s assertion that the <pig.com> domain name is identical to Complainant’s PIG mark.
The Panel finds this element has been satisfied.
For Complainant to prevail, it must prove all three elements.
Because the Panel has decided that Complainant cannot establish the element of Registration and Use In Bad Faith, the Panel has not decided this element.
The Panel finds this element has not been satisfied.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel orders that relief shall be DENIED.
Honorable Karl V. Fink (Ret.), Chair
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Honorable James A. Carmody, Panelist
Dated: January 29, 2007
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