Week
3
(Compare the results of this Arbitration Forum case with the
decision in Pueblo.net. This proceeding is through ICANN's
Rules for Uniform Domain Name Dispute Resolution Policy)
DECISION
Pueblo International, Inc. v.
Claim Number: FA0007000095252
PARTIES
The Complainant is
Pueblo International, Inc.,
REGISTRAR AND
DISPUTED DOMAIN NAME(s)
The domain name at
issue is "PUEBLO.COM," registered with Network Solutions Inc.
("NSI").
PANELIST(s)
The Panelist 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 the panelist in this
proceeding.
Judge Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum ("The Forum")
electronically on
On
On 07/21/2000, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of 08/10/2000 by
which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, and to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts by
e-mail.
On
RELIEF SOUGHT
The Complainant
requests that the domain name be transferred from the Respondent to the
Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1. The domain name
"PUEBLO.COM" is identical to the service mark of Complainant. It has
used the mark in commerce since at least 1955, and has spent annually millions
of dollars in advertising its fifty supermarkets and its products.
2. Respondent has no right
or legitimate interest in the domain name evidenced by its failure to respond
to Complainant’s inquiries. Moreover, Respondent is not making a bonafide offer of goods and services. In addition,
Respondent is not commonly known by the domain name, and, in fact, has not
established a web site. Finally, Respondent is not making a legitimate
noncommercial use of the domain name.
3. Respondent has
registered and used the domain name in bad faith evidenced by its failure to
respond to Complainant’s inquires, and failure to use the domain name for more
than two years.
B. Respondent
1. Respondent does not
contend that the domain name and Complainant’s service mark are not identical.
2. Nevertheless,
Respondent has registered and used the domain name two years before Complainant
registered its service mark with the United States Patent and Trademark Office.
Respondent, accordingly, does have a right and legitimate interest in the
domain name.
3. Respondent did not
register nor is it using the domain name in bad faith. It is using the name in
conjunction with its high technology business services.
FINDINGS
DISCUSSION
Paragraph 4(a) of the ICANN 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.
Identical and/or Confusingly Similar
This is a companion case to Pueblo
International, Inc. v.
Here, however, the domain name in issue is
"PUEBLO.COM," and it is fully appropriate for a commercial enterprise
such as Complainant’s.
Accordingly, it is determined that
Respondent’s domain name and the Complainant’s service mark are identical.
Rights or Legitimate Interests
Section 4c of the Policy sets forth the
certain circumstances, in particular but without limitation, which will
demonstrate a Respondent’s rights or legitimate interests to the domain name in
issue, as follows:
(i) before any
notice to you of the dispute, your use of, or demonstrable preparations to use,
the domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired no trademark or service mark rights; or
(iii) you are making
a legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.
Complainant argues that the domain name has
not been used by Respondent in connection with an offering of goods or
services; that it has tried to communicate with Respondent by e-mail and
facsimile, but there has been no response; that Respondent is not listed on the
Internet nor in the telephone directory, and, thus, there has been no commercial
use of the domain name for over two years.
The difficulty with Complainant’s position is
that the policies applied to the assignment of domain names by NSI do not
correspond with the established principles of trademark law. (See,
Delta and Matsuura, Law of the Internet (Updated 2000), §5.04(B),
p. 5-56.) Thus, while §45 of the Lanham Act (15 U.S.C. 1127) provides
that non-use of a mark for three consecutive years shall be prima facie
evidence of abandonment, the Panelist can find no comparable provision in the
Policy.
The Panelist also cannot find a requirement
of a web site or a yellow page telephone listing in determining whether a
Respondent has been commonly known by the domain name in issue.
By virtue of Respondent’s registration of its
domain name prior to Complainant’s registration of its service mark, and by
Respondent’s utilization of the domain name as an e-mail address, although not
as a web site, the Panelist has concluded that Respondent does have a right and
a legitimate interest in the domain name. (See, The Network Network v. CBS, Inc. (U.S.D.C. Central. Dist. California 2000) 54 U.S.P.Q.2d 1150.)
Registration and Use in Bad Faith
The Panelist has considered the
circumstances, which, for purposes of Paragraph 4(a)(iii)
of the Policy, would be evidence of the registration and use of the domain name
in bad faith as follows:
(i) Circumstances
indicating that Respondent has registered or acquired the domain name primarily
for the purpose of selling, renting or otherwise transferring the domain name registration
to the Complainant who is the owner of the trademark or service mark or to a
competitor of that Complainant, for valuable consideration in excess of
Respondent’s documented out-of-pocket costs directly related to the domain
name.
Again, as in the companion case, there is no
evidence supporting this factor. To the contrary, Respondent asserts that it
has no intention whatever of selling the domain name in issue.
(ii) The Respondent has registered the domain
name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that Respondent
has engaged in a pattern of such conduct.
Again, as in the companion case, there is no
evidence supporting this factor. In any event, there is no evidence of a
pattern of such conduct.
(iii) by using the
domain name, Respondent has intentionally attempted to attract, for commercial
gain, Internet uses to its web site or other on-line location, by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site or location.
Again, as in the companion case, there is no
evidence supporting this factor. This conclusion is enhanced by the completely
different services and/or products sold between Complainant and Respondent.
In the companion case and here, Complainant
has cited authorities to the effect that non-use of a domain name over a period
of time may establish bad faith.
The difficulty with Complainant’s cited
authorities is that in each of them the Respondent defaulted, allowing the
Panel to draw the adverse inference against the Respondent therein. Respondent
here has not defaulted, but, to the contrary, has defended its registration and
use of the domain name at issue.
In any event, the Panelist finds that
Respondent has not registered or used the domain name in bad faith. It simply
wants to continue using it as its e-mail address and does not want to sell it.
In the last analysis, it is first come, first served.
DECISION
The claim of Complainant Pueblo
International, Inc. against Pueblo Technology Publishing seeking to have the
domain name "PUEBLO.COM" transferred to it,
be and the same, is hereby denied.
Judge
Irving H. Perluss (Retired)
Dated:
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