DECISION

 

Cigarettes Cheaper!, Inc. v. World Wide Brands

Claim Number: FA0110000100490

 

PARTIES

The Complainant is Cigarettes Cheaper!, Inc., Houston, TX (“Complainant”)

represented by John Cain, of Howry Simon Arnold & White, LLP.  The Respondent

is World Wide Brands, Buffalo, NY (“Respondent”) represented by Steven S. Fox.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cigarettescheap.net>, registered with Network Solutions.

 

PANEL

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.

 

Hon. Richard B. Wickersham, Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”)

electronically on October 8, 2001; the Forum received a hard copy of the Complaint on October 8, 2001.

 

On October 10, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <cigarettescheap.net> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 October 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 30, 2001 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@cigarettescheap.net by e-mail.

 

A timely response was received and determined to be complete on October 30, 2001.

 

On November 8, 2001, pursuant to Complainant’s request to have the dispute decided

by a single-member Panel, the Forum appointed the Hon. Richard B. Wickersham as

Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to

the Complainant.

 

PARTIES CONTENTIONS

A. Complainant

The Complainant asserts that the CIGARETTES CHEAPER!, is the mark of Premium Tobacco Stores, Inc.   Further, that the Tobacco Company, Inc. is the owner of a federal trademark registration for the mark CIGARETTES CHEAPER!  Further that the mark was first used in May 1994, seven years ago, and has been used continuously for its retail tobacco stores and services and substantial time, effort and money has been expended in advertising and promoting the mark throughout the world.  Further, Cigarettescheap.net began use July 16, 2001 and that Respondent’s domain name Cigarettescheap.net is identical or confusingly similar to the mark CIGARETTES CHEAPER!

 

B.  Respondent

Respondent’s defense is that the domain name is a generic term, or a merely descriptive

term.  Further, that any store which sells cigarettes for less than the highest price in the prevailing market would advertise that they have cigarettes cheap or cheap cigarettes.  Further that a generic term is entitled to no trademark protection whatsoever, since any

manufacturer or seller has the right to call a product by its name.

 

FINDINGS

We find that Respondent’s defense that the domain name is a generic term, or merely a descriptive term is the appropriate finding in this case.  We find that common sense dictates that any store which sells cigarettes for less than the highest price in the prevailing market would advertise that they have cigarettes cheap or cheap cigarettes.  A term is generic when its principal significance to the public is to indicate the product or service itself, rather than its source.  Feathercombs, Inc. v. Sole Products Corp., 306  F.2d 251 (2d Cir. 1962), a generic term is not entitled to exclusive protection.  Kellog Co. v. National Biscuit Co., 305 U.S. 111 (1938).  Further, a generic term is entitled to no trademark protection whatsoever, since any manufacturer or seller has the right to call a product by its name.  Abercrombie and Fitch Co. v. Hunting World, Inc., 537 F.2d 4 at 9 (2d Cir. 1976).

 

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 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

Respondent argues that <cigarettescheap.net> domain name is not confusingly similar to the Complainant’s mark because the disputed domain name is made up of two generic terms: “cigarettes” and “cheap”.  Respondent argues that these terms are not individually capable of distinguishing the goods of any particular trader from the goods of others.  See FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish that Respondent did not have rights or legitimate interests in the <filmnet.com> domain name, where the disputed domain name is wholly comprised of generic words, even though Complainant is the owner of the FILMNET mark).

 

Rights or Legitimate Interests

Respondent asserts that it intended to use the disputed domain name in conjunction with its <bigjoesmokeshop.com> website and therefore has rights and legitimate interests in the domain.  See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where the Respondent sought to develop a bona fide business use for the domain name).

 

Further, I find that Respondent has not been “squatting” on Complainant’s site because Complainant has not given Respondent a reasonable amount of time to develop the domain.  Respondent registered the site on May 14, 2001 and Complainant instigated proceedings on October 10, 2001, not even a year after registration of the disputed domain name.  See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the Complaint.  Only after a two-year period of nonuse is there an inference of a lack of bona fide intent to use the name).

 

Registration and Use in Bad Faith

Respondent claims that it did not register the domain name in bad faith, and that Complainant has failed to produce facts that show otherwise.  See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith and that Complainant produced no credible evidence of bad faith on the part of Respondent).

 

Respondent asserts it lacks bad faith because it registered the disputed domain name as a descriptive term of the products it will offer on its website.  Furthermore, Respondent asserts that Complainant has failed to produce evidence to establish that CIGARETTES CHEAPER is so famous that consumers are likely to associate <cigarettescheap.net> only with Complainant.  See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).

 

Further, I find that Respondent has not had enough time to develop the disputed domain name for its business and therefore is not passively holding the disputed domain name in bad faith.  See Vidiots Delights, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where Respondent was using the domain name in connection with its business even though no website was yet developed).

 

DECISION

I find in favor of Respondent, World Wide Brands.

 

 

Hon. Richard B. Wickersham, Panelist

 

Dated: November 21, 2001