Milnot Company / Beech-Nut Nutrition Corporation v.
Scott Ballard d/b/a Kobashi Essential Oils
Claim Number: FA0207000117035
Complainant is Milnot Company/Beech-Nut Nutrition Corporation, St. Louis, MO, USA
(“Complainant”) represented by Marta I.
Burgin, Esquire, of Armstrong
Teasdale LLP. Respondent is Scott Ballard d/b/a Kobashi Essential Oils, Ide, UNITED
KINGDOM (“Respondent”) pro se.
The domain name at issue is <beechnut.us>, registered with Encirca, Inc.
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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on July 25, 2002; the
Forum received a hard copy of the Complaint on July 26, 2002.
On July 29, 2002, Encirca, Inc. confirmed
by e-mail to the Forum that the domain name <beechnut.us> is registered with Encirca, Inc. and that the
Respondent is the current registrant of the name. Encirca, Inc. has verified that Respondent is bound by the Encirca,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 16, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of September 5, 2002 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent in
compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy
(the “Rules”).
A timely Response was received and
determined to be complete on September 4, 2002.
On September 13,
2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
A. COMPLAINANT
Complainant contends that the domain name
<beechnut.us> is identical to
trademarks in which it has rights, for the domain name is merely Beech-Nut’s
trademark with the hyphen between “beech” and “nut” removed.
Complainant further contends that:
1)
it owns the
registered trademarks BEECH-NUT® (word and design marks), BEECH-NUT NATURALS®,
BEECH-NUT BABYWARE®, BEECH-NUT BAKERY™, and BEECH-NUT THE SIMPLE CHOICE® for
the manufacture and sale of baby foods, juices and various food products;
2)
it has
worldwide rights in the BEECH-NUT trademark and has used the mark since 1931 in
connection with the manufacture and sale of baby foods and related food
products worldwide;
3)
it has
trademark registrations and pending trademarks applications for the BEECH-NUT
trademark throughout the world;
4)
it uses
BEECH-NUT as its trade name and is most commonly known to the consuming public
by this name, as well as BEECH-NUT NUTRITION;
5)
it and its
parent company, Milnot Company, own the following domain names: <beech-nut.com>,
<beech-nut.biz>, <beech-nut.info>, <beech-nut.us>,
<beechnut.com>, <beechnut.biz>, <beechnut.info>,
<beech-nutfirstadvantage.com> and <beechnutfirstadvantage.com>;
6)
as a result
of it’s long and continuous use of the BEECH-NUT trademarks, BEECH-NUT has
acquired substantial goodwill and recognition among consumers that is
associated with Complainant’s business;
7) Respondent
has no rights or legitimate interests in respect of the domain name;
8)
Respondent
has owned the registration for the domain name <beechnut.us> since
May 2, 2002 and to date Respondent has neither used, nor demonstrated
preparations to use, the domain name in connection with a bona fide
offering of goods or services;
9)
Respondent
is not the owner or beneficiary of a trade or service mark that is identical to
the domain name nor is Respondent commonly known as BEECHNUT or BEECH-NUT;
10)
Respondent
is not making a legitimate, noncommercial or fair use of the domain name;
11)
Respondent’s
website <kobashi.com> does not reference the sale of beechnut products;
and
12)
Respondent
registered and has used the domain name in bad faith and is warehousing at
least 40 .us domain names besides <beechnut.us>.
B.
RESPONDENT
Respondent contends that:
1)
it
was established in 1985 and is a manufacturer, wholesaler and direct seller of
Pure Essential Oils, Blended Oils, Carrier oils (vegetable oils) Soap, Shampoo,
Moisturizers and accessories;
2)
it
sells worldwide with a great percentage of
business in the United States of America;
3)
<beechnut.us> is similar to beech-nut, but
Respondent has legitimate interests in the name and there is no bad faith
intent in the registration or use;
4)
there
is no "likelihood of confusion" between what Complainant and what
Respondent offer;
5)
“beechnut”
is a generic word;
6)
it
came upon beechnut as a product to sell when looking at the web site <fragrant.demon.co.uk/aroma2.html>,
February 2001;
7)
it
bought the domain to expand its product range to beechnut oil products;
8)
developing
a new product line normally takes many months, but Respondent has accelerated
with Beechnut oil Product News to demonstrate its bona fide intent;
9)
it
will be including a range of products using Beechnut Oil;
10)
<beechnut.us>
is part of an
overall strategy for Respondent; Beechnut Carrier oil and blended oils with
beechnut oil are the product range, which Respondent researched and has under
development;
11)
it
sells over two hundred products; over one hundred that are not yet up on the
web;
12) it has four beautiful Beechnut trees behind its house;
13)
it
has spent time and money researching beechnut oil; and
14) it did not and does not want to sell the domain to
Complainant.
1)
Complainant
has met its burden to prove by a preponderance of the credible, relevant
admissible evidence that Respondent’s
domain name is identical or confusingly similar to a trademark or service mark
in which Complainant has rights. usTLD
Policy ¶ 4(a)(i).
2)
Complainant has not met its burden to prove by a preponderance of
the credible, relevant admissible evidence that Respondent has no rights or
legitimate interest in respect to the domain names. usTLD Policy ¶ 4(a)(ii).
3)
Complainant has not met its burden to prove by a preponderance of
the credible, relevant, admissible evidence that Respondent’s domain name has
been registered or is being used in bad
faith. usTLD Policy ¶ 4(a)(iii).
Paragraph 15(a) of
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 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
or is being used in bad faith.
Given the similarity between the Uniform
Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel
will draw upon UDRP precedent as applicable in rendering its decision.
IDENTICAL
AND/OR CONFUSINGLY SIMILAR
Complainant contends and Respondent does
not dispute that it owns numerous registered trademarks for BEECH-NUT and
BEECH-NUT in combination with other words and thus Complainant has rights to
those marks. Respondent does not contest these registrations or the factual
allegations associated therewith regarding use. Complainant clearly has rights in and to these marks. The
question here is whether the domain name is identical or confusingly similar to
one or more of those marks.
The only difference between Respondent’s
domain name and Complainant’s registered mark(s) is that Complainant places a
hyphen between “Beech” and “Nut.”
Where the only difference between a mark
and a domain name is the presence of a hyphen between the two prominent
elements of the mark, such is not, including this one, sufficient to
negate confusingly similarity. Numerous
ICANN Arbitrators have ruled similarly. See Draw-Tite v. Plattsburgh
Spring, D2000-0017 (WIPO Mar. 14, 2000) (“drawtite.com” is “confusingly
similar” to “Draw-Tite” trademark despite lack of hyphen in domain name); see
also Channel Tunnel Group v. Powell, DA2000-0038 (WIPO Mar. 17, 2000)
(“euro-tunnel.com” is “confusingly similar” to “Eurotunnel” trademark despite
lack of hyphen in domain name); see also Transamerica v. Inglewood Computer
Servs., D2000-0690 (WIPO Aug. 20, 2000) (“trans-america.com” is
“confusingly similar” to trademark “Transamerica” despite hyphen in domain
name); see also Quotesmith.com v. Noble, D2000-1088 (WIPO Nov. 9, 2000)
(hyphen is of de minimis importance); see also Ranstad Holding v.
Brazilai, D2001-0649 (WIPO July 8, 2001) (hyphen not significant); see
also Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO
May 18, 2000) (hyphen not significant); see also Nortel Networks Ltd. v.
Raynald Gremer, FA 104104 (Nat. Arb. Forum Mar. 15, 2002) (hyphen alone
does not negate confusing similarity).
Therefore, under these circumstances, Complainant has met its burden to
prove that Respondent’s domain name is identical or confusingly similar to one
or more marks in which Complainant has rights.
RIGHTS
OR LEGITIMATE INTERESTS
Although Respondent does not cite Policy
¶ 4(c)(ii), that appears to be the only provision of the Policy which might
support Respondent’s contention that it has rights and/or legitimate interests
in respect to the domain name.
Respondent has produced and Complainant has not contradicted with evidence,
substantial and credible evidence that it is in the business of selling a large
variety of oils made by from flowers, plants and other organic materials and
that beechnut oil is a carrier oil derived from the beechnut. Respondent has researched the possibility of
selling beechnut oil and has taken steps to prepare to sell and distribute such
oil in connection with its legitimate business in the sale of oils. Under these circumstances, this Arbitrator
finds that Respondent does have rights and/or legitimate interest in respect to
the domain name because before it received any type of notice of this dispute,
it engaged in demonstrable preparations to use the domain name in connection
with a bona fide offering of goods.
Policy ¶ 4(c)(ii).
Under these circumstances, Complainant
has not met its burden to prove by a preponderance of the relevant,
credible and admissible evidence that Respondent has no rights or legitimate
interest in respect to the domain name.
REGISTRATION
AND USE IN BAD FAITH
Complainant contends that there has been
no use or demonstrable preparations to use the domain name in connection with a
bona fide offering of services or goods since its registration of the
name on May 2, 2002. However,
Respondent has produced evidence of demonstrable preparations to use which this
Arbitrator finds credible and, indeed, this Arbitrator takes judicial notice of
the fact that the development of and preparation for marketing of any new
product does not happen overnight.
Complainant’s Complaint was filed less than ninety days after Respondent
registered the domain name. This
Arbitrator cannot, as a matter of law, find that taking ninety days to prepare
to sell, distribute, market and advertise a new product constitutes
registration and/or use in bad faith.
Under these circumstances, Complainant
has not met its burden to prove by a preponderance of the credible,
relevant, admissible evidence that Respondent’s domain name has been registered
and is being used in bad faith. Policy
¶ 4(a)(iii).
Complainant’s request for the transfer of
the domain name <beechnut.us> is DENIED.
M. KELLY TILLERY, ESQUIRE Panelist
Philadelphia, PA
Dated: October 4, 2002
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