The Gourmet Depot v. DI S.A. / Administration Dom
Claim Number: FA1103001378760
Complainant is The Gourmet Depot (“Complainant”), represented by Bret S. Moore of Bret S. Moore, Attorney at Law, LLC, Georgia, USA. Respondent is DI S.A. / Administration Dom (“Respondent”), represented by Paul Keating of Law.es, Luxembourg.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thegourmetdepot.com>, registered with Eurodns S.A.
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.
Jonas Gulliksson, John J. Upchurch and David E. Sorkin as Panel.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2011; the National Arbitration Forum received payment on April 22, 2011.
On April 22, 2011, Eurodns S.A. confirmed by e-mail to the National Arbitration Forum that the <thegourmetdepot.com> domain name is registered with Eurodns S.A. and that Respondent is the current registrant of the name. Eurodns S.A. has verified that Respondent is bound by the Eurodns S.A. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thegourmetdepot.com. Also on April 22, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 12, 2011. The submission exceeded the fifteen pages limit stipulated under Rule 5 of the Supplemental Rules.
The Panel may, at its discretion choose whether to consider the Response or not. See e.g. Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
The UDRP rules are quite clear, and the circumstances generally put forward in a complaint or response do not warrant extensive filings (and this case is no exception). While the Panel strongly discourages filings that are unnecessarily voluminous, it opts to take the Response into consideration due to the fact that it was timely.
On May 17, 2011 an Additional Submission was received from the Complainant.
On May 20, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jonas Gulliksson, John J. Upchurch and David E. Sorkin as Panel.
On May 23, 2011, Respondent filed an Additional Submission. A further, unsolicited supplemental filing was submitted by Respondent on May 30, 2011.
On June 2, 2011, yet another unsolicited supplemental filing was submitted by Respondent. The supplemental filings were mainly related to new decisions by Panels in UDRP proceedings.
The Panel has chosen not to consider the unsolicited submissions, particularly in consideration of the ad hoc character of the UDRP proceedings.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a business providing sales and service for a variety of small kitchen appliances. Headquarters is situated in San Francisco, California, USA. Complainant has been doing business since the 1950s. Since 1996 it has been conducting its business under the service mark of The Gourmet Depot.
Complainant’s business generates about 3.8 million USD in gross annual revenue and an estimated 80 percent of the business derives from Internet users visiting Complainant’s website. Through the longstanding use of the mark “The Gourmet Depot” and the significant online and print advertising expenditures, the mark “The Gourmet Depot” has acquired secondary distinctiveness in the mind of the public.
In 1996 an employee of Complainant registered the disputed domain name in its own name. Complainant was unaware that the ownership of the domain name was in the hand of the employee and began using the domain name for its business. In 2002, a clash in the relations between Complainant and the employee led to the disputed domain name being locked and out of control of Complainant. The employee demanded payment which Complainant refused and the Complainant chose not to take any further actions at the time. Instead, a “snap order” was placed on the domain name. However, Complainant did not manage to purchase the disputed domain name when it was released; instead it was a third party who bought the domain name. Because of the severe disruption of Complainant’s business, it began using a new domain name from which Internet sales take place today.
Respondent acquired the disputed domain name in 2008 without license, permission or authorization to use Complainant’s mark. The domain name is used as a parking page, with pay-per-click advertisements.
The disputed domain name is confusingly similar to the service mark into which Complainant has acquired common law rights.
Respondent is not known as <thegourmetdepot.com>, instead Respondent is a sophisticated domain name investment, development and resale company based in Luxembourg. Respondents owns the disputed domain name with the sole purpose to monetize the domain name as a parked page with revenue-generating pay-per-click ads through profiting from misdirected Internet traffic and public confusion. At the same time, Complainant is prohibited from reflecting its mark in the domain name. Respondent’s ownership in and passive holding of thousands of domain names does not constitute preparations to make good faith use of the disputed domain name. Domain names used as parking pages with pay-per-click advertisements have been found in prior UDRP decisions to constitute lack of good faith offering of goods or services.
Respondent new or should have known of Complainant’s rights in the mark THEGOURMETDEPOT. If Respondent had conducted a preliminary key word search it immediately would have found Complainant’s website and numerous references in commerce and on the Internet showing use of the mark in connection with Complainant’s services. The only logical explanation must be that Respondent registered the disputed domain name in order to cybersquat on Complainant’s established rights. Complainant has received numerous reports from its customers which have been confused by the disputed domain name. The use of the disputed domain name as a revenue-generating pay-per-click site is not good faith use.
Further evidence of Respondent’s bad faith is the demand for remuneration far exceeding the out of pocket costs for the disputed domain name. Initially when contacted by Complainant, Respondent demanded 6,000 USD which subsequently increased to 10,000 USD. All this flagrantly show Respondent’s bad faith.
B. Respondent
Complainant does not own a registered trademark and has not provided sufficient evidence to substantiate common law rights. The terms of the disputed domain name are descriptive and not inherently distinctive. “The” is used as a definite article, “gourmet” is defined as a connoisseur of food and drink and “depot” is defined as a place for storing goods or motor vehicles. A simple Google search results in 8.8 million results, i.e. <legourmetdepot.com>, a US company, or <gourmet-depot.net> which is located in Germany.
Complainant’s evidence of marketing and advertising expenditure relates to the year 2010 only. The investment can only be described as minimal, representing less than 5 percent of the annual revenue. The investments are moreover related to Internet search engine keyword results which are evidence of investment in individual third party products rather than in the mark itself.
The customer reviews presented are from a local search engine and derive from 2010 and 2011, well after Respondent registered the disputed domain name. The evidence from Google Analytics showing statistics of Internet visitors to Complainant’s website do not reflect recognition of the mark. They reflect user traffic. Customers arrived because of the search of key words and not of recognition of the mark as a source indicator.
Respondent’s use of the disputed domain name constitutes a bona fide use under the Policy. The disputed domain name has been consistently used in connection with categorized information related to the sale of gourmet products. A visitor who clicks on one of the links offered on the page will be directed to the site of the paying advertiser. There is no link to Complainant’s website nor is there anything on the site to suggest a connection to the Complainant.
Respondent’s business is to register generic and descriptive domain names for either dedicated websites or to provide email services, advertising or other content relevant to the subject matter of the domain name. The disputed domain name was acquired because it consists of descriptive, dictionary terms and is part of an already existing portfolio of domain names with the word gourmet:
<gourmetcoffee.co.uk> <go-gogourmet.com>
<gourmetversand.at> <gourmetdepot.com>
<gourmetpartycafe.de> <gate-gourmet.de>
<gourmetfarecatering.com> <le-gourmet-eckenhagen.de>
Previous panels have found that use such as Respondent’s have constituted a legitimate interest for the purpose of the Policy when the pay-per-click links were directly related to the generic meaning of the domain name. Respondent is not using the disputed domain name to divert consumers or to target Complainant’s mark. There is no requirement for Respondent to be commonly known by the domain name or that Respondent holds trademark rights.
Respondent was not aware of Complainant at the time of registration. Complainant is a small appliance sales and repair business with a shop in San Francisco without any significant presence or with any established rights in Luxembourg, where Respondent is situated. Moreover, the disputed domain name was not registered with the intention to sell it to Complainant. It was Complainant which, through the broker GoDaddy, wanted to acquire the disputed domain name. Respondent, after being contacted several times suggested 6,000 USD as a suitable amount. Complainant did not assert any rights at that time.
Respondent did not register the disputed domain name to preclude Complainant from reflecting its asserted marks in a domain name and it did not register the disputed domain primarily for the purpose of disrupting the business of Complainant. Finally, Respondent did not register the disputed domain name to attract users by creating a likelihood of confusion.
The purpose of the UDRP process is to provide a remedy against abusive domain name registrations. It is clear that Complainant’s intention is to deprive Respondent if its legitimately registered domain name. Respondent therefore requests that Complainant is found guilty of reverse domain name hijacking.
C. Additional Submissions
Complainant
Respondent is a sophisticated domain name investment company and it is unlikely that Respondent was ignorant of the intangible properties of Complainant. The mark THE GOURMET DEPOT is strongly identified with Complainant’s business and cannot be used in a generic sense. When conducting a search on Google, Complainant’s business is the first result.
Complainant has a good-faith basis for bringing the Complaint. The Respondent knew, or should have known of the rights of Complainant, Respondent has no legitimate interest and has registered and used the disputed domain name in bad faith.
Respondent
Respondent located in Luxembourg had no knowledge of the small appliance sales and repair business in San Francisco. The disputed domain name has been used for pay-per-click services since April 2003 when it was reregistered by the previous owner.
A nine year delay to attempt to recover the disputed domain name should bar Complainant from prevailing in the UDRP process.
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 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; and
(2) 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.
It is undisputed that the Complainant has no registered trademark. According to the Policy § 4(a)(i), common law rights are sufficient to establish rights in a mark. The ICANN dispute resolution policy is thus broad in scope in that the reference to a trademark or service mark in which Complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name Complaint under the Policy. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
Complainant has, as grounds for the complaint, stated that it has used the mark THE GOURMET DEPOT since 1996 in connection with its services. To establish common law rights in a mark requires that Complainant shows that its mark has acquired secondary meaning. In other words, Complainant must, by building a prima facie case, establish that the public associates the asserted mark with its goods or services.
Complainant has as evidence of established common law rights submitted invoices for advertising material from 1999, from 2004, from 2007 and from 2010. Evidence of Internet traffic for Complainant’s current website is submitted, showing 51,015 visits between March 5, 2011 and April 4, 2011. Of these, 6 emanated from Luxembourg. Evidence of costs for keyword purchasing for the month of March, 2010 and a sale value report from the same period has been submitted. Moreover, evidence of printed advertising material from the spring 2002 and other advertising material from an unspecified time period has been submitted together with a statement of sales from 2009, showing Internet sales to make up 78.8 percent of the total sales for that year, a copy of the 2009 income tax form for Complainant and an invoice from March 2002, showing reference to Claimant’s previous proprietorship of the disputed domain name.
Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO April 3, 2001).
Although the Panel is satisfied that Complainant indeed is using the mark and has been using it for a number of years, the evidence is not of a prima facie character, showing secondary meaning. The evidence relating to advertising material appears to be, as stated by Respondent, representing circa 5 percent of Complainant’s revenues. The evidence relating to purchasing search engine key words does not give any indications on the public’s awareness of the mark as a source indicator. Moreover, the tables showing Internet traffic seem to point towards if anything at all, a mere local significance.
The Panel thus finds that the Complainant has failed to establish common law rights in the THE GOURMET DEPOT mark, as Complainant has not provided sufficient relevant evidence of secondary meaning or use in connection with the provision of goods or services. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).
Because the Complainant has failed to establish the element of rights in the mark under § 4(a)(i) of the Policy, further inquiry into the remaining elements is unnecessary, see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy § 4(a)(i)). However, the Panel notes that it appears unlikely that Respondent's registration of the domain name was targeted at Complainant or its mark, rendering a finding of bad faith impossible under any circumstances.
Reverse domain name hijacking
Respondent has requested a finding of abuse of the administrative proceeding.
It is for the Respondent to show knowledge on the part of the Complainant of the Respondent’s rights or legitimate interest in the domain name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge (see Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002).
Complainant’s trademark rights are unproven and its business, albeit global on the Internet, is rather local in its character. As Respondent has stated, a previous pay-per-click domain name holder, IRET previously owned the disputed domain name for a number of years without Complainant acting to protect its rights. Moreover, the current owner Respondent has held the disputed domain name for some time as well before being approached with offers to sell. However, Respondent has not presented any prima facie evidence showing that Claimant was in bad faith with regards to its own rights or in relation to the rights of Respondent. The request for a finding of reverse domain name hijacking is therefore denied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thegourmetdepot.com> domain name REMAIN WITH Respondent.
Jonas Gulliksson, David E. Sorkin, John J. Upchurch
Panel
Dated: June 21, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page