Principe Foods, Inc. v. Donald Olson
a/k/a Don Olson
Claim Number: FA0305000156843
Complainant is
Principe Foods, Inc., (“Complainant”) represented by
Richard A. Harris of Wild Carter & Tipton. Respondent is
Donald Olson a/k/a Don Olson, (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <principefoods.com> registered with Register.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 8, 2003; the Forum received a hard copy of the Complaint
on May 12, 2003.
On
May 8, 2003, Register.com confirmed by e-mail to the Forum that the domain name
<principefoods.com> is registered with Register.com and that
Respondent is the current registrant of the name. Register.com verified that
Respondent is bound by the Register.com 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
May 30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 19, 2003 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@principefoods.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 26, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<principefoods.com>, is identical to Complainant’s PRINCIPE FOODS
mark.
2. Respondent has no rights or legitimate
interests in the <principefoods.com> domain name.
3. Respondent registered and used the <principefoods.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
incorporated in the state of California under the “Principe Foods, Inc.” name.
Complainant filed its article of incorporation with the California Secretary of
State on May 30, 2000.
Respondent
registered the <principefoods.com> domain name February 20, 2003.
Respondent is using the disputed domain name to post disparaging remarks about
Complainant.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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 clear that
Respondent’s <principefoods.com> domain name is basically
identical to Complainant’s PRINCIPE FOODS mark because the disputed domain name
appropriates Complainant’s entire mark and simply omits the space between the
words and adds the generic top-level domain (“gTLD”) “.com” to the end of the
mark. Neither the omission of the space nor the addition of the gTLD
sufficiently differentiates Respondent’s domain name from Complainant’s mark
under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM
mark).
However,
Complainant must establish more than that the disputed domain name is identical
or confusingly similar to Complainant’s mark to fulfill the requirements of the
Policy. Pursuant to Policy ¶ 4(a)(i), Complainant must initially prove that it
has protectible rights in the PRINCIPE FOODS mark. See TotalFinaElf E&P
USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding
that in order to bring a claim under the Policy, Complainant must first
establish a prima facie case. Complainant’s initial burden is to provide
proof of “valid, subsisting rights in a mark that is similar or identical to
the domain name in question”); see also FRH Freies Rechenzerntrum v.
Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining
that Complainant has not proven by a preponderance of the relevant, admissible,
and credible evidence that the domain name in question is identical to a
trademark in which Complainant has rights despite Complainant’s mark being the
dominant feature of Complainant’s trade name).
Complainant
submitted no evidence in this proceeding that it holds a registered trademark
or service mark for the mark, PRINCIPE FOODS. Complainant’s sole piece of
evidence submitted is its Article of Incorporation filed with the California
Secretary of State on May 30, 2000, which indicates Complainant is incorporated
in that state under the “Principe Foods, Inc.” name. However, this evidence is
not sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Powrachute Inc. v. Buckeye Indus.,
AF-0076 (e-Resolution, May 30, 2000) (dismissing a Complaint where Complainant
failed to contend, provide evidence, or give arguments to the effect that it
had either a registered trademark or service mark in POWRACHUTE or any similar
name, or that it had a common law trademark in the name. The only evidence
provided, that it was incorporated under the name, is insufficient to create a
trademark); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat.
Arb. Forum Dec. 11, 2001) (finding that, without further evidence of common law
trademark, the Complainant did not establish rights to the CYBERIMPRINTS.COM
mark within the meaning of Policy ¶ 4(a)(i) by registering its company name
CYBERIMPRINTS.COM, INC. with the California Secretary of State).
In order to be
awarded the requested remedy, Complainant also could have established that it
had rights in the PRINCIPE FOODS mark by showing that it had developed common
law rights in the PRINCIPE FOODS mark. See British Broadcasting Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy
“does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service marks”); see
also Great Plains Metromall, LLC v.
Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform
Domain Name Dispute Resolution Policy does not require “that a trademark be
registered by a governmental authority for such rights to exist”).
Or, Complainant
could have proffered evidence that the PRINCIPE FOODS mark was inherently
distinctive or that it had acquired distinctiveness through secondary meaning. See
15 U.S.C. § 1052(e)-(f); Lanham Act § 2(f), (A term is generally not viable
for registration if it is “merely descriptive” when applied to the goods of the
applicant. However, an exception is made for terms, which, although merely
descriptive, have become “distinctive of the applicant’s goods in commerce.” If
such “secondary meaning” is shown, the mark may be registered); see also Lowestfare.com LLA v. US Tours &
Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding that marks classified as descriptive cannot be protected
unless secondary meaning is proven and to establish secondary meaning the
Complainant must show that the public identifies the source of the product
rather than the product itself).
In the absence
of evidence establishing legal or common law rights or distinctiveness, the
Panel finds that Complainant failed to establish that it has rights in the
PRINCIPE FOODS mark with regard to Policy ¶ 4(a)(i).
The Panel need
not address further the remaining elements related to rights to or legitimate
interests under Policy ¶ 4(a)(ii) or registration and use in bad faith under
Policy ¶ 4(a)(iii) because Complainant is required to prove each element of the
Policy. See CyberImprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb.
Forum Dec. 11, 2001) (finding that, although Respondent’s domain name
<cyberimprints.com> was identical to Complainant’s incorporated business
name, Complainant did not claim to hold any trademark or service mark rights in
CYBERIMPRINTS or CYBERIMPRINTS.COM, and therefore, its request for transfer was
denied); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765
(Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove
all three elements under the Policy, Complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary).
The
Panel denies Complainant’s request for relief, without prejudice to
Complainant’s filing a subsequent Complaint that demonstrates such rights in
the PRINCIPE FOODS mark pursuant to Policy ¶ 4(a)(i).
Having failed to
establish all three elements required under ICANN Policy, the Panel concludes
that relief shall be DENIED.
Accordingly, it
is Ordered that the <principefoods.com> domain name REMAIN
with Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 10, 2003.
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