Coupons Inc. v. Motherboards.com a/k/a
DNS Admin
Claim Number: FA0309000192249
PARTIES
Complainant
is Coupons Inc., Belmont, CA
(“Complainant”) represented by Ellen A.
Efros, of Rader Fishman & Grauer
PLLC, 1233 20th Street N.W.,
Washington, DC 20036. Respondent is Motherboards.com, Bryan, TX, (“Respondent”) represented by John B. Berryhill, 1601 Market Street, Suite 2400,
Philadelphia, PA 19103-2307.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <couponsinc.com>,
registered with Gkg.Net, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelist in
this proceeding.
Jacques
A. Léger, Q.C., as Chair, Sandra J. Franklin and G. Gervaise Davis III as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 29, 2003; the Forum received a hard copy of the
Complaint on September 2, 2003.
On
September 3, 2003, Gkg.Net, Inc. confirmed by e-mail to the Forum that the
domain name <couponsinc.com>
is registered with Gkg.Net, Inc. and that Respondent is the current registrant
of the name. Gkg.Net, Inc. has verified that Respondent is bound by the Gkg.Net,
Inc. 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
September 8, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 29, 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@couponsinc.com by
e-mail.
A
timely Response was received and determined to be complete on September 29,
2003.
Complaint
submitted an Additional Submission that was deemed in compliance with Forum
Supplemental Rule #7 on October 3, 2003.
Respondent
submitted an Additional Submission that was deemed in compliance with Forum
Supplemental Rule #7 on October 6, 2003.
On October 21, 2003, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Jacques A.
Léger, Q.C., Sandra J. Franklin and G. Gervaise Davis III as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Founded
in May 1988 as XAdvantage Corporation, Complainant Coupons, Inc. incorporated
under the laws of the State of California in March 2001. Complainant is an
independent privately-held company that is the leading provider of
business-to-business Internet-based technology solutions that enable businesses
to deliver secure consumer-printed coupons and other certificates. Complainant
currently offers business customers different programs that can deliver coupons
directly to their customers from their corporate web sites, from online banner
advertisements, and through targeted email messages.
Complainant’s
name and domain name, <coupons.com>, are well known in the industry and
Complainant’s clients and licensees now include numerous Fortune 500 companies
including Revlon, Dole, McDonald’s, Yahoo!, Dial Corporation, Kimberly-Clark,
Johnson & Johnson, Nestle Corporation, Pfizer, Hershey Foods, News
Corporation’s News America Marketing, Valassis Communications, Inc. and
Val-Pak. In addition, the mark COUPONS INC. is prominently and consistently
displayed. There are approximately 15
million coupons that have been printed with “Powered by Coupons, Inc.” on them
and Complainant has spent approximately $1,057,000 on promotion and marketing
since March 2001.
Complainant
acquired its primary domain name, <coupons.com>, as well as the domain
name <coupon.com> on January 21, 2000, for $1.3 million. Since that time,
Complainant has used its primary domain name <coupons.com> to direct
Internet traffic to an active website that provides comprehensive information
about its electronic coupon technology products and services. Complainant has
expended substantial time, effort and resources to develop its < coupons.com>
domain name as a viable source of information that is used to promote its
services and reach potential new customers.
Respondent does not, and has never offered bona fide goods or services under the
COUPONS, INC. or COUPONS.COM marks as required by Policy Paragraph
4(c)(i). Rather, Respondent’s interest
in the domain name is its value as being identical to Complainant’s legal
corporate name, Coupons, Inc. and its trademark and primary domain name, COUPONS.COM,
the latter of which is associated with Complainant’s website located at
<coupons.com>. In particular
Respondent’s only interest in the domain name is its value in attracting or
diverting traffic intended for Complainant’s website. See Fanuc Ltd v. Machine Control Servs., FA
93667 (Nat. Arb. Forum Mar. 13, 2000) wherein it was found that Respondent had
no rights or legitimate interest because Respondent did not own the registered
mark, had no permission from Complainant to use the mark, nor was affiliated
with the Fanuc business in any way. In
this case, Respondent is not now, and has never been authorised by Complainant
to use COUPONS, INC. or COUPONS.COM, including use in connection with any
domain names.
Moreover, Respondent is not and has never been
commonly known by the names COUPONS, INC. or COUPONS.COM in accordance with
Policy paragraph 4(c)(ii). Respondent
Motherboards.com is not, and never has been engaged in the business of
electronic coupon technology. In Clipper
Magazine, Inc. v. Advanced Internet Marketing, FA 96180 (Nat. Arb Forum
Jan. 11, 2001), the arbitration panel addressed this very issue, finding that
Complainant had fulfilled its burden under Policy 4(c)(ii) because Respondent
had failed to demonstrate any rights or legitimate interests in the disputed
domain name. Specifically, the panel in Clipper held that no bona fide or legitimate use exists where
a respondent uses the domain name to divert Internet users to its own website,
and thereby furthers its own financial gain by infringing upon Complainant’s
established business. See also, North Coast Med. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000).
Finally, in evaluating the third prong of the test,
Respondent’s conduct cannot constitute “non-commercial or fair use without
intent for commercial gain to misleadingly divert customers or to tarnish the
trademark or service mark at issue.”
Respondent’s use is wholly outside the 4(c)(iii) criteria, and is per se evidence of intent to reap
commercial gain from Complainant’s protected and widely-recognised COUPONS,
INC. and COUPONS.COM marks.
Respondent’s registration and use of the domain name
is clearly in bad faith. In light of the fame and reputation of Complainant as
the leading provider of electronic coupons technology, it is inconceivable that
Respondent could have registered the domain name without actual knowledge of
Complainant’s rights. Indeed,
Respondent is and has been pointing the domain name to a webpage containing
hyperlinks to unaffiliated third party websites that offer coupons. By reaching Respondent’s website being used
in connection with the domain name, consumers may be confused into thinking
that Respondent’s website and the unaffiliated third-party links originate
from, are affiliated with or are endorsed by Complainant in some way. More
importantly, however, Respondent’s registration and use of the domain name is
evidence of bad faith and done in violation of Policy Paragraphs 4(b)(ii),
(iii) and (iv).
Respondent is a known cybersquatter. In fact, a National Arbitration Forum panel
issued a decision against this same Respondent on December 2, 2002. See Stanley
Logistics v. Motherboards.com, FA 152617 (Nat. Arb. Forum. Dec. 2, 2002)
wherein bad faith was found and transfer of <bostitch.com> was ordered.
In addition, it appears to be cybersquatting on the legitimate rights of the
San Francisco 49ers by registering the domain name <fortyniners.com> and
operating a website under that name to sell football related products. In light
of this documented history of bad faith conduct, there can be no question that
Respondent herein has acted in violation of Policy 4(b)(ii).
Respondent’s registration of the domain name is
designed to attract web traffic intended for Complainant by those who type in
the domain name directly corresponding to its legal corporate identity,
Coupons, Inc. This conduct
intentionally disrupts the business of Complainant, creates consumer confusion,
infringes Complainant’s rights as the rightful legal entity Coupons, Inc., and
enables Respondent to reap its own financial gain on the fame and goodwill
associated with Complainant and its domain name and trademark. See Sports Auth. Mich. v. Akre, FA 147315 (Nat. Arb. Forum April 4,
2003) wherein it was found that Respondent’s conduct of deliberately creating a
likelihood of confusion, and using the domain name to host a commercial website
to sell products that directly compete with Complainant constitutes bad faith.
Since obtaining his registration, Respondent has used
the domain name in connection with an active website to promote products and
services in direct competition with those offered by Complainant. In light of this evidence, it is abundantly
clear that Respondent was well aware of Complainant and its domain name and
trademark, and simply registered the name to trade on the fame and goodwill
associated with Complainant and its marks.
Thus, Complainant urges that violation of the Registration Agreement
should be deemed another element of bad faith in the proceeding herein.
B.
Respondent
Respondent, who is in the
business of incorporating an e-commerce website that sells personal computer
components, uses the webpage located at the <couponsinc.com> domain name
as a means to earn revenue by way of pay-per-click advertising consolidator, by
providing a listing of paid search links relevant to the term “coupons”.
According to Respondent, generic or descriptive terms,
or terms which are not exclusive to the claimant for the same goods and
services, are generally incapable of performing the function of acting as trade
or service marks because they merely convey their primary meaning as indicators
or descriptors of the goods or services themselves. Moreover, the designation of “Inc.” in a
corporate name, just like the designation of “.com” in a domain name, does not
convey sufficient distinctiveness to overcome the basic fact that the dominant
portion of the term is generic or descriptive.
The corporate name “Coupons
Inc.” in Complainant’s field of coupons is a non-distinctive trade name, and
certainly not a trademark. There are many examples of non-exclusive users of
the term “Coupons Inc.” in a trade name. It appears from the records of the
U.S. Patent and Trademark Office (hereinafter the “USPTO”) that several others
were using the term “coupons inc.”, “coupons.com” or variations thereof as a
formative part of their trade names in the field of coupons long before
Complainant adopted its current trade name in 2001. Indeed, a search of
registered internet domain names shows that there are over 2,000 registered
domain names with the word “coupon” in them.
Complainant holds U.S. Trademark
Registration Applications Nos. 76/005807 and 76/005634. Both of these
applications were filed in March 2000 on an intent-to-use basis for a stylised
representation of the term “Coupons.com”, and both were met with the identical
stock refusal under 15 U.S.C. §1052(e)(1) on the basis that the proposed mark
is “merely descriptive”. In addition to the descriptiveness refusal, both
applications were refused registration on grounds of confusing similarity with
several prior applications by others. Both applications have been suspended by
the USPTO pending disposition of the earlier-filed applications by others, and
both grounds of rejection, including descriptiveness, have been maintained.
Identical results have been held
under the Policy, in accordance with accepted principles
of trademark law pertaining to
generic and descriptive terms. The facts here are similar to those in Interactive Television Corp. v. Noname.com,
D2000-0358 (WIPO June 26, 2000). There, the panel did not accept that
registration of the stylised term “Interactive Television” or the corporate
trade name of Complainant, “Interactive Television Corporation”, were
sufficient to overcome the wide use of “interactive television” as a generic or
descriptive term. Here, Complainant’s case is much weaker, as it does not have
a federal registration and, indeed, both of its registration applications have
been refused on grounds of mere
descriptiveness. Similarly, in Pet Warehouse
v. Pets.Com, Inc., D2000-0105 (WIPO April 13, 2000), the panel declined to
find that the corporate name of Complainant, “Pet Warehouse” was sufficient to
convey a trademark right. Here, as in that case, the term “Coupons Inc.” is not
distinctive to Complainant, as both of its
trademark applications have been
rejected, and it would be absurd to find that the addition of “Inc.” renders a
term distinctive, while the addition of “warehouse” does not. Indeed, as held
in Henry A La Pensee, Inc. v. Societe a Responsibilite
Limitee Henry a La Pensee, 243 F.2d 181, (C.C.P.A., 1957), “[...] ‘Inc.’
must be ignored in considering this question, a point which had long been
settled on the theory that ‘Inc.’ does not serve to identify any corporation in
particular."
For the foregoing reasons,
Respondent submits that Complainant has failed to prove that the domain name is
identical or confusingly similar to a trade or service mark in which
Complainant has rights.
The second condition required to
be proven by Complainant is that Respondent
lacks any legitimate rights or
interests in the domain name. Respondent provides a listing of paid search
links relevant to the term coupons. These links are provided by Respondent’s
affiliation with a pay-per-click advertising consolidator, and correspond to
links for which advertisers have paid to receive traffic relevant to the word
“coupons”. The use of generic/descriptive terms to drive pay-per-click traffic
to advertisers based on the nature of the term is a perfectly legitimate use of
a domain name, and one in which Respondent has a legitimate expectation in the
continuation of the revenue derived from providing this service. As noted in Canned Foods, Inc. v Ult. Search Inc.,
FA 96320 (Nat. Arb. Forum Feb. 13, 2001), “Respondent is using the domain
“groceryoutlet.com" for a website that links to online resources for
groceries and similar goods. The domain is therefore being used to describe the
content of the site. The panel finds that this is a legitimate interest in the domain
name. . . . Complainant alleges that Respondent derives revenue from its site
when users click on the links. If this allegation were substantiated, it would
support a finding of a legitimate right or interest in the domain, not bad
faith.” See also Sweeps Vacuum
& Repair Center, Inc. v. Nett Corp., D2001-0031 (WIPO April 13, 2001)
and Credit Mgmt. Solutions, Inc. v.
Collex Res. Mgmt., D2000-0029 (WIPO March 17, 2000); see also CRS Tech. Corp. v. Condenet, Inc., FA
93547 (Nat. Arb. Forum Mar. 28, 2000) wherein it was found that where the
registrant is using the domain name to communicate some aspect of the services
it provides, then the first to register a domain name containing a generic or
descriptive mark should prevail absent bad faith and a lack of legitimate
interest.
The third criterion required to
be proven by Complainant under the Policy is that the
domain name was registered in
bad faith and that the domain name has been used in bad faith. In this case,
there can be no bad faith in Respondent’s use of a descriptive and utterly
non-distinctive term relating to coupon companies for the purpose of
advertising coupon companies and related goods and services. Such use of a
domain name has repeatedly been held to constitute a legitimate good faith use
of an available domain name.
Interestingly, Complainant’s
research into finding that Respondent is a “cybersquatter” did not manage to
turn up Wharton Sch. of the Univ. of
Penn. v. Motherboards.com, FA 161274 (Nat. Arb. Forum July 24, 2003), in
which Respondent’s use of the non-distinctive term “Wharton” in connection with
the town of Wharton, nearby to Respondent’s location, was found to be a
legitimate, good faith use of a domain name.
Moreover, merely stating
that Respondent may have other domain names containing alleged trademarks
having nothing to do with Complainant’s claim is not probative either of intent
or of a pattern of behaviour. In regard to such “pattern” evidence, the Policy
itself is clear that a “pattern of registrations” intends to block Complainant
from reflecting its trademark in a
domain name. Complainant has shown no such thing.
Reverse Domain Name
Hijacking
In view of Complainant’s claim
to a “famous trademark” in COUPONS.COM on which
the Complaint is based,
Respondent respectfully requests the Panel to consider whether Complainant
could possibly have made such a claim in good faith, knowing full well that
both of its trademark registration
applications have been rejected on grounds of descriptiveness and of confusing
similarity with alleged trademarks owned by others. Assertion to have a “famous
trademark” in such a term, while deliberately concealing the truth from this
Panel, would not pass muster under Federal Rules of Civil Procedure, Rule 11,
and should not be countenanced in these proceedings which put the opposing
party under considerable time pressure and disadvantage to investigate and
uncover such clearly deceptive allegations. Indeed, since Complainant has been
advised that its alleged mark is confusingly similar to prior claimed terms,
the Panel may consider Complainant’s motives in seeking transfer of the domain
name to Complainant, in view of the fact that Complainant has been put on
notice of the confusing similarity of its claim to COUPONS.COM relative to
prior pending claims of others.
C.
Additional Submissions
1. By Complainant
Complainant
must correct Respondent’s misstatements in these applications that have been
refused or rejected by the USPTO. Both of the trademark applications cited by
Respondent were suspended on April 8,
2003, and there has never been any final disposition or refusal to
register either of these marks. Neither of these applications, both of which
are design marks for COUPONS.COM, were cited or relied upon in filing this
action because they are completely irrelevant to a determination of
Complainant’s established common law rights in its COUPONS, INC. mark, trade
name and legal corporate name, which predate Respondent’s registration and use
of the <couponsinc.com> domain name by more than two years.
More
importantly, Respondent has submitted absolutely nothing to rebut Complainant’s
evidence; namely, that Respondent’s infringing registration of the <couponsinc.com>
domain name is identical and confusingly similar to Complainant’s COUPONS, INC.
mark, trade name and legal corporate. Instead,
Respondent bases its entire argument on whether Complainant has exclusive
rights solely in the term “Coupons”.
In
the realm of domain names disputes, the reference to a trademark or service
mark “in which Complainant has rights” under the Policy Paragraph 4(a)(i) means
that ownership of a registered mark
is not required – unregistered or common law trademark or service mark rights
will suffice. See,
e.g., Nintendo of Am., Inc. v. Holland,
D2000-1483 (WIPO, Jan. 11, 2001)
wherein transfer of several domain names was ordered based on Complainant’s
common law trademark rights in each of the underlying names which were
established through use of the names as video game characters; see also,
Forrester v. Hoffman, FA 170644 (Nat. Arb. Forum, Sept.
3, 2003) wherein it was found that Complainant had common-law rights in his own
name, Doug Forrester, as established through use as a public figure, and
ordering a forced transfer of the domain name.
The
evidence submitted by Complainant, including its Articles of Incorporation as
filed with the California Secretary of State on March 21, 2001 is conclusive
evidence that it is duly incorporated as COUPONS, INC. Moreover, Complainant has established
through the Affidavit of Francis L. Serafin, the Chief Financial Officer of
Complainant COUPONS, INC., that to date, it has circulated over 15 million
coupons bearing the COUPONS, INC. mark and has spent in excess of one million
dollars on promotional and marketing itself under the COUPONS, INC. mark in
magazines of mass circulation such as “Family Life” and “Cooking Light”, as
well as through its own Internet website located at <coupons.com>.
Complainant’s continuous and prominent use of its COUPONS, INC. mark in commerce
since March 2001 has made Complainant the leading provider of Internet-based
coupon technology. As such, the public
has come to associate the COUPONS, INC. mark with Complainant.
It is well established under the Policy
and numerous UDRP decisions that the commercial use of a domain name to divert
Internet traffic does not establish legitimate rights or interests. See Vapor Blast Mfg. Co. v. R
& S Tech. Inc, FA 96577 (Nat. Arb. Forum Feb. 27, 2001). Moreover, prior National Arbitration panels
considering the identical issue have consistently held that Respondents that
behave in a manner similar to Respondent herein have no rights or legitimate
interests under a Policy Paragraph 4(a)(ii) analysis. See, e.g., Rock
Financial, a Quicken Loans Company v. Chan, FA 167917 (Nat. Arb. Forum Aug.
15, 2003) and Kmart of Mich., Inc. v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002).
Respondent
is not and has never been authorized in any way to use the COUPONS, INC.
mark. Respondent candidly admits that
it is not authorized to use the mark or affiliated with Complainant. Indeed, it is not even in the coupon
business, and has only registered and used the <couponsinc.com> domain
name which is identical to Complainant’s COUPONS, INC. mark to make money on
the goodwill and reputation of Complainant by earning pay-per-click revenue
from use of the domain name in connection with the third-party links on its
website that direct traffic to Complainant’s competitors.
It is abundantly clear that Respondent behaved in a
predatory manner by registering the domain name. If Respondent were interested in creating a web page with links
to coupon sites for the sole purpose of generating revenue through
pay-per-click arrangements, it could have picked any number of domain names
that incorporate the term “coupons” without selecting the domain name that is
identical to Complainant’s COUPONS, INC. mark, trade name and corporate
identity.
Respondent registered the domain name more than two
years after Complainant began using its mark. Clearly, it is because of
Complainant’s notoriety and the goodwill associated with Complainant’s mark
that this name had such immense value to Respondent for its use in soliciting
web traffic. Respondent knew that by registering a domain name that is identical
to Complainant, it would gain a great deal of web traffic from people trying to
reach Complainant’s website and upon doing so, they would likely click through
a link thereby generating money for Respondent. This conduct consistently has been held to be in bad faith by
numerous UDRP panels. See Lowermybills.com, Inc. v. Dinoia, FA
183728 (Nat. Arb. Forum Oct. 2, 2003) wherein bad faith was found where
respondent registered the misspelled version of Complainant’s
<lowermybills.com> domain name to earn referral fees or commissions by
redirecting Internet users to a pay-per-click search engine. See also CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan 12,
2001) wherein it was found that Respondent’s use of the VINCE LOMBARDI mark to
divert Internet users to its commercial website constituted bad faith use and
registration of the disputed domain name.
2. By Respondent
Respondent
fully recognizes that Complainant asserts two alleged trademarks – COUPONS,
INC. and COUPONS.COM. It is a trite
legal proposition that when considering a trademark consisting of a domain
name, the “.com” portion does not provide a source-identifying function.
Concerning “Coupons Inc.”, the legal result is the same. First, the fact that it is Complainant’s trade
name, as noted on its certificate of incorporation, is irrelevant under the
Policy. As noted by panelist Jacques A.
Léger, Q.C., in Not My Kid, Inc. v. Ron Sawchak, FA 167978 (Nat. Arb.
Forum Sept. 23, 2003):
Complainant
asserts it was incorporated in April 2000, under the name NotMYkid, Inc.
Although this is not specifically alleged by Complainant, Panel finds that
“NotMYkid” may be viewed as Complainant’s trade name. However, as stated in
Univ. of Konstanz v. uni-konstanz.com D2001-0744 (WIPO Oct. 18, 2001), the UDRP Policy’s scope did not encompass trade
names in its definition of “mark” in which Complainant has rights. See also
Sintef v. Sintef.com D2001-0507 (WIPO June 9, 2001) wherein it was found that “trade names as such are, however, not the subject
of the current Policy”. [emphasis added]
Trade
names, alone, do not operate as trademarks, and the term “Coupons” in “Coupons
Inc.” cannot be a trademark for goods and services relating to coupons. The
full term “Coupons Inc.” is included, in its entirety, in the trade names of
several entities in the coupon trade. Complainant’s asserted “marks” would not
satisfy the requirements of either de
facto or de jure distinctiveness
required of a common law trademark.
With
regards to the pending applications, the USPTO has refused registration of both
of Complainant’s applications on two grounds – confusing similarity with prior
applications and descriptiveness. The
USPTO has also rejected Complainant’s arguments contrary to both grounds of
rejection. It is worth noting that the only thing standing between Complainant
and final rejection of the applications is the refusal based on
non-distinctiveness – that is the only reason why the applications are
“suspended”.
Respondent
has made the full prosecution file of Complainant’s trademark applications
available to the Panel. UDRP Panels are certainly free to make decisions on any
legal basis they choose. But when
Panels under the UDRP proceed against the face of such well-accepted principles
as those cited here, the Policy is brought into disrepute, as when the decision
in Freebies Publ’g v. Retail Servs., Inc., FA 112565 (Nat. Arb. Forum
July 15, 2002), relating to the <freebies.com> domain name which
incorporated the common word “freebies”, was subsequently declared by a federal
court to have lacked basis in either the facts or the law. See Retail Servs., Inc., et al. v.
Freebies Publ’g, et al., 2003 U.S. Dist. LEXIS 2934, 02-CV-1111 (E.D. Va.
Feb. 27, 2003). At least the “freebies”
case involved a federally-registered trademark (also cancelled by the district
court). Additionally, if Complainant were able to satisfy the common law
requirements for a trademark, about which it propounds at length, then the
USPTO would have certainly been able to comprehend that, as the distinctiveness
requirements for registration are not materially different from the
distinctiveness requirements at common law.
We are not dealing in this case with an inherently
distinctive term. We are dealing with
the term “Coupons Inc.” which, if it conveys any meaning at all, conveys the
primary meaning of a company that one would be willing to bet has something to
do with coupons. It should come as no
shock that Respondent is using the domain name, surprisingly enough, to
advertise companies that provide services relating to coupons.
See Car
Toys, Inc v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum March 20,
2000); Dog.com, Inc. v. Pets.com, Inc., FA 93681 (Nat. Arb.
Forum March 31, 2000); Fifty Plus Media
Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000); Jewelry.com v Idealab!,FA 95242 (Nat.
Arb. Forum Sept. 1, 2000); Lucky Money,
Inc. v. ilovesschool.com, FA 96383 (Nat. Arb. Forum March 9, 2001).
Complainant
makes much of the fact that its trademark applications are still pending. Respondent admits that it has not researched
the status of the patent infringement suit filed in March 2003 against
Complainant by E-Centives Inc. See,
http://www.e-centives.com/pr_releases.html,
“E-Centives Files Patent Infringement Lawsuit Against Coupons Inc.” However, it may well be found as a result of
that litigation that Complainant’s online coupon business is, itself, an
entirely illegitimate enterprise. Presumably,
Complainant seeks to enlist this Panel as co-defendants for contributing to its
patent infringement by providing yet another domain at which to infringe. Respondent would respectfully request
indemnification of some kind in the event Respondent is compelled to promote
Complainant’s ongoing abuse of intellectual property rights.
Finally,
Complainant helpfully suggests that Respondent may register, without objection,
“any number of domain names that incorporate the term ‘coupons”. Acting on this advice, Respondent has noted
that the domain name “couponsincorporated” is, at the time of this submission,
available for registration in .com, .net, and other top-level domains.
Complainant refers in its
Supplement to “Respondent’s admitted bad faith conduct”. Respondent believes the record is clear that
Respondent has admitted no such thing.
Respondent reasonably believes, has sought the advice of counsel, and
agrees with the relevant U.S. Government agency, that there can be no bad faith
here, as Complainant has not proven that it has trademark rights in either
COUPONS, INC. or COUPONS.COM.
DISCUSSION & FINDINGS
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 Complainant
must prove cumulatively each of the following three elements so as to
obtain an order for a domain name to 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 and is being used in bad faith.
Rights in the Mark
In this
proceeding, Respondent has raised the crucial question as to whether
Complainant has rights in any of the alleged marks, i.e. COUPONS, INC and
COUPONS.COM in order to meet the requirements set forth in Policy Paragraph
4(a)(i).
Respondent’s
entire argument seems to revolve around this very issue and for that reason,
the Panel has reviewed it exhaustively, as failure to meet this burden leads
automatically to a rejection of the Complaint.
First
and foremost, the Panel wishes to stress the fact that Complainant has, by its
own choosing, elected to rely solely on its common law marks. The Panel has
therefore undertaken the analysis laid down in Policy Paragraph 4(a)(i) with
regards to the alleged common law marks COUPONS, INC. and COUPONS.COM. Any
reference by Respondent to USPTO proceedings, while not conclusive, is somewhat
relevant if only to take into account other factors as to Complainant’s
entitlement to trademark rights. Had the Panel entertained some doubt on this issue, it
would have considered the weight to be given to Complainant’s election not to
rely on its USPTO application, as stated by Respondent, as it is to say the
least peculiar that Complainant has eluded to mention such documents.
Complainant makes a very clear statement
that it relies on its common law rights
in COUPONS, INC, as a mark, a trade name and as its legal corporate
name, which predate Respondent’s domain name registration by two years.
Complainant contends that it has established rights in the COUPONS, INC. mark
by virtue of the fact that it has been the legal corporate name of Complainant
since March 2001. Complainant further affirms that it has established rights in
the COUPONS.COM mark through its possession of the <coupons.com> and
<coupon.com> domain names since January 2000. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23,
2000) wherein it was noted that the Policy “does not distinguish between
registered and unregistered trademarks and service marks in the context of
abusive registration of domain names” and applyed the Policy to “unregistered
trademarks and service marks.”
Complainant further contends that it does
not need to prove “exclusive” rights to meet its burden under Policy paragraph
4(a)(i). See Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) wherein it was held that ICANN Policy paragraph
4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but
only that Complainant has a bona fide
basis for making the Complaint in the first place; see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct.
4, 2000) wherein it was found that Complainant has common law rights in
BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant
as the source of broadcast services over the Internet, and evidence that there
is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as
to the source of broadcast services.
As evidenced by the affidavit
of Mr. Serafin, Complainant argues that it holds a famous trademark and that it
has become well-know in its industry. In addition, Complainant states that 15
millions coupons have been printed via its company and that it has invested
over one million dollars in promotion and marketing since March 2001. Besides
a photocopied version of its Articles of Incorporation, Complainant submits as
its evidence two photocopies of magazine advertisements, one in “Family Life”
dated April 2000 and the other in “Cooking Light”, which unfortunately bears no
date. These advertisements tend to show that the word “coupons” is used in a
descriptive fashion, where Complainant itself is using its trade name to offer
coupons, shopping lists, etc. As such, the Panel finds this evidence to be not
persuasive, especially given the fact that no information has been provided as
one would expect as to the distribution area of these publications and their
readership. Finally, Complainant affirms that it is the leading provider of
internet-based coupon technology and that as such, the public has come to
associate the COUPONS, INC. mark with Complainant.
Respondent,
for its part, argues that the term “coupons” is generic and that Complainant attempted
and failed on two occasions to register the COUPONS.COM mark due to the
descriptive nature of the mark and their confusing
similarity to other marks,
evidence that Complainant does not have rights in the mark. See
PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) wherein it was found that
"pet" and "warehouse" are generic terms and therefore not
subject to trademark protection, while noting that the USPTO’s rejection of
Complainant’s application for a service mark registration denied a presumption
of validity to Complainant’s claim of exclusive rights in that mark; see also Rollerblade, Inc. v. CBNO and
Redican, D2000-0427 (WIPO Aug. 24, 2000) wherein it was found that
“genericness, if established, will defeat a claim of trademark rights, even in
a mark which is the subject of an incontestable registration.”
Respondent
also states that there are actually over 2000 registered domain names with the
word “coupon” in them. Moreover, Respondent is of the view that COUPONS.COM and
COUPONS, INC. are in fact the same mark, since both “.com” and “inc.” cannot
work as distinctive factors.
According
to Respondent, Complainant’s marks are not famous and its advertising is not
sufficient to create secondary meaning, given beforehand that distinctiveness
is a requirement for common law marks. Furthermore, Respondent contends that the Policy was not
designed to provide protections for trade names. See Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb.
Forum April 4, 2003) wherein it was found that Complainant’s use of a trade
name, without any showing of secondary meaning associated with the name, was an
insufficient demonstration that Complainant “had rights” under the Policy; see also 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, was insufficient to create a
trademark.
Respondent contends that
Complainant has not proven that it has common law rights in a mark which
incorporates the term COUPON, either in its submissions to the Panel or to the
USPTO. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May
19, 2003) wherein it was held that a
finding of common law rights in a mark required a level of supporting evidence,
statements or proof (such as business sales figures, revenues, advertising
expenditures, number of consumers served, trademark applications or
intent-to-use applications); see also
Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution
Sept. 9, 2000) wherein it was found that marks classified as descriptive cannot
be protected unless secondary meaning is proven and to establish secondary
meaning Complainant must show that the public identifies the source of the
product rather than the product itself.
It is the Panel’s opinion that
the term “coupons”, though not generic in and of itself, is nonetheless highly
descriptive. Consequently, in order to overcome this lack of inherent
distinctiveness, Complainant had the burden to establish secondary meaning
which it might have acquired as a result of extensive and widespread use. The
Panel finds that Complainant has failed to do so.
As noted by Respondent, it was
decided in Not My Kid, Inc. v. Sawchak FA167978
(Nat. Arb. Forum, Sept. 23, 2003) that a mere trade name cannot per se function as a mark, as indeed,
only when used as a trademark may a trade name or business name constitute a
mark under the Policy. While the facts of the present case can be distinguished from those in Not My Kid, Inc. v. Sawchak, wherein
Complainant had not submitted any relevant evidence to demonstrate
rights in its alleged mark. Conversely, the Panel here has been presented with
at least some material evidence, which however has not been considered
sufficient to confer rights to Complainant’s alleged marks.
As stated in Classmates Online Inc. v. Zuccarini, D2002-0635
(WIPO Sept. 6, 2002), “while a descriptive term limits considerably a mark
owner’s ability to prevent others from comparable use of the term in a domain
name, and the scope of its mark generally, it does not ipso facto render the mark unenforceable or unavailable for use
under the Policy.”
Furthermore,
in Media West-GSI, Inc. v.
Earthcards.com, Inc., D2000-0463 (WIPO July 28, 2000), the Panel enumerated
the different factors which may come into play in order to evaluate secondary
meaning in a descriptive term:
“this
test requires a demonstration that the mark, by means of sufficient marketing,
sales, usage, and passage of time, has become identified in the public mind
with a particular source of the goods or services. In determining whether a
mark has acquired a secondary meaning, courts consider such factors as: (1)
advertising expenditures, (2) consumer surveys linking the mark to a source,
(3) unsolicited media coverage of the service, (4) sales success, (5) attempts
to plagiarize the mark, and (6) length and exclusivity of the mark’s
use.”(references omitted).
From
the above, the case-law is quite adamant as to the requirement of extensive use
evidence, particularly for trademarks that lack inherent distinctiveness. As to
what such evidence might be, for example, it was stated in All Packaging Mach. Supplies, Corp. v. Crystal Flex Packaging Corp.,
D2002-0383 (WIPO July 17, 2002), “although the phrase may be descriptive, it is
entitled to protection as a mark based on 20 years of use. As a result of that
long use, there is a presumption that the mark has acquired distinctiveness,
and Respondent has presented no evidence to rebut that presumption”. In Classmates Online Inc. v. Zuccarini,
D2002-0635 (WIPO Sept. 6, 2002), Complainant had “demonstrated, on uncontested
evidence, widespread recognition (and identification with Complainant) by
United States Internet users of its registered mark, similar marks for which
USPTO applications are pending and a heavily trafficked website.”
Another
example of what kind of evidence is sufficient to establish secondary meaning
is set out in Australian Trade Comm’n v.
Reader, D2002-0786 (WIPO Nov. 12, 2002), wherein the Panel noted that:
“it
is undisputed that Complainant has been identifying itself and its services
with the “Austrade” mark since 1986. Also undisputed are Complainant’s claim
that, in recent fiscal years, it has invested over 10 million Australian
dollars to raise awareness of its services, and raised as much in the annual
revenue for services provided, all in conjunction with its use of the
“Austrade” identifier. Additionally,
the name has appeared in brochures and other written materials published
by Complainant for a wide audience. Complainant also demonstrates awareness of
its name and services both within and outside of Australia.”
Moreover the decision in Den Norske Laegeforeningen v. Eivind Nag,
D2000-1267 (WIPO Nov. 15, 2000) is quite illustrative as it states that “in
order to obtain such a right of user of a generic word a very extensive use is
required.”
Considering
the limited evidence filed by Complainant to meet the necessary burden imposed
on it, the Panel is of the opinion that Complainant has not satisfactorily
established rights in the marks COUPONS, INC. and COUPONS.COM. Indeed, the
former being a trade name and the latter a domain name, in light of the
evidence submitted, the Panel must find that Complainant has failed to achieve
proprietary rights which it might have otherwise had if secondary meaning had
been proven. For this reason there is no point in reviewing the other two
elements necessary to prove a domain name case under the UDRP, and the Panel
rules for Respondent.
Respondent alleges that Complainant was well-aware that it had no
enforceable rights in any mark containing the word COUPON and that the
Complaint was therefore brought in bad faith. Complainant failed to address
this issue.
As
stated in Sydney Opera House Trust v.
Trilynx Pty. Ltd, D2000-1224 (WIPO Oct. 31, 2000), to establish reverse
domain name hijacking, Respondent must show knowledge on the part of
Complainant of Respondent’s right or legitimate interest in the disputed domain
name and evidence of harassment or similar conduct by Complainant in the face
of such knowledge. No such evidence has been brought to the attention of the
Panel, thus this claim must be rejected.
In
Aspen Grove, Inc. v. Aspen Grove,
D20001-0798 (WIPO Oct. 5, 2003), the
Panel noted that Complainant had not demonstrated it had trademark rights in
the disputed domain name, Respondent demonstrated rights in the disputed domain
name, and finally, Respondent had registered the domain name some two years
before Complainant came into existence and thus could not have been in bad
faith at registration relative to Complainant. In the case at hand, none of
these circumstances are present, and as such, the Panel finds no reverse hijacking.
Moreover,
the Panel is of the opinion that Complainant has presented a Complaint that
meets the UDRP standards, and therefore, the Panel is not convinced that there
is reverse hijacking. See N. Am. Die
Casting Ass’n v. Genick Bar-Meir, D2000-0295 (WIPO July 6, 2000).
DECISION
Having
failed to establish the primary element required under the ICANN Policy
Paragraph 4(a)(i) with regards to any rights in the mark, the Panel concludes
that relief shall be DENIED.
Jacques A. Léger, Q.C., Chair
Sandra J. Franklin and
G. Gervaise Davis III, Panelists
Dated: November 4, 2003
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