The Fresh Market, Inc. v. Modern
Limited-Cayman Web Development a/k/a Cayman Trademark Trust
Claim Number: FA0310000203205
PARTIES
Complainant
is The Fresh Market, Inc.,
Greensboro, NC (“Complainant”) represented by Eric A. Adamson, 802 Green
Valley Road, Greensboro, NC 27401.
Respondent is Modern
Limited-Cayman Web Development a/k/a Cayman Trademark Trust, George Town,
Grand Cayman (“Respondent”) represented by Ari
Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <thefreshmarket.com>
(“the Domain Name”), registered with Bulkregister,
LLC.
PANEL
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.
Dawn
Osborne as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 16, 2003; the Forum received a hard copy of the
Complaint on October 16, 2003.
On
October 16, 2003, Bulkregister, LLC. confirmed by e-mail to the Forum that the
domain name <thefreshmarket.com>
is registered with Bulkregister, LLC. and that the Respondent is the current
registrant of the name. Bulkregister,
LLC. has verified that Respondent is bound by the Bulkregister, LLC.
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 22, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 11, 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@thefreshmarket.com by
e-mail.
A
timely Response was received and determined to be complete on November 11, 2003.
Complainant
submitted a timely additional submission on November 17, 2003, pursuant to
Forum Supplemental Rule 7.
On November 20, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Dawn Osborne
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant’s assertions can be summarized as follows:
It
is the owner of a US federally registered trade mark (Reg. No. 1,283,775) for
THE FRESH MARKET (“the Trade Mark”) , the name under which it operates 38
gourmet grocery stores in 8 different US States. It commenced use of the Trade
Mark in 1981 and it has been in continuous use since this date. It has a website at
<thefreshmarket.net> used to promote its good and services.
The
Domain Name is identical and/or confusingly similar to the Complainant’s trade
mark. The addition of “.com” is not sufficient to distinguish the Domain Name
from the Trade Mark.
The
Respondent has no rights to or legitimate interests in the Trade Mark contained
within the Domain Name. Respondent is not commonly known by the Trade Mark. The
Domain Name is only used at the top of the site connected to the Domain Name by
the Respondent and <thefreshmarket.com> is not a description of
the Respondent’s business of diverting Internet traffic to a website that
offers links to commercial websites, banner advertisements and pop up
advertisements covering a variety of fields of commercial endeavour. The
Respondent has registered other domain names such as <toshibalaptop.com>;
<yamahadirtbike.com>; <yamahadirtbikes.com> and
<nelson-mandela.com>, which point to virtually identical web pages, the
only difference being that each one has the relevant domain name appearing
twice at the top of the web site where thefreshmarket.com appears on the site
connected to the Domain Name. Clicking on the contact link for <thefreshmarket.com>
leads to no legitimate contact information or method of contacting anyone and
results in a “This page cannot be found” default page showing no legitimate
interest in the Domain Name. Such use is not a bona fide offering of goods and
services as contemplated under the Policy.
The
Respondent has registered and is using the Domain Name in bad faith. The Respondent’s use of the Domain Name
shows that the Respondent has intentionally attempted to attract Internet users
to its web site for commercial gain by creating a likelihood of confusion with
the Complainant’s trade mark as to the source, sponsorship, affiliation or
endorsement of the Respondent’s web site.
Respondent
registered and is using the Domain Name with the intent to profit from the goodwill
attributable to the Trade Mark. In the case of Georgia Boot LLC v. Modern
Limited – Cayman Web Development, FA149173 (Nat. Arb. Forum Apr. 21, 2003),
it was found that the Respondent had registered over 2,200 domain names, that
the Respondent is in the business of acquiring and selling domain name
registrations, that many of the domain names registered to the Respondent are
identical or confusingly similar to valuable, registered and famous trade marks
and that the Respondent hopes to profit from the resale of its infringing
domain name registrations to the owners of the trade marks.
B. Respondent
The
Respondent’s assertions can be summarized as follows:
The
Complaint must be dismissed because the Trade Mark is a generic or descriptive
term for “gourmet grocery stores.” Generic and descriptive terms provide no
enforceable trade mark rights under the Policy even where the Complainant has a
registered trade mark. To provide such rights under the Policy essentially
grants trademark owners a monopoly on a generic or descriptive term which
exceeds the limited rights to use a mark for only a specific class of goods and
services. Absent enforceable trade mark rights, the complaint must fail.
Respondent
has rights and a legitimate interest in the Domain Name because it incorporates
the common term “the fresh market”.
Anyone is entitled to register a
domain name incorporating a common descriptive term and the first to
register such domain has a legitimate interest in it. Respondent uses the
Domain Name in connection with an affiliate advertising program which
constitutes the bona fide offering of goods and services.
The
Respondent has not used the Domain Name in bad faith. The Complainant must
prove that the Domain Name was registered to sell to the Complainant or that
the value of the Domain Name derives exclusively from the fame of the
Complainant’s mark. Respondent had no knowledge of the Complainant when it
registered the Domain Name. Respondent registered it because it was a common
descriptive term which was deleted when it expired due to non payment. A
registrant is entitled to presume that no party claims trade mark rights to a
name that has been deleted. Respondent did not register the Domain name for the
purpose of selling to the Complainant. Respondent did not register the Domain
Name with the intent to disrupt the Complainant’s business or to confuse
customers seeking to find the Complainant’s web site. Respondent did not
register the Domain Name to prevent the Complainant from incorporating its
alleged trade mark in a domain name. The decisions against the Respondent cited
in the Complaint, involve only registered domain names that expired and became
available for anyone to register.
The
fact that the Respondent’s contact link is not working is merely a technical
error.
The
Respondent did not file a Response in any of the proceedings decided adversely
against it and thus the decisions were decided solely on complainant’s
allegations. The Panel is requested to decide this proceeding based solely on
facts and arguments presented here.
The
Trade Mark merely describes the business the Complainant was in, operating
stores (i.e. markets) that sell, among other things, perishable foods. The
terms “freshmarket” and “the fresh market” are common terms used in the food
products industry to describe fresh food products.
Respondent
is located in the Cayman Islands , while the Complainant is a supermarket chain
operating local stores only in limited US States (Alabama, Kentucky, Virginia, Goergia,
South Carolina, North Carolina, Florida and Tennessee). Complainant does not
operate in the Cayman Islands and is not known there, so Respondent would not
have heard of Complainant or its mark. Respondent had no actual or constructive
knowledge of Complainant’s US trade mark and business.
C.
Additional Submissions
Additional
submissions of the Complainant can be summarized as follows:
The
Respondent’s physical location does not insulate it from UDRP claims and the
claim that it had no actual or constructive knowledge of the Trade Mark is not
credible.
The
Respondent routinely registers and uses domain names incorporating trade marks,
trade names and other names used in the US and identifying US entities or their
products and services, including marks and names used in the Complainant’s
geographical area. For example, the Respondent has registered the domain names
<bluebayouwaterpark.com> (an amusement park in Louisiana),
<browardcountyschool.com> (in Florida), <dekalbcountyschools.com>
(in Georgia), <memphiscityschool.com> (reference to Memphis Tennessee),
and <georgiaboots.com> (confusingly similar to the US Federal mark
GEORGIA BOOT, which is in use by a Tennessee company since 1968).
The
Respondent has also registered one other US grocery store related domain name
in bad faith, mainly <Albertsoncreditunion.com>. The Complainant was an
Idaho grocery store in Albertson’s Inc. and Albertsons Employees Federal
Credit Union v. Modern Limited – Cayman Web Development, FA178222. That
case and another against the Respondent, Boehringer Ingelheim International
GmbH v Modern Limited – Cayman Web Development, FA133625, undermines the
Respondent’s claim that it did not respond in prior UDRP proceedings. In both
cases, the Respondent filed a submission offering to transfer the disputed
domain names to the Complainant, thereby admitting it had no rights in those
domain names and each panel took the respondent’s submission into account in
its decision.
The
Respondent’s claim that it had no actual or constructive knowledge of the
Complainant is undermined by the fact that a simple online search via the WHOIS
database, a search engine, or trade mark databases would have quickly revealed
that the Complainant was using, and owns the Trade Mark. Such a search is a
reasonable expectation for a company whose name is Cayman Trade Mark Trust and
whose business appears to exist solely on the Internet. The record of UDRP
decisions against the Respondent clearly demonstrates that it has knowledge of
trade marks registered in numerous geographic locales far from the Cayman
Islands including the marks, THE PEOPLE’S PHARMACY in North Carolina, THE
SPORTSMAN’S GUIDE in Minnesota, MOONLIGHT BUNNY RANCH in Nevada, BOEHRINGER
INGELHEIM in Germany, GEORGIA BOOT in Tennessee and SERVIER which had been
registered by a French company in the Cayman Islands, Germany, Argentina,
Lebanon, Myanmar, Romania and Uruguay.
A
prior registration of the domain name <thefreshmarket.com> is not
a matter of record in this case.
The
Respondent has failed to offer any explanation for, or defense to, its long
established history of registering and using trade mark related names in bad
faith. It does not allege it had the permission of any relevant trade mark
owner.
The
Respondent has alleged that the Complainant’s mark is generic, however, it has
itself explicitly identified the trade mark THE FRESH MARKET on its web site by
using the script TM. The Respondent also used the TM symbol in relation to the
marks GEORGIA BOOTS and PEOPLE’S PHARMACY, when it used these marks on its
similar web sites connected to these domain names.
The
Trade Mark has been used continuously for 22 years, it is a registered trade
mark, and is not descriptive or generic. The Trade Mark does not refer to food
and in any event the Complainant sells more than perishable items and
food. “Market” is in no way limited to
grocery stores. Complainant’s annual
advertising expenditures exceed $500,000. While most is focused on the
southeastern US, the Complainant is mentioned in national media (e.g.,
Complainant was recently contacted by NBC news to comment on thanksgiving
turkeys). A substantial number of customers have been exposed to the Trade Mark
and associate it with the Complainant and its goods and services. The Policy
does not require that the use of the Trade Mark be exclusive or enforceable
within certain geographic areas.
The
Respondent does not explain how <thefreshmarket.com> is
descriptive of its business or indeed how the other domain names it has
registered such as <toshibalaptop.com>, <yamahadirtbike.com>, and
<nelson-mandela.com> could be descriptive of the exact same set of third
party advertising links. The evidence shows a history of registration of trade
mark terms by the Respondent as domain names to divert Internet traffic for
commercial gain. It does not show that the Respondent’s business model is based
on the registration of generic/descriptive domain names which could be said to
describe the Respondent’s business.
FINDINGS
(1)
The
panelist finds that 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.
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.
The
Complainant owns the registered trademark, THE FRESH MARKET, in the United
States and has used it in the US continuously for 22 years. Clearly, the US
Trade Mark Registry does not regard the Trade Mark to be generic for the
Complainant’s business as contended by the Respondent. The Panel finds that the
disputed domain name is confusingly similar to Complainant’s THE FRESH MARKET
trademark. The use of the generic
designation “.com” in the Domain Name does not change this.
The Respondent has not shown that it is
commonly known by the Domain Name. The term <thefreshmarket.com>
is not a generic term that is descriptive of the Respondent’s business and the
name simply seems to have been linked along with a lot of other domain names
containing the trade marks of third parties by the Respondent to the same web
site designed to forward internet traffic to third party commercial sites. The
Respondent has used the TM symbol in relation to its use of the term <thefreshmarket.com>,
which would suggest it does not consider the term to be a common descriptive
term free for usage by anyone as it contends. It has not adequately explained
its adoption of the name for its business. The business, <thefreshmarket.com>,
does not appear to exist except as a link to the Respondent’s same web site
that it has linked to other domain names containing the trade marks of third
parties. The Panelist agrees with the Complainant that the Respondent has not
shown bona fide use of the domain name to offer goods and services, such as to
demonstrate rights or legitimate interests in the Domain Name for the purposes
of the Policy.
Paragraph 4(b) of the Rules sets out four non exclusive
criteria which shall be evidence of the registration and use of a domain name
in bad faith including:
(i)
by using
the domain name, the Respondent has intentionally attempted to attract, for
commercial gain, Internet users to its web site or other on-line location, by
creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of its web site or location or
of a product or service on its web site or location.
The Respondent is engaged in the practice of registering
domain names containing the trade marks of entities around the world including
the US and linking those domain names to a commercial website designed to
forward internet traffic to many other commercial web sites of various
kinds. The Panelist agrees with the
Complainant that the Respondent has not provided a sufficient explanation to
show that its activities are in good faith. The history of the Respondent does
not show the registration of generic domain names which can be said to describe
the business that the Respondent is in, but appears to indicate domain name
speculation and exploitation for commercial gain on a grand scale. Accordingly,
it is clear that the Respondent has intentionally attempted to attract, for
commercial gain, Internet users to its web site or other on-line location, by
creating confusion as to the source, sponsorship, affiliation or endorsement of
its products or services. I, therefore, find that bad faith has been
demonstrated under Paragraph 4(b)(iv) of the Policy.
DECISION
In
light of the foregoing, the Panelist decides that the Domain Name is
confusingly similar to the Complainant’s trade mark and the Respondent has no
rights or legitimate interests relating to the Domain Name which was registered
and used in bad faith.
Accordingly,
in light of the above, the Panelist requires that the registration of the
Domain Name, <thefreshmarket.com>, be TRANSFERRED to the
Complainant.
Dawn Osborne, Panelist
Dated: December 4, 2003
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