DECISION

 

HP Hood LLC v. hood.com

Claim Number: FA0408000313566

 

PARTIES

Complainant is HP Hood LLC (“Complainant”), represented by R. David Hosp, of Goodwin Procter LLP, Exchange Place, Boston, MA 02109. Respondent is hood.com  (“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 <hood.com>, registered with Domainzoo.com, 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.

 

Clive Lincoln Elliott (chair) Diane Cabell and Houston Putnam Lowry, Chartered Arbitrator, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 13, 2004; the Forum received a hard copy of the Complaint on August 16, 2004.

 

On August 17, 2004, Domainzoo.com, Inc. confirmed by e-mail to the Forum that the domain name <hood.com> is registered with Domainzoo.com, Inc. and that Respondent is the current registrant of the name.  Domainzoo.com, Inc. has verified that Respondent is bound by the Domainzoo.com, 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 August 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 13, 2004 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@hood.com by e-mail.

 

A timely Response was received and determined to be complete on September 23, 2004.

 

On October 8, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Clive Lincoln Elliott (chair) Diane Cabell and Houston Putnam Lowry, Chartered Arbitrator as Panelist.

 

On October 23, 2004 an additional submission was received from Complainant’s attorney. This submission was received after the deadline for submissions and without the required fee, Therefore The Forum did not consider this submission to be in compliance with Supplemental Rule #7.  However, it was forwarded to the Panel, as directed by ICANN, for our decision on whether it should be considered.

 

The Panel is under no obligation to accept this deficient submission or consider it along with the other materials properly submitted.  The Panel was undecided as to whether to consider the submission, but in the end decided to do so. Accordingly, the Panel received the information which was not submitted in accordance with the rules and considered that material.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

            A. Complainant

 

Complainant is one of the largest branded dairy operators in the United States.  It was established in 1846 and has used the HOOD trade name and trademark to identify itself and its products since that time.  Complainant states that as a result of its continuous use of the HOOD mark and its marketing and sales strategies over the past century and a half, the name HOOD has become distinctive and famous. 

 

Complainant claims that it’s lines of milk related products regularly rank number one in sales in the New England area, and many of its non-dairy and dairy substitute products produced for other resellers rank number one in sales nationwide in their respective categories. 

 

Complainant also claims to have invested substantial amounts of money, time and effort in establishing, developing and promoting the Hood brand in various media, including:  newspapers, circulars, magazines, radio commercials, television commercials, and the internet.

 

Complainant has also been rigorous in registering and protecting its trademark rights in the HOOD mark, and currently owns five relevant federal registrations for the HOOD Marks

 

Complainant asserts that Respondent has no rights or legitimate interests in the <hood.com> domain name because Respondent is offering the domain name registration for sale.

 

Complainant asserts that Respondent has no rights or legitimate interests in the <hood.com> domain name pursuant to Policy  4(c)(ii) because Respondent is not now and never has been commonly known by the disputed domain name, nor has Respondent ever been a licensee or assignee of any rights in Complainant’s HOOD mark.

 

Complainant asserts that Respondent is using the <hood.com> domain name for the primary purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented costs related to the domain name.  Respondent offered to sell the domain name registration on it’s website for $50,000.00 and offered to sell it to Respondent for $46,500.00.  In comparison, Respondent’s other generic domain names are said to be offered for much lower prices, ranging from $188.00 -$1880.00.  Complainant argues that Respondent demanded such an outrageous price for the <hood.com> domain name registration because Respondent was attempting to benefit from Complainant’s well-established reputation in the dairy and food business.

 

Complainant argues that Respondent can make no genuine claim that it is making a bona fide offering of goods and services or legitimate noncommercial or fair use of the <hood.com> domain name and that use of a domain name that is identical or confusingly similar to a trademark and that has the effect of diverting users from the trademark owner’s website constitutes “commercial use.”

 

Complainant asserts that Respondent’s registration and use of the <hood.com> domain name is in bad faith for several reasons:  (1) Respondent has offered to sell the domain name in violation of ICANN Policy ¶ 4(b)(i); (2) the <hood.com> domain name is confusingly similar to well-known marks and is designed to divert unwary Internet users; (3) Respondent violated its registration agreement with its registrar by registering a domain name which it knew or should of known affected the trademark rights of a third-party; (4) Respondent further violated its registration agreement by registering a domain name for which it could have determined third party rights in the name with a rudimentary check.

 

It thus submits that Respondent’s registration and use of the <hood.com> domain name was in bad faith and that for all the above reasons that the domain name should be transferred to Complainant.

 

B. Respondent

 

Respondent is an established bulk domain reseller and internet service provider. Respondent registers domain names that become available for registration through expiration and deletion.  Respondent states that it only registers domain names which incorporate common words, descriptive terms, and/or words and terms to which it believes no single party has exclusive rights. 

 

Respondent asserts that the <hood.com> domain name is comprised of a generic term and as such Complainant cannot claim exclusive rights to the term. It states that the term “hood” is subject to substantial third party use on millions of Internet web pages, so it is certainly not a term exclusively associated with Complainant.  Respondent simply did not register the <hood.com> domain name because it incorporates Complainant’s mark – or any mark.

 

Respondent argues that it has rights and legitimate interests in the <hood.com> domain name because Respondent registered and is using the domain name for a bona fide offering of goods and services, i.e., to sell and use in advertising.

 

Respondent argues that it is well-established that the offer for sale of common word domain names does not constitute bad faith under the Policy but, rather, is a bona fide business activity that establishes Respondent’s legitimate interest. 

 

Respondent states that it had no knowledge of Complainant or its purported mark, and did not register the <hood.com> domain name to sell to Complainant, to disrupt its business, prevent it from acquiring a domain name incorporating its trademark or to confuse users.

 

Accordingly, Respondent submits that Complainant has failed to establish any of the requisite elements of proof under the Policy. 

 

FINDINGS

The majority of the panel finds that Respondent has acted in good faith and has a legitimate interest in the domain.

 

DISCUSSION

 

III. Bases for Respondent to Retain Registration and Use of Disputed Name

 

Under the Policy, to prevail on its claim to obtain the rights to the <hood.com> domain name, Complainant must demonstrate three things:

 

1.                  that the <hood.com> domain name is identical or confusingly similar to its trademark;

2.                  that respondent has no rights or legitimate interest in the <hood.com> domain name ; and

3.                  the domain name was registered and is being used in bad faith.

 

Policy, ¶¶ 4(a)(i)-(iii).  Complainant bears the burden of proof as to each element of its claim.  Policy ¶ 4(a). 

 

A.                 Complainant’s Trademark and the Disputed Domain are Identical or Confusingly Similar

 

Respondent does not dispute this element of the Policy.

           

B. Respondent Has Rights And A Legitimate Interest In The Domain Name

The second element Complainant must prove is that Respondent has no rights or legitimate interest in the <hood.com> domain name. The Complaint fails here, as well.  Paragraph 4(c) of the Policy lists three circumstances that can demonstrate a registrant’s rights or legitimate interest in the disputed domain name:

 

(i)         before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

 

(ii)       you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;

 

(iii)     You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.

 

Policy ¶ 4(c)(i) - (iii)

Where, as here, a disputed domain incorporates a mere common word, Respondent, ipso facto, has a legitimate interest in the <hood.com> domain name.  Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004)[i] involved the domain name <target.org>.  Complainant there had a trademark for the TARGET mark, which is arguably far more well-known than Complainant’s mark here.  Finding for Respondent, the panel held that “[r]espondent has rights to and legitimate interests in a domain name that consists of a generic or common term.”  The panel explained that “where a domain name is generic, the first person to register it in good faith is entitled to the domain name and this is considered a legitimate interest. Id., citing Target Software Solution GmbH v. NetVirtue, Inc., D2002-0277 (WIPO Aug. 19, 2002); see also CRS Technology Corporation v. CondeNet, FA 93547 (Nat. Arb. Forum Mar. 28, 2000); see also Coming Attractions v.ComingAttractions.com, FA 94341 (Nat Arb Forum May 11, 2000).  see also Energy Source Inc. v. Your Energy Source, FA. 96364 (Nat Arb Forum Feb. 19, 2001) (YOURENERGYSOURCE.COM) (finding that Respondent has rights and legitimate interests in the domain name where “[r]espondent has persuasively shown that the domain name is comprised of generic and/or common words, and, in any event, is not exclusively associated with Complainant’s business”);[ii] see also Ultrafem, Inc. v. Warren R. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001)(Respondent “has a legitimate interest in the domain name. The <instead.com> domain name is generic, and is a commonly used word”).[iii]  As noted, the common word “hood” appears on over 3.8 million third party web pages wholly unrelated to Complainant, so it is clear that Complainant does not have exclusive rights to the word.

 

The principal that the mere ownership of a common word domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several ICANN panels.  As one such panel explained:

 

Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common word—the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyberpiracy,” not every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999).

 

Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (e-Resolution March 20, 2000) (THYME.COM)[iv]. see also General Machine Prods Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000)(CRAFTWORK.COM);[v] see also Car Toys, Inc. v. Informa Unlimited, Inc., FA93682 (Nat. Arb. Forum Mar. 20, 2000) (CARTOYS.COM);[vi] see also CRS Technology Corp. v. Condenet, Inc., FA9347 (Nat. Arb. Forum Mar. 28, 2000)(CONCIERGE.COM);[vii]  see also Nicholas V. Perricone, M.D. v. Martin Hirst, FA0095104 (Nat. Arb. Forum Sept. 1, 2000)(‘WRINKLECURE.COM);[viii] see also Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, D2000-0161 (WIPO May 12, 2000)(ZERO.COM);[ix] see also Primedia Special Interest Publications, Inc. v. John L. Treadway, D2000-0752 (WIPO Aug. 21, 2000)(SHUTTERBUG.COM);[x] see also First American Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001)(FIRSTAMERICAN.COM).[xi]

 

Moreover, prior to the initiation of this dispute, Respondent has used the <hood.com> domain name  in connection with Internet advertising that specifically relates to the literal meaning of the word “hood,” in addition to general ads.  It is well-established that the use of a common word domain name in connection with third party advertising services related to the descriptive meaning of the domain name constitutes use in connection with a bona fide offering of goods or services.  In The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004),[xii] Respondent registered “large numbers of dictionary words …. and generate[d] revenue by providing pay-per-click advertising links related to the generic nature of each site’s domain name.”  The panel held that, “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy.”  see also Target Brands, Inc. v. Eastwind Group, supra. (“Respondent has offered persuasive evidence that it uses the disputed domain in connection with an affiliate advertising program with Overture.com, Inc.”); see also Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001)(pointing sweeps.com to Overture.com (then known as Goto.com) links related to sweepstakes established legitimate interest).[xiii]  Where the domain name incorporates a common word, it is likely to be found that the posting of related advertising links constitute use of the domain name for the bona fide offering of goods and services.  For example, in Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum Oct. 8, 2001),[xiv] Respondent registered numerous generic and common words to generate advertising revenue.  In finding a legitimate interest, the panel noted that  “[n]either the current UDRP nor current ICAAN registrar contracts preclude this type of domain name use.” See also Dial-a-Mattress Operating Corp. v. Ultimate Search, No.D2001-0764 (WIPO Sept. 26, 2001);[xv] Etam, plc v. Alberta Hot Rods,  D2000-1654 (WIPO Jan. 31, 2001);[xvi]  see also GLB Servicos Interativos S.A. v. Ultimate Search, D2002-0189 (WIPO May 29, 2002).[xvii]

 

Complainant alleges that Respondent does not have rights or a legitimate interest in <hood.com> domain name because it has offered the domain for sale.  However, it is well-established that the sale of generic domain names constitutes a bona fide offering of goods and services where respondent is unaware of a party’s rights in a mark.  BND Ent. d/b/a Dark Fire v. RN WebReg et al., FA 280502 (Nat. Arb. Forum July 28, 2004); see also Micron Technology, Inc. v. Null Int’l Research Center, D2001-0608 (WIPO June 20, 2001).[xviii]  As the Panel discussed in Micron:

 

Complainant alleges that Respondent intends to profit from registering the domain name. Respondent replies that its sale of the domain name is a bona fide business practice in domain name speculation.

 

The Panel agrees with Respondent that domain name speculation can be a legitimate interest if Respondent was not aware of Complainant’s trademark rights.  Here, Complainant has proffered no evidence that Respondent likely was aware of its trademark rights at the time it registered the domain name or otherwise was targeting Complainant or its mark. See Audiopoint, Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001)(“Indeed, speculation in domain name without any intent to profit from others’ trademark rights may itself constitute a bona fide activity under paragraph 4(c)(i)”); see also Kis v. Anything.com Ltd., D2000-0770 (WIPO Nov. 20, 2000);[xix] Allocation Network GmbH v. Steve Gregory, Case No. D2000-0016 (WIPO Mar. 24, 2000));[xx] see also General Machine Prods Co. v. Prime Domains, FA 92531 (NAF Jan. 26, 2000)(CRAFTWORK.COM).[xxi]  Here, there is no evidence that Respondent had any knowledge of Complainant’s trademarks when it registered the <hood.com> domain name.  Although Complainant alleges that the price Respondent placed on the <hood.com> domain name  was based on Complainant’s mark, this is  not proved.  A more reasonable inference is that the price was based on the fact that “hood.com” is a dotcom domain name, incorporating solely a 4-letter common word in the dictionary.  Such a short memorable domain name is extremely valuable.  The other domain name cited in the Complaint (e.g. tiresupplier.com, dishwashingsoap.com) are mainly not single common words and are thus not as valuable. The one single-word domain name is <trunks.org>, and .org domain names, which are not intended for commercial use are far less valuable than .com domain names.  There is no evidence that Respondent registered this common word domain name with Complainant or its mark in mind.

 

Respondent is an established bulk domain reseller and Internet service provider.  As such, Respondent registers domain names that become available for registration through expiration and deletion. Respondent only registers domain names, which incorporate common words, descriptive terms, and/or words and terms to which it believes no single party has exclusive rights.  Short, easy-to-remember words are desirable domain names. The domain name in dispute is just such a word that would appeal to many domain registrants including families named Hood or any of the other commercial entrepreneurs who have applied for over 272 trademark registrations on names that include the term “hood.”  It could be expected to bring the registrant a fair return if sold on the open market. 

 

It would be hard to find a common word that is not part of someone’s mark, hence the policy requires some degree of intended targeting of the mark owner, some level of abuse directed specifically toward that victim.  This reflects the UDRP’s respect for the fact that trademark law does not prevent non-trademark uses of such words by people other than the mark owner. Therefore, the majority chooses to apply the UDRP in a minimalist fashion, as recommended in Section 4.1(c) of the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm#4.1c.

 

The majority of the panel believes that an established domain name resale enterprise that restricts its portfolio in a good faith effort to avoid misleading the public qualifies as a legitimate interest and a defense under Section 4(c)(i).  The rights and legitimate interests cited in that provision are not limiting, but simply illustrative of some situations that would be considered.

 

In its additional submission Complainant brought to the Panel’s attention a recent WIPO decision in Nationwide Technology Recruitment Plc v. RareNames, D2004-0349 (Sept. 7, 2004).

 

In this case Complainant had registered the domain name <nationwide.biz>, but allowed the registration to lapse.  Respondent – the same company that is Respondent in this case – then registered the domain name and advertised it for sale on its website <buydomains.com>.  The Panel ordered that the domain name be cancelled as Respondent lacked legitimate interests in the <nationwide.biz> domain name because there was no evidence of the use or preparation to use the mark or that Respondent was commonly known by the domain name.  In particular, the Panel found that “registering a domain name solely for ‘selling, trading or leasing the domain name for compensation, or the unsolicited offering to sell, trade or lease the domain name for compensation” is not a bona fide business or commercial use.” 

 

There are however certain aspects of that decision that need to be noted. Firstly, the Panel in that case was not satisfied that Complainant has established that it had a trademark or service mark in which it had rights capable of protection under Paragraph 4(a). Arguably that should have resulted in the complaint being denied because one of the grounds was not made out.

 

 More importantly, Nationwide was not decided under the same set of rules that apply to the present case.  That case was a .BIZ registration under its own, special RDRP, which has two very specific rules defining "bona fide or business use." 

.COM domains are governed by the UDRP.  It does not have these rules.  Therefore, the Nationwide decision is distinguishable.  The panelist did not find as a matter of opinion that resellers had no right or legitimate interest; the RDP says they do not. .BIZ pitches to operating businesses and wants its names used exclusively as business identifers.  Unlike .COM, .NET and .ORG, it does not sell to non-commercial users.  It was thus set up for different purpose and operates under different rules.

 

Finally, at a factual level, one of the difficulties with the Nationwide decision is that the reasons for reaching a conclusion are not fully explained. The majority in the present case has in any event set out in some detail why they differ from the conclusions reached in Nationwide.

 

Accordingly, because Respondent has a legitimate interest in the <hood.com> domain name the Complaint should be denied. Complainant has not demonstrated that the domain name was registered and is being used in bad faith.

 

Registration and Use in Bad Faith

The third element that Complainant must show is Respondent’s bad faith registration and use.  The Complaint fails on this count as well.  The Policy identifies four circumstances that may constitute evidence of bad faith registration and use:

 

(i)             circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

 (ii)             you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 (iii)             you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)       by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Policy ¶¶ 4(b)(i) - (iv)

Absent direct proof that a common word domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use.  Ultrafem, Inc. v. Warren Royal, FA 97682 (Nat. Arb Forum Aug. 2, 2001).[xxii]  There, the 3-member panel, in ruling in favor of the owner of the common word domain name Instead.com held:

 

A bad faith showing would require Complainant to prove that Respondent registered instead.com specifically to sell to Complainant, or that the value of "instead" as a domain derived exclusively from the fame of its trademark.  Neither has been proven in this case.  In the absence of an intent to capitalize on Complainant’s trademark interest, Complainant cannot assert an exclusive right over a domain name that is a common, generic word.  (emphasis added).

 

Here the fact is that “hood” is a common word, and that appears to be, at least on the face of it, why Respondent registered the domain name.  To prove bad faith registration under the Policy, it must be proven that a domain name was registered with Complainant’s trademark in mind.  Complainant has proffered no evidence demonstrating that Respondent had actual knowledge of its mark when the <hood.com> domain name was registered.  Accordingly, bad faith registration cannot be proven.  Village Resorts Ltd. v. Steven Lieberman;[xxiii] (proof of bad faith requires “evidence of bad faith at the time of initial registration”).  Futureworld Consultancy Pty Ltd. v. Online Advice, FA D2003-0297 (WIPO July 18, 2003)(“there is no evidence to show that the disputed domain was registered with Complainant in mind…”).[xxiv]

 

In the majority’s view, there is no satisfactory and reliable basis for inferring that Respondent had knowledge of Complainant when it registered the <hood.com> domain name. There is substantial third party use of the term “hood” so there is no evidence that Complainant was targeted by Respondent. See Canned Foods, Inc. v Ult. Search Inc., FA 96320 (NAF Feb. 13, 2001) (“There are dozens of other enterprises that use the term "Grocery Outlet," therefore one cannot conclude that Complainant must necessarily be the special target).[xxv]

 

Complainant alleges that Respondent engaged in bad faith because Respondent registered the <hood.com> domain name with the intent to resell them.  As noted above in the legitimate interest section, the mere offer for sale of a descriptive term domain name does not establish bad faith under the Policy but, rather, may be taken as proof of Respondent’s legitimate interest.  It is only the registration with the “purpose of selling ... the domain name registration to Complainant” that establishes bad faith under the Policy.

 

Respondent argues that the <hood.com> domain name was not registered for the purpose of selling to Complainant or to any particular party.  The majority feels that this argument has merit. There is no evidence that Respondent registered the <hood.com> domain name with Complainant in mind, or that it was even aware of the existence of Complainant or its purported trademark.  The reason Respondent registered the <hood.com> domain name is because it was deleted and incorporates a common word.  The domain name then became available for anyone to register.  The acquisition of such deleted domain name has been endorsed as a bona fide practice under the Policy.  See Vernons Pools Ltd. v. Vertical Axis, Inc., FA D2003-0041 (WIPO Mar. 12, 2003)(after being deleted, “name became available to whomsoever became lucky enough to buy it.”).[xxvi]  If anything, the fact that a disputed domain name was registered after being deleted favors Respondent, because the deletion is a signal that the prior registrant has abandoned any claim to it.  As noted in the 3-member panel decision in Corbis Corporation v. Zest, FA 98441 (Nat. Arb. Forum Sept. 12, 2001).[xxvii]

 

The Panel holds that a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.

 

The evidence indicates that Respondent registered the <hood.com> domain name because it incorporates a common word.  Complainant itself cites evidence demonstrating that Respondent registers common word and descriptive term domain names, noting Respondent’s registrations of: <soundproofwalls.com>, <tiresupplier.com>, <dishwashingsoap.com>, <trunks.org>, <dairyproducers.org>, <milksupply.com>, and <floridaorangejuice.com>.  In the majority’s view, a good faith pattern here is evident.

 

Under Policy ¶ 4(a), the Panel need not consider bad faith where a right or legitimate interest has been found.  However, the majority would like to note that the evidence did not, in its view, support any showing that Complainant was the particular target of bad faith by virtue of Respondent’s registration or use of the domain.  There are many possible buyers for short, commonly-used, words.  Respondent, while apparently asking for an amount greatly in excess of its out-of-pocket expenses, does not seem primarily motivated by a need to extort money especially from the mark owner or its competitor, as required by the UDRP.  Complainant has not been prevented from reflecting its mark online; there are many other TLDs where it might register its mark and has long used the domain <hphood.com> for such purposes.  There is no evidence that Complainant’s business has been disrupted or that Respondent intended to make any financial gain on the domain by confusing or misleading consumers.  Rather, the evidence indicates that the greater value of the domain comes not from its association with a regional dairy, but rather from the fact that it is a short and commonly used word.

 

Accordingly, because Complainant has failed to establish the <hood.com> domain name was registered and is being used in bad faith, the Complaint must be dismissed.

 

 

DECISION

 

Having failed to establish all three elements required under the ICANN Policy, the majority of the Panel concludes that relief shall be DENIED.

 

 

 

 

Clive Elliott, Panel Chair

Diane Cabell, Panelist
Dated: November 9, 2004

 

DISSENT

 

Identical and/or Confusingly Similar

 

Complainant holds several registrations with the United States Patent and Trademark Office (“USPTO”) for the HOOD mark (Reg. No. 649,413, issued July 30, 1957; Reg. No. 645,833, issued May 21, 1997; Reg. No. 2,071,426, issued June 17, 1997; and Reg. Nos. 2,719,266 and 2,719,268, issued May 27, 2003) for dairy and food products.  Complainant has established rights in the HOOD mark due to its registrations with the USPTO, See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

 

Respondent’s <hood.com> domain name is identical to Complainant’s HOOD mark pursuant to Policy ¶4(a)(i) because the domain name incorporates the mark in its entireity and merely adds the generic top-level domain “.com.” See Interstellar Starship Serv. Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as EPIX); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Respondent concedes this point.

 

Rights or Legitimate Interests

 

Respondent has no rights or legitimate interests in the <hood.com> domain name because Respondent is not now and never has been commonly known by the disputed domain name, nor has Respondent ever been a licensee or assignee of any rights in Complainant’s HOOD mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

Respondent has been less than candid about its registration of the domain name in the first place.  It listed the owner has “hood.com”.  The real owner is Rarenames a/k/a BuyDomains.com.  A domain name registrant has an obligation to accurately list the owner of the domain name and the contact information for it.  In this case, the name of the registrant is incorrect and misleading.  This should create a presumption against Respondent.

 

Respondent is also not making a bona fide offering of goods and services using the domain name.  Respondent cannot acquire any rights under the UDRP by simply registering the domain name and then offering to sell the domain name.  Selling the underlying domain name is not a bona fide offering of goods and services.

 

Registration and Use in Bad Faith

 

This case is part of a new trend.  There is no doubt Complainant has a valid and registered trademark.  As a general rule, a Panel will not re-examine the USPTO’s action in registering a trademark.  This means a Panel will not normally hold a registered trademark is generic because the USPTO will not register a trademark that is generic.

 

Respondent is put on notice about Complainant’s trademark because it is a REGISTERED trademark.  Once the trademark is placed on the register, the public is deemed to know about it, whether or not the public has actual knowledge of the trademark.

 

There are generally three levels of trademarks:

 

1.      Fanciful (a word that is new and unique, such as Kleenex®).

2.      Misapplied (a word that has a meaning is applied in a new way, such as scotch tape®-which has no relation to the alcoholic beverage).

3.      Descriptive (but not to the level of generic, which gets no protection).

 

The trademarks are given protection in a descending manner.  A descriptive trademark is generally less protected than a misapplied trademark (and a misapplied trademark is given less protection than a fanciful trademark).  There is no doubt “hood” is in the second category.  The word is in the dictionary, but mentions nothing about dairy products in its definition.

 

Respondent argues it routinely looks for short “generic words” (probably not just words in the dictionary, but probably from the list of the 200 most common English words that people use in daily conversation) that are available as domain names.  Respondent registers the domain names.  As part of the WHOIS information, a click-through logo appears saying “BUY THIS DOMAIN NAME.”

 

Given the notoriety of a registered trademark, Respondent is PRESUMED to know about the trademark.  Respondent cannot claim ignorance.  Respondent would most likely prevail against a person that does not hold a registered trademark.  Complainant is not such a person.

 

Respondent next claims it wasn’t acting with any specific malice (or bad faith) towards this specific Complainant.  How do we know?  Respondent was offering the domain name for sale to the general public.  The domain name is clearly for sale from the WHOIS information.  Respondent wasn’t using the domain name in connection with a bona fide offering of goods and services.  There is no content on the web site, except for a search page.  In short, Respondent is acting just like the typical cyber squatter this policy was trying to eradicate.

 

This Panel is unwilling to construe the UDRP so strictly its essential purposes are frustrated.  I would order the domain name transferred.

 

 

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, dissenting Panelist
Dated: October 20, 2004

 

 

 

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