Dakota Beef, LLC v. Donald Hagerott
Claim Number: FA0506000490093
PARTIES
Complainant
is Dakota Beef, LLC (“Complainant”),
represented by Douglas R. Johnson, 311 S. Wacker Drive, Suite 210,
Chicago, IL 60606. Respondent is Donald Hagerott (“Respondent”),
represented by Curtis V. Harr,
1402 25th Street South, Suite B, Fargo, ND 58103.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <dakotabeef.com>,
registered with Network Solutions, Inc.
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.
Terry
F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 6, 2005.
On
June 3, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <dakotabeef.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
June 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 27,
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@dakotabeef.com by e-mail.
A
timely Response was received and determined to be complete on June 24, 2005.
The
National Arbitration Forum received a timely additional submission from the
Complainant on June 29, 2005.
On June 30, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Terry F. Peppard as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends, among other things, that:
Complainant,
Dakota Beef, LLC, is an Illinois corporation which has been doing business in
South Dakota since December of 2001.
Complainant
buys and processes cattle and sells beef worldwide, and has become the largest
producer of organic beef in the United States.
Dakota
Beef, LLC, filed with the United States Patent and Trademark Office for
registration of its DAKOTA BEEF service mark in December of 2001, and received
its registration of that mark on October 21, 2003.
Although
he has held the disputed domain name, <dakotabeef.com>,
for six years, Respondent does not
actually use that name, nor is there any evidence that he intends to use it in
connection with a bona fide offering of goods or services.
Respondent
is not commonly known by the subject domain name.
Through
nationwide shipping of its beef products, Complainant has acquired secondary
meaning for its mark.
Respondent’s
years-long holding of the disputed domain name without use is evidence that its
only purpose in acquiring the name is to prevent its use by Complainant.
B.
Respondent
Respondent
contends, among other things, that:
Respondent
is a farmer working a family operation in central North Dakota that dates from
the late 1800’s.
Respondent’s
family’s farming business has involved producing and selling beef for more than
100 years.
Respondent
and his family operate a web site from which they market naturally-raised farm
products.
Respondent
registered the disputed domain name on April 13, 1999, more than two years and
eight months before Complainant came into existence in December of 2001.
The
registration of the subject domain name was part of a long-term plan to exploit
Internet sales of Respondent’s agricultural products.
Complainant’s
mark, “Dakota Beef,” is merely descriptive and generic, and so is not capable
of legal protection apart from the beef cow profile design included as an
integral part of its service mark registration application.
Accordingly,
Complainant’s service mark registration application contains the specific
disclaimer: “No claim is made to the
exclusive right to use ‘Dakota Beef’ apart from the mark as shown.”
C.
Additional Submissions
Under
date of June 29, 2005, Complainant timely filed an Additional Submission which
alleges, among other things, that:
By
failing to use the disputed domain name for six years, Respondent has forfeited
any legitimate interest he may once have had in it.
FINDINGS
1. Although the disputed domain name is
substantively identical to Complainant’s registered service mark, Complainant
has failed to show that any rights it may have in its mark supersede the rights
of Respondent in the domain name.
2. Respondent has rights and legitimate
interests in the subject domain name.
3. Complainant has failed to demonstrate
that Respondent has both registered and used the disputed domain name 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.
There is no
meaningful distinction to be made between the textual portion of Complainant’s
registered DAKOTA BEEF service mark and the disputed domain name <dakotabeef.com>. Hannover Ruckversicherungs AG v. Ryu, FA
102724 (Nat. Arb. Forum Jan. 7, 2001).
However, Complainant has, in
its service mark registration application, specifically disclaimed entitlement
to the exclusive use of the term “Dakota Beef” apart from the accompanying beef
cow design. Thus, even though Respondent’s
domain name is either substantively identical or confusingly similar to
Complainant’s mark, Complainant cannot look to its registered mark to undergird
its claim to superior rights to use the DAKOTA BEEF mark under ¶4(a)(i) of the
Policy.
Still,
Complainant might establish common law rights in its mark superior to those of
Respondent in the subject domain name, provided that Complainant’s acquisition
of those rights predate the registration of the domain name. See, for example, Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001),
noting that Policy ¶4(a)(i) “necessarily implies that Complainant’s rights
predate Respondent’s registration.”
But,
because Respondent registered the subject domain name on April 13, 1999,
whereas Complainant did not come into existence or use its competing service
mark until sometime in December of 2001, more than two (2) years later,
Complainant fails the test of priority in time. Accordingly, Complainant’s position cannot survive scrutiny under
Policy ¶4(a)(i).
It may be noted that Respondent also
alleges in its defense that Complainant’s mark consists of two merely
descriptive terms (“Dakota” and “Beef”), so that the mark is too generic to
merit legal protection. See, e.g., Rollerblade, Inc. v. CBNO, D2000-0427
(WIPO Aug. 24, 2000): “(g)enericness,
if established, will defeat a claim of trademark rights,….” On the record presented in this proceeding,
and whether the component terms of Complainant’s mark are considered singly or
together, the Panel is inclined to agree with Respondent’s contention as to
genericness. Complainant responds that,
even assuming that the textual portion of its mark is generic, the mark has
acquired secondary meaning in the marketplace and thus deserves trademark
protection as against Respondent’s competing domain name. However, although Complainant makes the
assertion of acquired secondary meaning, and thus of protectable
distinctiveness, it offers no proof in support of this claim. Therefore, Complainant has failed to
overcome Respondent’s genericness defense.
Under this heading, it is incumbent upon
Complainant to show that Respondent has “no rights or legitimate interests in
respect of the [disputed] domain name.”
Policy ¶4(a)(ii).
The ICANN
Policy, in ¶4(c), offers three methods by which a Respondent may attempt to
overcome Complainant’s proof of Respondent’s lack of rights or legitimate
interests. Suffice to say that the
proofs submitted do not satisfy any of these three measures. However, it is
also true that the provisions of Policy
¶4(c)
are expressly declared by ICANN not to be the only means by which sufficient
rights or legitimate interests may be shown to reside in Respondent.
In the instant
case, the Panel finds persuasive that Respondent and his family have for
generations operated a beef growing and marketing operation in North Dakota, a
fact which Complainant does not deny.
This is enough to establish Respondent’s non-exclusive common law rights
and interests in the mark DAKOTA BEEF.
Likewise, Respondent’s apparently valid registration of the subject
domain name grants him rights in that name. That both sources of rights came to
Respondent first in time vis-à-vis Complainant’s competing trademark claim
satisfies the Panel that Respondent has rights and legitimate interests in that
name sufficient for the purposes of Policy
¶4(a)(ii). As to the critical importance of the time of
acquisition of such rights vis-à-vis those of Complainant, see, for example: Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000),
and Warm Things, Inc. v. Weiss, D2002-0085 (WIPO April 18, 2002).
It may be
mentioned in this connection that the Policy does not require that Respondent
have clear rights or substantial rights in order to prevail under Policy ¶4(a)(ii). Rather it is necessary for Complainant to satisfy the Panel that
Respondent has “no rights or legitimate interests in respect of the domain
name.” That is to say, it is required
that Complainant demonstrate to the satisfaction of the Panel that Respondent
has no rights or legitimate interests whatsoever in respect of the subject
name. In view of the facts of record,
Complainant cannot meet this burden.
It is, of
course, a source of some concern that Respondent has not yet actually employed
its domain name despite six years of continuous registration. However, there is no evidence that
Respondent is engaged in the practice of warehousing domain names. Moreover, Respondent has offered a plausible
explanation for its planned use of the subject domain name in the further
development of its business. On the
facts presented, this is adequate to overcome doubt as to the legitimacy of
Respondent’s position. IG
Index PLC v. Index Trade,
D2000-1124 (WIPO Oct. 16, 2000).
We also observe
that the ICANN Policy does not provide that the notion of abandonment or a like
doctrine may justify depriving a domain name holder of its otherwise valid
registration. And, finally, it is
nowhere written that the pace of cattle ranching must match the pace of the
Internet.
For these reasons, we conclude that
Complainant has failed to show that Respondent has no rights or legitimate
interests in its domain name.
Policy ¶4(a)(iii) requires that, to prevail in this proceeding, Complainant
must prove that Respondent has both registered and is now using the disputed
domain name in bad faith.
Complainant argues, in effect, that
Respondent’s holding of its domain name registration for six years without associating
it with an operating web site is evidence of bad faith. For the reasons just explained, the Panel is
disinclined to agree with this assertion.
Rather, Respondent’s legitimate, if not exclusive, claim to the DAKOTA
BEEF mark by virtue of its physical location and longstanding business history,
coupled with its apparently valid domain name registration, belie Complainant’s
suggestion of bad faith on the part of Respondent. On the particular facts here presented, it is enough for purposes
of the Policy that it is fairly conceivable that Respondent will soon act on
its asserted intention to exploit its domain name. See, e.g.: Collegetown Relocation, LLC v. Concept
Software & Tech. Inc., FA 96555 (Nat. Arb. Forum Mar. 14, 2001).
Moreover, because Respondent registered
its domain name more than two years before Complainant came into existence and
first used its claimed trademark in 2001, it is not possible for Complainant to
demonstrate that Respondent registered its domain name in bad faith in 1999. Accordingly, and without more, Complainant
must be found to have failed to satisfy the conjunctive requirements of Policy ¶4(a)(iii). Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); Interep Nat'l Radio Sales, Inc. v. Internet
Domain Names, Inc., D2000-0174 (WIPO May 26, 2000); Open
Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000).
DECISION
Complainant
having failed to establish any of the three elements required under the ICANN
Policy, the Panel concludes that relief requested must be, and it is, hereby,
DENIED.
Terry F. Peppard, Panelist
Dated: July 11, 2005
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