Lopez Foods Inc. v. Selavy Media
Claim Number: FA0610000827638
PARTIES
Complainant is Lopez Foods Inc. (“Complainant”), 9500 NW 4th Street, Oklahoma City, OK 73127. Respondent is Selavy Media (“Respondent”), represented by M. S. Greenberg, of Selavy Media c/o Corporate Services, Ltd., 541 NW 27th Avenue, Miami, FL 33127.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <countrycousin.com>,
registered with Signature.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Richard DiSalle is Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 25, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 30, 2006.
On October 26, 2006, Signature confirmed by e-mail to the National
Arbitration Forum that the <countrycousin.com>
domain name is registered with Signature and that the Respondent is the current
registrant of the name. Signature has
verified that Respondent is bound by the Signature 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 November 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 23, 2006 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@countrycousin.com by
e-mail.
A timely Response was received and determined to be complete on November
21, 2006.
On November 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard DiSalle as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The domain name in question is identical to the registered brand owned
by Lopez Foods, Inc, “Country Cousin.”
The respondent is not offering bona fide goods or services, is not and has never been
commonly known by the name “Country Cousin”
and is currently not using the domain
name for a legitimate non-commercial use.
The current site at the domain is being used solely to redirect traffic. Based on the use of
the site we have to assume that the site was registered solely for the purpose of attracting
Internet traffic for commercial gain and then directing them to another site based on the
popularity of
the “Country Cousin” brand.
B. Respondent
There is no basis for transferring the disputed domain name <countrycousin.com> (the “Disputed Domain”) to Complainant. Respondent has a legitimate interest in the disputed domain
because “country cousin” is a
descriptive term and because Respondent has used the domain for the bona
fide offering of goods and services prior to initiation of this
dispute. Respondent did not register, and has not used, the Disputed Domain in bad
faith.
Respondent uses the Disputed Domain in promoting various country
related services and products that relate to the rural character embodied in
dictionary definition of the term “country cousin.” The services and products promoted include Country Inns, Country
Music, Country Recipes, Country Homes, Country Farms and Country Vacations on
its website. Respondent registered the
Disputed Domain in February 2000, and selected this domain because it
incorporates the descriptive term “country cousin.” It did not register the Disputed Domain to sell to Complainant,
to disrupt its business, to prevent it from registering a domain name
incorporating its trademark, or to confuse users.
The Disputed Domain was registered over six years ago in
April 2000. While laches is not a defense normally
recognized under the Policy, it is evidence that Complainant did not believe
its claims were truly warranted.
The fact Complainant waited so long to bring this Complaint leads to
the conclusion that it did not feel Respondent had been violating its rights
under the Policy.
FINDINGS
(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 rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has not been registered and is not 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 Panel finds that Respondent’s disputed domain
name is identical to Complainant’s mark under Policy ¶ 4(a)(i). Respondent
neither confirms nor denies that the <countrycousin.com> domain
name is identical or confusingly similar to Complainant’s COUNTRY COUSIN
mark.
The Panel finds that Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
The Panel also
finds that the <countrycousin.com> domain name is comprised of common, descriptive
terms and determines that Respondent, therefore, has rights or legitimate
interests in the disputed domain name.
The terms that comprise the disputed domain name mean “a person with the
unsophisticated or ingenuous manners associated with the country by city
dwellers” and that the advertisements displayed on the website that resolves
from the disputed domain name reflects this common definition. See SOCCERPLEX, INC. v. NBA Inc., FA
94361 (Nat. Arb. Forum May 25, 2000) (finding that the complainant failed to
show that it should be granted exclusive use of the domain name
<soccerzone.com>, as it contains two generic terms and is not exclusively
associated with its business)
Moreover, the Panel
finds that Respondent is making a bona fide offering of goods or
services under Policy ¶ 4(c)(i) as Respondent is using the disputed domain name
to post advertising links that it contends relate to the common words “country
cousin.”
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Additionally, the
Panel finds that Respondent did not register the <countrycousin.com>
domain name in bad faith because Respondent’s disputed domain name is comprised
of common, descriptive terms. See
Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both
registration and use, the generic nature of the disputed domain name itself
rebuts any allegation by Complainant that Respondent registered or used the
disputed domain name in bad faith.”); see also Canned Foods, Inc. v. Ult.
Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where
the domain name is comprised of a generic term, it is difficult to conclude
that there was a deliberate attempt to confuse on behalf of the respondent, and
stating that “[i]t is precisely because generic words are incapable of
distinguishing one provider from another that trademark protection is denied
them”).
Doctrine
of Laches
Complainant’s failure to bring this Complaint for more than
six years since the <countrycousin.com> domain name was registered is evidence that
Complainant did not believe its claims to be warranted under the Policy. This delay leads to the conclusion that
Complainant did not feel that Respondent was violating Complainant’s rights
under the Policy. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003)
(“Although laches by itself is not a defense to a complaint brought under
the Policy, Complainant's delay in seeking relief is relevant to a
determination of whether Respondent has been able to build up legitimate rights
in the Domain Name in the interim, and whether it is using the Domain name in
bad faith.”); see also Meat & Livestock Comm’n
v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not
a defence in itself under the Policy, the absence of any complaint over a long
period of time in which domain names are in active use can suggest that such
use does not give rise to a serious problem.”).
DECISION
Since Complainant has failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED. IT IS SO ORDERED.
Richard DiSalle, Panelist
Dated: December 13, 2006
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