Decision Support Technology, Inc. v Bassetts E-mail Service

The above-entitled matter came on regularly for an administrative hearing on June 1, 2000, before a panel of Arbitrators consisting of Judge Karl V. Fink [Retired], David W. Maher, Esq. and Judge Irving H. Perluss [Retired], on the Complaint of Decision Technology, Inc., hereinafter “Complainant”, against Bassets E-Mail Service, hereinafter “Respondent”.

After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter “The Forum”, transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

On April 25, 1997, Respondent had registered the domain name in issue with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Uniform Domain Name Dispute Resolution Policy.

Respondent filed a timely Response. Thereafter, although not in compliance with the Rules, Complainant filed a Reply to Respondent’s Response and Respondent then filed a further Reply. The Arbitrators have read and considered all the documentation submitted, including the declarations and exhibits.

1. The Complainant, Decision Support Technology, Inc., is a corporation which has developed, marketed and sold computer software and manuals utilized for accounting applications in the field of fixed asset management. The computer software and the manuals are marketed under the trademark “Bassets”.

2. Complainant is the owner of the trademark “Bassets”, Number 1,994,150, which was registered with the United States Patent and Trademark Office on August 13, 1996, and first used in commerce on April 25, 1995.

3. Complainant has invested considerable time, effort and money to develop goodwill in connection with its mark.

4. The Respondent, Bassets E-Mail Service, registered the domain name “bassets.com” with Network Solutions on April 25, 1997, for use on the Internet, subsequent to Complainant’s trademark registration.

5. Respondent’s business is operating a “vanity e-mail service,” i.e., a shared domain e-mail service.

6. Respondent has in excess of 70,000 registered customers for whom it provides the shared domain e-mail service. It has registered in excess of 12,000 domain names under various top level domains, including “.com, .org., and .net.” The vast majority of these domain names are statistically selected surnames that were the most common surnames in English language speaking countries, and include groups of breeds of dogs, flowers, automobiles, among other categories.

7. Respondent contends and the Panel finds that the specific purpose of the registration of “bassets.com” by Respondent was as part of the group of dog breeds, so that people who are interested in bassets could have an e-mail service associated with their name, such as “John@bassets.com” Or “MarySmith@bassets.com”

Each member of the Panel certifies that he has acted independently and has no known conflict of interest to serve as an Arbitrator in this proceeding. Having been duly selected, and being impartial, the Panel has concluded based on the law, the rules and the findings of fact above set forth, as follows:

1. In order for Complainant to prevail in this proceeding, Complainant must prove that each of the following elements are present:

[i] Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

[ii] Respondent has no rights or legitimate interests in respect of the domain name; and

[iii] Respondent’s domain name has been registered and is being used in bad faith.

2. Complainant’s registered trademark and the second level component of Respondent’s domain name are identical.

3. While the fact that Complainant’s registered trademark and the second level component of Respondent’s domain name are identical, this fact is not, in and of itself, dispositive of the question of Respondent’s rights or legitimate interest in respect of the domain name, nor is it dispositive of the question of Respondent’s alleged bad faith.

4. The strength of a particular mark has and must be evaluated on a sliding scale. Arbitrary or coined marks are at one end of the scale and are entitled to the broadest scope of protection. When the mark is a dictionary word rather than a coined word, however, the strength of the mark, in descending order of protection is: [1] fanciful, [2] suggestive, and [3] descriptive. A generic [i.e., the name of a thing] or merely descriptive mark is at the opposite end of the scale from arbitrary marks and is not entitled to protection, because it cannot satisfy the initial requirement that a mark distinguish the owner’s goods and services from others. See, Lanham Act [15 U.S.C. §1052.] The sliding scale of trademark protection is summarized in 1 McCarthy, Traders and Unfair Competition, Chap. 5 [3d ed. 1992] and see, i.e., Nutri/System v. Con-Stan Indus., Inc. (9^th Cir. 1987) 809 F.3d 601, 605. To receive protection, the holder of a descriptive mark must demonstrate a secondary meaning.

5. Basset or Basset Hound are generic, or at least descriptive, terms relating to a breed of dogs. [See, Webster’s Third New International Dictionary, Unabridged (1959) 183.]

6. Complainant’s mark is entitled, under the laws of the United States, to a presumption, under the Lanham Act, §§7(b), 33(a), 15 U.S.C. §§1057(b), 1115(a), that the mark is either inherently distinctive or has acquired distinctiveness through secondary meaning.

7. In Creager v. Russ Togs, Inc. (CD Cal. 1982) 218 USPQ 582, the term “secondary meaning” was described as follows:

A word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market . . . might nevertheless be used so long and so exclusively by one producer with reference to his article that in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product; in other words has come to be, to them, his trade name.

8. Complainant has not alleged that its mark is entitled to the higher level of protection afforded under United States law to “famous” marks pursuant to the Trademark Dilution Act of 1996, 15 U.S.C. §§1125(c), 1127.

9. With respect to the question whether Respondent has no rights or legitimate interests in respect of the domain name, Complainant has not proved that Respondent’s business fails to meet the standard of Respondent having no rights or legitimate interest in the name.

10. With respect to the question whether Respondent’s domain name has been registered and is being used in bad faith, Complainant has not proved that Respondent falls within the tests of bad faith enumerated in Paragraph 4(b) of the Rules, for the following reasons:

a. There is no evidence that Respondent is or is attempting to sell, rent or transfer its domain name to Complainant or a competitor of Claimant;

b. There is no evidence that Respondent registered the domain name in issue to prevent Complainant from reflecting its mark in a corresponding domain name;^[2]

c. There is no evidence that Respondent registered the domain name primarily for the purpose of disrupting a competitor’s business; and

d. There is no evidence that Respondent, by using its domain name, intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark.

13. It is concluded that Complainant does not have rights in the domain name in issue, as required.

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE CLAIM OF COMPLAINANT Decision Support Technology, Inc. AGAINST Bassets E-Mail Service BE, AND THE SAME IS HEREBY DENIED.

Dated: June 16, 2000, by the Panel, Judge Irving H. Perluss [Retired], Chairman.

^[1]Any reference to “Rule” or “Rules” are to the Internet Corporation for Assigned Names and Numbers [ICANN’s] Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Resolution Policy as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy.

^[2]The mere fact that a generic term is also the subject of a trademark registration (or registrations) in one or more jurisdictions does not mean that a party like Respondent, which has registered numerous domain names using words which may or may not also be used as trademarks, is automatically guilty of “bad faith”. Obviously, the use of such a word “prevents” the trademark owner from having a corresponding domain name. More, however, is required to establish the “pattern” referred to in Paragraph 4(b)(ii) of the Rules.