Tall Oaks Publishing, Inc. v National Trade Publications, Inc.

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

Tall Oaks Publishing, Inc.

and Frank L. Slejko, Ph.D.

Complainant,

vs.

National Trade Publications, Inc.

Respondent.

DECISION
Forum File No: FA0003000094346

Procedural Findings

The Arbitrator's oath of impartiality and independence is already on file with the National Arbitration Forum ("NAF"). On April 27, 2000, NAF contacted the undersigned to solicit interest in serving as an Arbitrator for this Administrative Proceeding. After confirming that neither the Undersigned nor the Arbitrator's law firm had a conflict in this matter, the Undersigned accepted the appointment on April 28, 2000. NAF transmitted the case file to this Panel for decision on April 28, 2000, by e-mail and Priority Mail.

Domain Name: ultrapurewater.com

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: National Trade Publications, Inc.

13 Century Hill Drive

Latham, New York 12110 USA

Date of Domain Name Registration: April 23, 1996

Date Complaint filed: March 21, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a) and Rule 4(c): March 24, 2000

Due date for a Response: April 13, 2000

Respondent's Response was filed: April 24, 2000

1. On March 16, 2000, Complainant submitted a Complaint to the NAF pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint and exhibits were received by NAF on March 21, 2000. The Complainant elected to proceed before a single arbitrator. NAF acknowledged receipt of the Complaint by facsimile, sent to the Complainant on March 23, 2000. In its Acknowledgment Letter, NAF notified Complainant that the Respondent information it provided was not correct. Complainant provided an Amended Complaint to NAF that same day, March 23, 2000, by facsimile. NAF formally commenced the captioned Administrative Proceeding on March 24, 2000 and notified the Registrar thereof.

2. On March 28, 2000, the Registrar, Network Solutions, Inc., ("NSI"), confirmed by e-mail that: (i) it received the Commencement of Administrative Proceeding from NAF, (ii) it received a copy of the Complaint from the Complainant; (iii) NSI is the Registrar for the domain name at issue; and that (iv) Respondent, National Trade Publications, Inc., is the current Registrant of the domain name.

3. NAF forwarded its Complaint Notification Instructions and Complaint to Respondent, notifying Respondent that an Administrative Proceeding had been filed against it with respect to the subject domain name. NAF required Respondent to submit its Response to the Complaint by no later than April 13, 2000.

4. Respondent's Response and Exhibits are dated April 24, 2000. Although apparently late, Respondent's submission has been fully reviewed and considered. Respondent has elected to proceed before a single arbitrator. On April 27, 2000, Complainant submitted a Supplement to Complaint Reflecting New Information to NAF by facsimile. On April 28, 2000, Respondent filed with NAF a Response to Complainant's Supplemental Filing.

5. For ease of reference, the Panel shall use the following abbreviations within its decision: "Cmpl." shall refer to Complainant's Amended Complaint; "Resp." shall refer to Respondent's Response to Complaint; "Suppl. Cmpl." shall refer to Complainant's Supplement to Complaint Reflecting New Information; "Suppl. Resp." shall refer to Respondent's Response to Complainant's Supplemental Filing; "Slejko Aff." shall refer to the Affidavit of Complainant Tall Oaks' sole shareholder, Frank L. Slejko, Ph.D., dated March 13, 2000; "Tyler Decl." shall refer to the Declaration of Respondent's President and founder, Mr. Humphrey S. Tyler, dated April 21, 2000; and "Exh." shall refer to one or more of the Exhibits attached to the parties' various submissions.

Factual Findings

The Parties

6. The Complainant (collectively) is Tall Oaks Publishing, Inc. ("Tall Oaks"), a Colorado corporation located in Littleton, Colorado, and its sole shareholder, Frank L. Slejko, Ph.D. ("Slejko"). The Respondent is National Trade Publications, Inc. ("National Trade"), a New York corporation located in Latham, New York.

The Domain Name and Registrar

7. The domain name is ULTRAPUREWATER.COM. The Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.

Factual Background

8. Complainant Tall Oaks is the owner of U.S. Trademark Supplemental Registration No. 1,359,898 for the mark ULTRAPURE WATER, in connection with "periodicals * namely, technical journals." The mark was registered on September 10, 1985, and claims first use of the mark as of July 17, 1984. The registration has been maintained by the filing of an Affidavit of Use. (Cmpl., Exhs. B and C).

9. Complainant Slejko is the named Applicant on Application Serial No. 75/785,879 for the mark ULTRAPURE WATER, in connection with "periodicals, namely, technical journals in the field of water." This mark was applied for on August 16, 1999, and the application claims first use of the mark on July 17, 1984. The Application seeks registration of the mark on the Principal Register pursuant to Trademark Act Section 2(f). A Notice of Publication was issued for this application on February 11, 2000. The application was published for opposition on March 14, 2000. Complainant asserts that neither a Notice of Opposition nor a Request for an Extension of Time to file a Notice of Opposition was filed during the time provided therefor. (Cmpl., par. 5; Suppl. Cmpl., pars. 3-7; Exhs. 1 and 2).

10. Complainant Tall Oaks is the named Applicant on CTM Application No. 692,475, filed in the European Union for the mark ULTRAPURE WATER, in connection with, inter alia, printed matter, periodicals, journals, arranging and conducting conferences, and conferences on industrial water treatment. (Cmpl., Exh. D).

11. Respondent National Trade is the owner of the domain name ULTRAPUREWATER.COM, registered with the Registrar Network Solutions, Inc. on April 23, 1996. (Cmpl., Exh. J). National Trade uses this domain name to direct Internet users to its Water Technology Online web site. (Cmpl., Exh. K).

Parties' Contentions

Complainant

12. Tall Oaks and Slejko contend that National Trade knew of Complainant's use of ULTRAPURE WATER as the name of a trade journal since 1984, long prior to National Trade's 1996 registration of the ULTRAPUREWATER.COM domain name; a fact which National Trade concedes (Cmpl., par. 22; Slejko Aff.; Resp., p. 3). Tall Oaks and Slejko claim that the ULTRAPUREWATER.COM domain name is identical or confusingly similar to their mark ULTRAPURE WATER; that National Trade has no rights or legitimate interests with respect to the ULTRAPUREWATER.COM domain name; that National Trade is not a licensee of Tall Oaks or Slejko nor otherwise authorized to use the ULTRAPURE WATER mark; that National Trade registered and is using the ULTRAPUREWATER.COM in bad faith; and that the parties are direct competitors in the publication of journals relating to water treatment. (Cmpl., pars. 7 and 29-35).

13. Tall Oaks and Slejko seek a transfer of the ULTRAPUREWATER.COM domain name from National Trade to them; in the alternative cancellation of the domain name. (Cmpl. Cover Sheet, p. 3).

Respondent

14. National Trade concedes that the ULTRAPURE WATER mark and ULTRAPUREWATER.COM domain name are similar in appearance and sound; that it is not an authorized licensee or user from Tall Oaks or Slejko of the ULTRAPUREWATER.COM domain name; that it is the owner of the domain name ULTRAPUREWATER.COM registered with the Registrar Network Solutions; and that National Trade uses this domain name to direct Internet users to its Water Technology Online web site. (Resp., pp. 2-4).

15. National Trade counters Tall Oaks' and Slejko's arguments by contending that National Trade is making legitimate fair use of the ULTRAPUREWATER.COM domain name, and that the alleged mark ULTRAPURE WATER of Tall Oaks and Slejko is generic. (Resp., pp. 4-10).

Conclusions

Applicable Policy Provisions

16. The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:

1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. That Respondent has no rights or legitimate interests in respect of the domain name; and

3. That the domain name has been registered and is being used in bad faith.

UDRP Policy, Section 4.a.

17. It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, WIPO Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO Dispute No. D00-0001.

18. However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(a) 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

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

(c) 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 the 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.

***

UDRP Policy, Sections 4(b)(ii)-(iv).

19. These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

Opinion of the Panel

20. This Panel finds that Tall Oaks and Slejko are entitled to the relief sought, namely, transfer of the ULTRAPUREWATER.COM domain name. First, Tall Oaks and Slejko, albeit just barely, have proved that they have rights in a trademark legally identical to the domain name in dispute. National Trade does not dispute that the alleged mark ULTRAPURE WATER and the domain name ULTRAPUREWATER.COM are similar in sight and sound. In this Panel's opinion, the added space between ULTRAPURE and WATER in Tall Oaks' and Slejko's alleged mark, and the addition of the .COM suffix at the end of National Trade's domain name, do not serve to distinguish the commercial impression of the mark and the domain name.

21. This Panel also finds that Respondent has no rights or legitimate interests in respect of the domain name. Before it received notice of this proceeding, National Trade did not make use the domain name ULTRAPUREWATER.COM in connection with the bona fide offering of goods or services. National Trade has not shown that it has been commonly known by the name ULTRAPURE WATER or ULTRAPUREWATER. Moreover, National Trade has not made legitimate or fair use of the ULTRAPUREWATER.COM domain name. Finally, this Panel is satisfied that the domain name has been registered and is being used in bad faith. UDRP Policy, Sections 4(c).

(a) The "Strength" of the ULTRAPURE WATER Mark

22. National Trade contends that Tall Oaks' and Slejko's alleged mark ULTRAPURE WATER mark is a generic term of art within the water treatment industry. (Resp., pp. 3 and 5). A "generic" term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4, 9 (2d Cir. 1976). Generic terms can never become trademarks or service marks, no matter how much money or effort is directed to the term or how much commercial success from public exposure the term has achieved. Id., 537 F.2d at 9.

23. By contrast, a descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods. Descriptive marks, although not inherently entitled to trademark protection, are afforded such protection upon a showing that such marks have acquired distinctiveness (secondary meaning) through use in the marketplace. Id., 537 F.2d at 9-11.

24. The Declaration of Mr. Tyler states that the term ULTRAPURE WATER "is a grade of water that has been specifically treated so that it may be used in certain industrial, medical, and scientific settings." (Tyler Decl., par. 11). The numerous articles attached to Mr. Tyler's Declaration bolster this definition. So, according to National Trade, the term "ultrapure water" is generic for a type of treated water. However, this is neither the product for which Tall Oaks and Slejko have registered, applied for, nor used the mark ULTRAPURE WATER.

25. To the contrary, Tall Oaks and Slejko have registered, applied for, and use ULTRAPURE WATER as mark in connection with the promotion and sale of a technical journal about water treatment. (Cmpl., Exhs. A-E; Slejko Aff.). While ULTRAPURE WATER certainly "forthwith conveys an immediate idea of" the subject matter of Tall Oaks' and Slejko's trade journal, the mark does not name, and is not the name of, the very products Tall Oaks/Slejko and National Trade promote and sell * technical trade journals and/or technical information services relating to the water treatment industry. (Cmpl., Exhs. A, G, and H).

26. As the panel finds that the ULTRAPURE WATER mark is merely descriptive, Tall Oaks and Slejko still must show that the mark has acquired distinctiveness. On this issue, Tall Oaks and Slejko have not made a strong showing. The panel has little evidence before it regarding the distinctiveness ULTRAPURE WATER may have acquired from Tall Oaks'/Slejko's use of the mark. The panel has before it the cover of a single issue of the ULTRAPURE WATER journal (Cmpl., Exh. A), and Dr. Slejko's statements that the mark has been in use for over 15 years (Slejko Aff., Compl., Exh. T). The panel does not have before it sales or advertising figures for the ULTRAPURE WATER journal, unsolicited recognition by the press, the trade, or Complainants' readership, or any of the other indicia that the ULTRAPURE WATER mark has acquired distinctiveness.

27. Considering that the late, additional submissions by Tall Oaks and Slejko have been strenuously objected to by National Trade (Suppl. Cmpl., Suppl. Resp.), the Panel has given no weight to the fact that the U.S. Patent and Trademark Office has issued a Notice of Publication for Dr. Slejko's Principal Register application for the ULTRAPURE WATER mark, or that the opposition period with respect to the application has passed without a Notice of Opposition or an Extension Request therefor having been filed.

28. However, Tall Oaks and Slejko have submitted meager, although telling, evidence that the ULTRAPURE WATER mark and its associated journal have acquired at least a small modicum of distinctiveness. In 1997 and 1998, an employee and an agent of National Trade made two separate inquiries on National Trade's behalf to purchase the ULTRAPURE WATER publication from Complainants. (Cmpl., Exh. R). National Trade characterized the ULTRAPURE WATER journal as a "small to medium-sized trade or professional magazine[] which [has] ... a history of profitable operations or a reasonable chance of reaching a profitable level." Presuming that National Trade operates a profitable publishing business, it would not have made inquiries to purchase a 15-year publication (which, at the time of the inquiries was a 13/14-year publication) that National Trade did not believe had "a history of profitable operations or a reasonable chance of reaching a profitable level." The Panel considers the two inquiries made by National Trade as admissions of a party opponent that the ULTRAPURE WATER mark had achieved at least some level of recognition and distinctiveness. Rule 801(d)(2), Fed. R. Evid.

29. Further, Dr. Slejko's Affidavit portrays a long history of the parties exchanging complimentary copies of their respective publications for over a decade (Slejko Aff.); a contention that National Trade admits in its Response (at p. 3) and which Mr. Tyler nowhere disputes in his Declaration. Further, as Mr. Tyler states in his Declaration, the ULTRAPUREWATER.COM domain name was registered with the intent of, and used for the purpose of, making it easier for Internet users to find National Trade's Water Technology Online web site (Tyler Decl., pars. 9 and 10; Cmpl., Exh. K). The Panel finds that National Trade, in this respect, is making trademark use of the ULTRAPUREWATER.COM domain name * further indicia that ULTRAPURE WATER has acquired at least some form of trademark distinctiveness in the water treatment industry.

Whether National Trade's Use of the ULTRAPUREWATER.COM

Domain Name Constitutes "Fair Use"

30. National Trade also contends that it is making "fair use" of the ULTRAPUREWATER.COM domain name. For National Trade to establish that it is making "fair use" of this domain name, it must show that said use is "otherwise than as a mark ..., which is descriptive of and used fairly and in good faith only to describe the goods or services of such party ...." Trademark Act, Section 33(b)(4).

31. As stated above, National Trade is making not a descriptive fair use of ULTRAPUREWATER.COM, but a trademark use of the domain name. National Trade does not direct Internet users to subsidiary water treatment information pages within its web site, but directly to its home page (which contains links to product purchasing and journal subscription web pages, advertising, and classified ads). When accessing portions of National Trade's web site, an Internet user first is asked to complete a questionnaire, and accept all "cookies" left by accessing National Trade's web site, from which National Trade certainly could compile a mailing and/or e-mail subscription list for its Water Technology magazine and on line products and services. (Cmpl., Exhs. E, F, and K). The questionnaire also directly refers the Internet user directly to National Trade's Water Technology journal in the introductory text.

32. Thus, National Trade's trademark use of the ULTRAPUREWATER.COM web site is inconsistent with its claim that "fair use" is being made of the domain name.

33. The panel also finds that National Trade's registration and use of the ULTRAPUREWATER.COM domain name is likely to cause confusion with Tall Oaks' and Slejko's ULTRAPURE WATER mark, under the factors stated in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).

34. As discussed above, the ULTRAPURE WATER mark is merely descriptive, but sufficient evidence has been submitted, although barely, to show that the mark has acquired a modicum of distinctiveness. Also as discussed, the panel considers the ULTRAPURE WATER mark and the ULTRAPUREWATER.COM domain name to be legally identical in appearance, sound, and commercial impression.

35. The parties are direct competitors in the same industry, and from all appearances they promote and sell their technical journals to the same general class of consumers, water treatment professionals. While there has been no showing of actual confusion, the panel does not consider this decisive when the standard is "likelihood" of confusion.

36. National Trade and Mr. Tyler assert that they have registered and are using the ULTRAPUREWATER.COM domain name in good faith. The Panel questions these assertions, given the manner, discussed above, in which National Trade is using the domain name.

37. Further, Tall Oaks and Slejko have submitted evidence that National Trade has registered and is using the domain names WATERQUALITY.COM and QUALITYWATER.COM in the same manner that National Trade has registered and is using the ULTRAPUREWATER.COM domain name. QUALITY WATER INTERNATIONAL appears to be the registered mark of, and the name of a magazine of, the International Association on Water Quality, apparently another competitor in the water treatment publications industry. (Compl., Exhs. L - Q). The Panel concludes from this additional evidence that National Trade has engaged in a pattern of registering as domain names the legal equivalents of the marks of its competitors.

38. In the face of the above-recited evidence, Mr. Tyler maintains that "'Water Quality' and 'Quality Water' are not the names of trade magazines" and that "NTP has never registered a domain name for the purpose of misleadingly diverting web users." (Tyler Decl., pars. 13 and 14). The Panel finds that Complainants' evidence belie these statements of Mr. Tyler.

39. For purposes of the Panel's decision, it presumes that National Trade's products and services are of equal quality to those of Tall Oaks, and that the purchasers and consumers of the parties' products are sophisticated. These facts do not detract from the Panel's ultimate finding that National Trade has registered and used the ULTRAPUREWATER.COM domain name in bad faith, for the purposes of creating a likelihood of confusion with Complainants' ULTRAPURE WATER publication.

40. Further, the Panel finds that National Trade has registered and used the ULTRAPUREWATER.COM domain name in a manner likely to cause "initial interest confusion." That is, Internet users looking on line for Tall Oaks' ULTRAPURE WATER journal will instead be taken to National Trade's Water Technology Online web site. Once there, it appears quite likely that Internet users interested in information on water treatment issues will have found what they were looking for, although offered by another party, and instead take advantage of National Trade's products and services rather than those of Tall Oaks and Slejko. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1062-1063 (9th Cir. 1999).

Decision

41. The Panel finds that the ULTRAPUREWATER.COM domain name is legally identical to and/or confusingly similar to the ULTRAPURE WATER trademark in which Tall Oaks and Slejko have rights. National Trade has not shown that it has rights or legitimate interests in the domain name. Further, National Trade has been shown to have registered and to have been using the ULTRAPUREWATER.COM domain name in bad faith.

42. Further, the Panel finds that National Trade has registered the ULTRAPUREWATER.COM domain name in order to prevent Tall Oaks and Slejko from reflecting the ULTRAPURE WATER mark in a corresponding domain name, and that National trade has engaged in a pattern of such conduct with respect to the mark of at least one other competitor, the International Association on Water Quality. National Trade also has registered the domain name primarily for the purpose of disrupting the business of Tall Oaks and Slejko, who are direct competitors. By the manner in which National Trade is using the ULTRAPUREWATER.COM domain name, it is intentionally attempting to attract, for commercial gain, Internet users to its Water Technology Online web site, by creating a likelihood of confusion with the ULTRAPURE WATER mark as to the source, sponsorship, affiliation, or endorsement of National Trade's web site with the ULTRAPURE WATER journal promoted and sold by Tall Oaks and Slejko.

43. For the reasons set forth above, this Panel orders that the ULTRAPUREWATER.COM domain name be transferred to the Complainant.

Jonathan Hudis

Sole Panelist

Date: May 5, 2000