Martha Stewart Living Omnimedia, Inc. v. Joe
Perez
Claim Number: FA0904001259275
PARTIES
Complainant is Martha Stewart Living Omnimedia, Inc. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Joe Perez (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <everydayfood.com>
and <everyday-food.com>,
registered with Godaddy.com, 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.
Hon. James A. Carmody, Estella Gold, and Hon. Nelson A. Diaz as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 23, 2009; the National Arbitration Forum received a
hard copy of the Complaint on April 24, 2009.
On April 24, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <everydayfood.com>
and <everyday-food.com>
domain names are registered with Godaddy.com, Inc. and that the Respondent is
the current registrant of the names.
Godaddy.com, Inc. has verified that Respondent is bound by the
Godaddy.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 April 30, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 20, 2009 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@everydayfood.com and postmaster@everyday-food.com
by e-mail.
A timely Response was received and determined to be complete on May 20,
2009.
Additional Submissions were received on June 1, 2009 complying in a
timely manner with The Forum's Supplemental Rule 7.
On May 28, 2009, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Hon. James A. Carmody, Estella Gold, and Hon. Nelson A. Diaz
as Panelists, Hon, Nelson A. Diaz was designated as
the chair of the Panel by the National
Arbitration Forum.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In 2003, the EVERYDAY FOOD magazine
was sold by 39,109 dealers. For the
period between 2004 and 2008, the total paid average monthly circulation for
the EVERYDAY FOOD magazine has never been less than 650,000 copies and for the
last 6 months of 2008, the average monthly paid circulation for the EVERYDAY
FOOD magazine was 991,056 copies. For
the period between 2002 and 2008, Complainant has expended millions of dollars
in advertising, consumer marketing, and circulation expenses for the EVERYDAY
FOOD magazine.
In addition to sales in the United States, the
EVERYDAY FOOD magazine is distributed in each of Australia, Brazil, British
West Indies, Caicos Islands, Costa Rica England, Greece, Guam, Hong Kong,
India, Indonesia, Israel, Italy, Jamaica, Japan, Lebanon, Malaysia, Mexico, New
Zealand Panama, Philippines, Poland, Portugal, Puerto Rico, Singapore, South
Africa, Spain, Sweden, Switzerland, Taiwan, and Thailand. In addition to EVERYDAY FOOD magazine,
Complainant has produced and aired a television show under the EVERYDAY FOOD
mark since 2005. This show is broadcast by approximately 200 different outlets
in markets throughout the United States.
Approximately 7 months after Complainant filed
its intent-to-use applications with the USPTO, putting the U.S. public on
notice of its intent to use the EVERYDAY FOODS marks in conjunction with the
goods and services recited therein, Respondent registered the Offending
Domains. Respondent has associated the Offending Domains with websites which
provide information and contain pay-per-click links for Complainant's
advertisers. In addition, the content published by the Respondent makes
explicit reference to Martha Stewart, evidencing the Respondent's knowledge of
the association of the EVERYDAY FOOD marks with the Complainant. Upon information and belief, Respondent
obtains pay-per-click revenues from these websites and in doing so unjustly
derives revenue from the traffic generated by the goodwill associated with the
EVERYDAY FOOD Marks.
The Offending Domains are confusingly similar to
Complainant's marks because each fully incorporates Complainant's EVERYDAY FOOD
Marks and, for the <everyday-food.com>
domain name, merely adds a hyphen and the top level domain extension,
".com." The mere addition of a generic top-level domain and a hyphen
does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i).
Respondent
lacks rights or legitimate interest in the Offending Domains. Respondent has
never used any trademark or service mark similar to the Offending Domains by
which it may have come to be known, other than the infringing use noted
herein. Respondent has never operated
any bona fide or legitimate business
under the Offending Domains and is not making a protected non-commercial or
fair use of the Offending Domains. Complainant has not
granted Respondent any license, permission, or authorization by which he could
own or use any domain name registrations which are confusingly similar to any
of Complainant's mark. Respondent is a
U.S. individual with a U.S. address who has registered the domain names through
a U.S. based registrar and has monetized those domain names through Sedo, a
hosting company with a significant U.S. operation, it is fair that the U.S. law
should apply in this dispute.
Since the Respondent is located within the U.S.,
he has notice of Complainant's prior rights to its EVERYDAY FOOD mark. The fact
of (a) the prior pending intent to use application combined with (b) the fact
that a search of the USPTO records prior to the date of the registration of the
Offending Domains would have revealed Complainant's claim to rights and (c) the
fact of the nature of the use of the Offending Domains to promote competing
goods and services via a pay-per-click interface which makes direct reference
to Complainant and its MARTHA STEWART and EVERYDAY FOOD magazine marks all
support a finding of bad faith registration.
B. Respondent
This Proceeding relates to two domain names
corresponding to an everyday phrase registered well prior to any evidence of an
enforceable right owned by the Complainant.
At the time the domain names were registered in May and June 2002, the
Complainant was the applicant of several intent-to-use applications which were
under refusal. The Complainant’s first
claim to acquire distinctiveness was not made until May 8, 2006, during the
course of overcoming a descriptiveness refusal under Section 2(f) of the Lanham
Act, in a registration application which issued in June 19, 2007. The Complaint is premised on the
proposition that the mere filing of a registration application, which anyone
may do at any time for any word or phrase regardless of use, registrability, or
eventual disposition of the application, acts as a bar to registration of a
domain name. There is no principle of
law or doctrine under the Policy which supports such a premise, and quite a
body of decisions which contradict this premise.
The Complainant states “On October 9, 2001” that
it filed a pair of intent-to-use applications.
The Complainant emphasizes this filing date to convey the impression
that this date has particular significance in this Proceeding. It does not.
Anyone may at any time file a trademark application for any phrase that
may ultimately be deemed unregisterable.
In fact, both of the applications filed on this date emphasized the
Complainant were refused by the USPTO as merely descriptive terms. Indeed, at the time the domain names were registered
in 2002, both applications stood refused in the USPTO, and never issued on the
Principal Register. The Complainant
acquiesced in the USPTO’s refusal of these applications, amended them to the
Supplemental Register, and indeed did not claim use of the claimed mark until
2003 – well after the domain names were registered. The Supplemental Registrations, when issued
in 2003 did not confer a prima facie
enforceable right in the term at issue as of their issue dates in 2003. Therefore, they certainly did not confer any
sort of right at all as of their filing date, nor as of the date the domain
names were registered.
Accordingly, on the basis of evidence relating to
the claimed television entertainment services for the previous 26 months dating
to the date of the 2(f) Declaration (January 2005), the Complainant claimed to
have acquired distinctiveness as of the date of the Declaration – i.e. May 8,
2006. The resulting registration, and
first date on which the Complainant may claim a prima facie enforceable right, was June 19, 2007, in connection
with television programming. In other
words, despite the history of the magazine discussed in the Complaint, six days
after filing the Complaint in this Proceeding was the first time ever that the
Complainant claimed distinctiveness – as of April 29, 2009 – before the USPTO
in two applications corresponding to the 2003 Supplemental Registrations.
The Complainant recites a history of common law
usage beginning with a claimed first use date of October 2002. A chronology starting “[i]n 2003” recounts
the Complainant’s use of the claimed term as a mark, while of course the
Complainant was unable to advance the two Supplemental Registrations to the
Principal Register. All of these
activities are ultimately irrelevant to the requirement under the Policy that
the Complainant demonstrate “bad faith” registration of the domain names. Concerning the Complainant’s recitation of
history relating the magazine described in the Complaint, the Complainant’s
claim of right in connection with that magazine was filed with the USPTO not
more than a month ago, and it would be precipitous for this Panel to opine on
what the USPTO should decide in those applications, as no doubt the Panel’s
decision itself will be presented to the USPTO.
C. Additional
Submissions
Complainant alleges that this is a
straightforward case that offers the Panel a stark choice between applying the
plain language of the Policy or creating a safe haven
for U.S. based cybersquatters to poach domain names based upon Intent to Use
trademark applications and Respondent has failed to rebut Complainant’s prima facie case.
Respondent states that Complainant abandons the
law, and re-frames its case a policy argument for the propositions (a) that a
pending intent-to-use application confers “rights” that stand as a proxy for
the “insider knowledge” exception to the general Policy principle that
trademark rights must pre-date a domain name, and (b) for a proposed policy
rationale for an exception to the UDRP requirement that a domain name be
registered in bad faith relative to pending intent-to-use applications which
were refused and amended to the Supplemental Register as merely
descriptive. Neither of these arguments
withstands scrutiny, and in particular based upon the limited information,
about which the Complainant’s counsel is aware, concerning the Respondent’s
activities since registering the domain name.
FINDINGS
In reviewing the Response, it appears that the
main issues are under ICANN Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no
rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration
and use;” the panel finds for the Respondent.
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.
Respondent asserts that Complainant has not
obtained a prima facie claim to
rights in the mark based on Complainant’s October 2001 intent-to-use
applications. Respondent argues that
Complainant merely made a claim to rights in the mark to the Principal
Register, but that Complainant’s applications “stood refused” by the USPTO
throughout 2002—during which year Respondent argues that the domain names were
registered. Respondent contends that
Complainant agreed to the Supplemental listing, which does not denote any distinctiveness
in the mark. Respondent therefore argues
that neither Complainant’s intent-to-use application nor Complainant’s
Supplemental Register registrations confer rights in the mark under Policy
¶ 4(a)(i) absent a showing of secondary meaning
as to a specific date. The Panel finds
that Complainant lacks rights in the mark under Policy ¶ 4(a)(i)
based solely on the application and/or the Supplemental registrations. See
Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the
respondent’s state trademark registration and intent-to-use application for
YAHOO VENTURES were not enough to establish rights and legitimate interests in
<yahooventures.com> within the meaning of Policy ¶ 4(a)(ii)); see also CyberTrader, Inc. v. Bushell,
D2001-1019 (WIPO Oct. 30, 2001) (stating that Supplemental Register “provides
the Complainant with no protectable rights” in its marks); see also Chiappetta v. Morales, D2002-1103 (WIPO Jan. 20, 2003)
(holding that the complainant’s registration of the DISCOUNT HYDROPONICS mark
on the Supplemental Register did not confer any rights under the UDRP).
Respondent also contends that despite
Complainant’s assertions of common law usage of the mark since October 2002,
Complainant only recently represented its alleged distinctiveness in the mark
to the USPTO on April 29, 2009 in an application pertaining to Complainant’s
EVERYDAY FOOD magazine. Respondent
argues that this is evidence that Complainant lacks sufficient secondary meaning
in the mark vis-à-vis the magazine operation because Complainant did not make
its distinctiveness claim until recently in order to upgrade from the
Supplemental to the Principal Register.
The Panel finds that Complainant lacks secondary meaning in the mark,
the Panel also finds that Complainant lacks common law rights in the mark under
Policy ¶ 4(a)(i).
See Kip Cashmore v. URLPro,
D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the
complainant did not present any credible evidence establishing acquired
distinctiveness); see also Bar Code Disc.
Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001)
(“Although Complainant might eventually overcome [the USPTO’s] initial refusal
with adequate evidence of secondary meaning in its proposed mark, the USPTO
refusal is certainly material to this proceeding as evidence of the descriptive
character of Complainant’s proposed mark, and Complainant should have disclosed
this refusal to the Panel.”).
The Panel holds that Complainant has not established
a prima facie case in support of its
arguments that Respondent lacks rights and legitimate interests under Policy ¶
4(a)(ii). See Terminal Supply, Inc. v.
HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding
that the complainant did not satisfactorily meet its burden and as a result
found that the respondent had rights and legitimate interests in the domain
name under UDRP ¶ 4(a)(ii)); see also
Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006)
(finding that the respondent overcame the complainant’s burden by showing it
was making a bona fide offering of goods or services at the disputed domain
name).
Respondent asserts that its use of generic domain
names for an advertising venture is a legitimate business operation, and that
Complainant is not targeted by such advertising. The Panel finds that Respondent has made
demonstrable preparations to use the disputed domain names in connection with a
bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the
respondent’s use of the disputed domain name, which was comprised of generic
terms, as a portal to a commercial website featuring various advertisements and
links constituted a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i)); see also Williams,
Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813
(Nat. Arb. Forum Oct. 8, 2001) (finding that “[n]either the current
UDRP nor current ICANN registrar contracts preclude” the practice of
registering domain names in connection with an advertising venture). Respondent also argues that the terms of the
disputed domain names are generic and of common use and therefore, Complainant
does not have an exclusive monopoly on the terms on the Internet. The Panel believes that the contested domain
names are comprised of common terms, and finds that Respondent can establish
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(a)(ii). See Kaleidoscope Imaging,
Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding
that the respondent was using the <kaleidoscope.com> domain name for a
bona fide offering of goods or services because the term was “generic” and
respondent was using the disputed domain name as a search tool for Internet
users interested in kaleidoscopes); see
also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST
mark are limited to its application to the tele-communications industry,” where
a variety of other businesses used the mark in unrelated fields).
Respondent asserts that the disputed domain names
were registered in May and June of 2002, which Respondent claims predates
Complainant’s first use of the mark in commerce in October 2002. The Panel finds that Complainant lacks rights
in the mark that predate these disputed domain name registrations under Policy
¶ 4(a)(i), the Panel may find that Respondent has rights or legitimate
interests under Policy ¶ 4(a)(ii). See Latent Tech. Group, Inc.
v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that
the respondent does have a legitimate interest in the domain name where the
respondent registered the disputed domain name for a legitimate business
purpose prior to complainant’s application for registration of the mark and the
complainant has not proven any earlier use of the mark); see also Warm Things, Inc. v.
Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had
not met its burden of proof to show respondent lacked rights or legitimate
interests in a domain name when respondent’s registration of that domain name
occurred before the complainant had established rights in its alleged mark).
The Panel finds that Complainant failed to meet
the 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 the 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).
The Panel concludes that Respondent has rights or
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register
or use the disputed domain names in bad faith pursuant to Policy ¶
4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824
(WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use
was moot once the panel found the respondent had rights or legitimate interests
in the disputed domain name); see also
Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum
Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the
disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not
registered or used the disputed domain names in bad faith and has not violated
any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that
would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro
Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where
the respondent has not attempted to sell the domain name for profit, has not
engaged in a pattern of conduct depriving others of the ability to obtain
domain names corresponding to their trademarks, is not a competitor of the
complainant seeking to disrupt the complainant's business, and is not using the
domain name to divert Internet users for commercial gain, lack of bona fide use
on its own is insufficient to establish bad faith); see also 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 UDRP ¶ 4(a)(iii)).
Respondent argues that it had no knowledge of the
mark because it had not been used by Complainant subsequent to the registration
of the disputed domain names. Respondent
contends that the disputed domain names are comprised entirely of common terms
that have many meanings apart from use in Complainant’s mark. Moreover,
Respondent contends that the registration and use of domain names
comprising such common terms is not necessarily done in bad faith. The Panel finds that Respondent is
free to register domain names consisting of common terms and that the
domain names currently in dispute contains such common terms, and that
Respondent did not register or use the disputed domain names in bad faith
under Policy ¶ 4(a)(iii). See
Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000)
("Common words and descriptive terms are legitimately subject to
registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v.
Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the
respondent’s registration and use of the <target.org> domain name was not
in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA
192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was
using the <highlife.com> domain name, a generic phrase, in connection
with a search engine, the respondent did not register and was not using the
disputed domain name in bad faith).
Respondent asserts that the disputed domain names
were registered in May and June of 2002, which Respondent claims predates
Complainant’s first use of the mark in commerce in October 2002. The Panel finds that Complainant’s lacks
rights in the mark that predate these disputed domain name registrations under
Policy ¶ 4(a)(i), Respondent did not engage in bad faith registration or use
under Policy ¶ 4(a)(iii). See Interep Nat'l Radio
Sales, Inc. v. Internet Domain Names, Inc.,
D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent
registered the domain prior to the complainant’s use of the mark);
see also Open Sys. Computing AS v. degli
Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the
respondent registered the domain name in question before application and
commencement of use of the trademark by the complainant).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Hon. Nelson A. Diaz, Chairman of the
Panel
Estella Gold, Panelist
Hon. James A. Carmody, Panelist
Dated: June 24, 2009
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