Bert & Wetta Sales, Inc. v. Ron Seibold
Claim Number: FA2201001980161
Complainant is Bert & Wetta Sales, Inc. (“Complainant”), represented by Weston Bert, Kansas, USA. Respondent is Ron Seibold (“Respondent”), represented by Stephen C. McArthur of The McArthur Law Firm, PC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usgreens.com> (the “Disputed Domain Name”), registered with GoDaddy.com, LLC.
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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2022; the Forum received payment on January 13, 2022.
On January 13, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <usgreens.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@usgreens.com. Also on January 17, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 2, 2022.
On February 8, 2022, Complainant submitted an unsolicited supplemental filing. On the same date, Respondent submitted an unsolicited supplemental filing.
On February 8, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it “seeks to market green food ingredients on a wholesale basis to companies who seek to use those ingredients in their finished product.” Complainant appears to operate a website using the domain name <usgreens.net>, which was created on May 19, 2014.
Complainant further states, and provides evidence in support thereof, that it is the owner of U.S. Reg. No. 5,883,037 for the following trademark registration in the United States, for use in connection with “processed vegetables and herbs, namely, preserved alfalfa, preserved wheat grass, preserved barley grass, preserved mustard and collard greens and preserved greens, namely, arugula, chard and spinach” (first used in commerce May 1, 2014; registered October 15, 2019): (the “USGREENS Trademark”): [IMAGE OMITTED]
The Disputed Domain Name was created on August 7, 2001, and redirects to a website at https://kansaswheatgrass.com that purports to offer “quality green ingredients” and “the finest cereal grass products for your customers and for the whole planet.”
Complainant asserts that the Disputed Domain Name is confusingly similar to the USGREENS Trademark because the domain name “is the exact name and mark our company has trademarked (US Greens).”
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “[t]he holder of www.usgreens.com (PINES) is a direct competitor of US Greens and sells identical products as mentioned above – preserved wheatgrass, barley grass and alfalfa (dehydrated greens)” and “[w]e routinely compete for the same customers and they have no reason to want to use our name (US Greens) for anything but to benefit themselves.”
Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “US Greens irrigates our fields and since Pines used to be a customer of USGreens, Ron Seibold (Pines CEO) is aware of this”; and Respondent “is using our trademarked name (USGreens) to redirect to their website, which actively markets against we the Complainant.”
B. Respondent
Respondent states that that the Disputed Domain Name is not confusingly similar to a trademark in which Complainant has rights, because “Complainant does not have rights to the trademark as claimed” given that the USGREENS Trademark is owned by USGreens, LLC, not by Complainant; and also because “even if Complainant’s lack of ownership is overlooked, Complainant has expressly disclaimed rights to the wording ‘USGREENS’ and therefore does not own rights to the words as used in the domain name at issue.”
Respondent states that Respondent has rights or legitimate interests in the Disputed Domain Name and/or that the Disputed Domain Name was not registered and is not being used in bad faith because, inter alia, “for over a year before the application that matured as the [USGREENS Trademark] was filed to the present, Respondent has been legitimately using the Domain Name in accord with its geographically-descriptive nature—to advertise Respondent’s U.S.-grown wheatgrass and other greens”; that “[y]ears before any notice of this dispute, and two years before Complainant applied for its trademark application, Respondent purchased and has used the Domain Name in connection with a bona fide offering of goods—specifically U.S.-grown wheatgrass and related greens”; that “Respondent has operated a website at the Domain Name since December 2017, more than one year before the March 11, 2019, filing date of the application that matured as the [USGREENS Trademark]”; and “Respondent is and has been making legitimate use of the usgreens.com Domain Name because it is a generic term in the industry and the wording ‘US Greens’ describes Respondent’s green, organic, alfalfa products, which originate in the United States.”
C. Additional Submissions
In its supplemental filing, Complainant states in an email that “B&W fully owns US Greens” and provides what Complainant describes as “excerpts from the US Greens operating agreement” dated May 1, 2014, which states that “Bert and Wetta Sales, Inc. constitutes the initial member of” US Greens, LLC.
In its supplemental filing, Respondent states, inter alia:
A copy of US Greens’ Operating Agreement does nothing to remedy the problem identified in Respondent’s Response: that Complainant Bert & Wetta Sales, Inc. does not have rights to the trademark as claimed. A parent company is not considered a “related company” whose use of a trademark inures to the benefit of its subsidiary. See Noble House Home Furnishings, LLC v. Floorco Enters., LLC, Cancellation No. 92057394, at 21-23 (TTAB Apr. 4, 2016) (Precedential); Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., Oppositions No. 91188816 and 91190058 and Cancellation No. 92050852 (TTAB August 16, 2013) (Precedential). If a subsidiary owns a trademark registration, the parent company is not considered a related company and has no automatic right to use or enforce the registration. See id; see also Williams v. Canon, Inc., 432 F. Supp. 376, 380 (C.D. Cal. 1977) (“The use of a trademark by a corporation's subsidiary is not a transaction of business by the parent company.”). Rather, there must exist an assignment or license, and all assignments must be in writing and duly executed. See 15 U.S.C. 1060(a)(3). Here, there is no assignment or license in the record.
The USGREENS Trademark registration, which was first used in commerce on May 1, 2014, and registered on October 15, 2019, is owned by USGreens, LLC. The Disputed Domain Name was created on August 7, 2001, and redirects to a website at https://kansaswheatgrass.com that purports to offer “quality green ingredients” and “the finest cereal grass products for your customers and for the whole planet.”
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
It is clear to the Panel that USGreens, LLC, not Complainant, is not the owner of the USGREENS Trademark registration. However, Complainant states (in its unsigned, unsolicited supplemental filing) that it “fully owns” USGreens, LLC. While Respondent cites U.S. legal authority to argue that this relationship does not give Complainant rights to the USGREENS Trademark, section 1.4.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” In any event, it is unclear whether the relevant entities satisfy any of these requirements.
Furthermore, as Respondent has stated, the USGREENS Trademark registration contains an important disclaimer: “No claim is made to the exclusive right to use ‘USGREENS’ apart from the mark as shown.” As set forth in section 1.10 of WIPO Overview 3.0: “where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP.”
Accordingly, the Panel finds that Complainant has not proven the first element of the Policy.
Given the Panel’s conclusions set forth above and below, the Panel declines to address the second element of the Policy, as doing so is unnecessary.
As already stated, the Disputed Domain Name was created on August 7, 2001, while the USGREENS Trademark was not used in commerce until May 1, 2014, and registered until October 15, 2019. As set forth in section 3.8.1 of WIPO Overview 3.0: “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
Accordingly, the Panel finds that Complainant has not proven the third element of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <usgreens.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg, Panelist
Dated: February 23, 2022
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