National Arbitration Forum
Lodging Kit Company, Inc. v. Natalie Soffer
Claim Number: FA0909001283398
Complainant is Lodging Kit Company, Inc. (“Complainant”), represented by R. John Clark, of Hancock &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lodgingkits.com>, registered with The Name It Corporation d/b/a Nameservices.net.
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.
Timothy D. O’Leary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.
On September 14, 2009, The Name It Corporation d/b/a Nameservices.net confirmed by e-mail to the National Arbitration Forum that the <lodgingkits.com> domain name is registered with The Name It Corporation d/b/a Nameservices.net and that the Respondent is the current registrant of the name. The Name It Corporation d/b/a Nameservices.net has verified that Respondent is bound by The Name It Corporation d/b/a Nameservices.net 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 September 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 13, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 5, 2009.
Complainant filed an Additional Submission which was timely filed and received October 12, 2009. Respondent’s Supplemental Response to Complainant’s Additional Submission was timely filed.
On October 19, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns and operates
<LODGINGKIT.COM>, a website connected with Lodging Kit Company, Inc. The
website provides online ordering services for timeshare resorts, condominiums,
extended stay hotels, standard hotels, condominium hotels, government lodging,
and other lodging markets featuring housewares, kitchen products, small
appliances, towels, bedding, housekeeping supplies, spa services, furniture,
artwork furnishing and other products necessary and/or desirable to outfit both
short term and extended stay travel accommodations. In addition to its
Lodging Kit Company obtained a federal trademark registration for its mark, “LODGING KIT,” from the United States Patent and Trademark Office on the Supplemental Register on May 19, 2009. The serial number is 77512208. A copy of the Supplemental Registration certificate is attached.
Respondent operates <LODGINGKITS.COM>, an online store which offers household maintenance products, including, but not limited to, kitchen products, small appliances, food storage containers, housekeeping supplies, janitorial supplies, and other products useful for households and other facilities. Respondent registered its domain name on February 25, 2005.
Complainant has developed a high
recognition and reputation of its business under the official mark LODGING KIT.
The official mark is well known in the
Respondent lacks any rights or legitimate interests in <LODGINGKITS.COM>, as LODGING KIT is Complainant’s official mark and Complainant has not consented to Respondent’s use of the domain name. Respondent has no connection or affiliation with the Complainant, and its use of a domain name similar to Complainant’s official mark causes consumer confusion.
Respondent’s use of <LODGINGKITS.COM> cannot exclude confusion of consumers, who will in view of the similarity of the domain name <LODGINGKITS.COM> with the official mark LODGING KIT, believe that domain name refers to the Complainant. ICANN Rule 3(b)(ix)(2); ICANN Policy 11 4(a)(ii).
Respondent registered and used <LODGINGKITS.COM> in bad faith, supported by the likelihood of confusion between the Complainant’s and Respondent’s domain names which allows Respondent to profit from Complainant’s mark high chance of users misspelling Complainant’s official mark and subsequently being led to Respondent’s website, and inability of the Complainant to register the plural version of its official mark
Internet users, seeking the products or services of the Complainant, and being aware that the Complainant sells lodging and hotel kits under its official mark LODGING KIT, are likely to misspell the Complainant’s domain name <LODGINGKIT.COM> into <LODGINGKITS.COM> in an attempt to type the Complainant’s domain name into a web browser in order to locate these products or services. Such users will be diverted to the Respondent’s webpage, where the Respondent offers competitive goods and services of the Complainant.
Respondent has intentionally attempted to attract Internet users to its website for commercial gain, creating a likelihood of confusion with the Complainant’s official mark LODGING KIT as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
By registering <LODGINGKITS.COM>, the Respondent has prevented the complainant from registering that domain name, which is the plural form of its own official mark and has committed a typical case of “typosquatting.” ICANN Rule 3(b)(ix)(3); ICANN Policy 4(a)(iii).
The domain name is NOT identical or confusingly similar to the trademarks in which the Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
In order to successfully make out its
claims, Complainant does not have to demonstrate only a similarity between the
disputed domain and the claimed mark; Complainant must adequately demonstrate
that it has rights in the claimed mark. Complainant has not and can not
demonstrate such rights.
Complainant has not obtained a prima facie claim to rights in the mark based on its May 2009 registration on the Supplemental Register of the USPTO. Complainant originally sought registration on the Principal Register, but that application was refused by the Trademark Office explicitly because the LODGING KIT phrase was “merely descriptive” and was not associated in the minds of the public with Complainant. In its response to the Trademark Office, Complainant neither made any argument nor submitted any evidence tending to show an actual secondary meaning in the mark, but rather simply acquiesced and amended its application to seek registration on the Supplemental Register.
Further, Complainant in the instant complaint has similarly neither argued nor submitted evidence showing any secondary meaning, except for the unsupported (and unsupportable) naked assertion of same in the last paragraph of Complaint 5[a]. Even that statement is not directed to claiming secondary meaning as of the date of Respondent’s registration. Nor could Complainant convincingly do so, in light of its submissions to the Trademark Office.
Without a showing of secondary meaning, Complainant’s registration on the Supplemental Register does not confer rights in the mark under Policy ¶ 4(a)(i). See, Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA 259275 (Nat. Arb. Forum June 24, 2009) (holding that Supplemental Register registration of EVERYDAY FOOD did not confer rights to Complainant under the Policy); 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).
The Complaint does not actually include any argument or assertion of rights stemming from common law usage of the mark, but even looking to the 1998 registration as forming the basis of some imaginable argument on those lines, Complainant would still fall short of the necessary mark: The Trademark Office has explicitly determined that no such secondary meaning has been established, and Complainant itself has acquiesced in that determination. See, 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.”); see also, Martha Stewart Living, FA 259275 (Nat. Arb. Forum June 24, 2009). Indeed, the very fact that Complainant sought registration on the Supplemental Register directly supports a contention that there were no rights at common law at the time of the application.
Respondent has rights or legitimate interests in respect of the domain name.
ICANN Rule 3(b)(ix)(2); ICANN Policy I 4(a)(ii).
Complainant presented no evidence supporting its assertion that Respondent has no rights or legitimate interests with regard to <LODGINGKITS.COM>. The Complaint simply restates the language of the Policy and points to the argued similarity of the two domain names.
The Policy and Rules are clear that the initial burden, though light, still rests “squarely on the shoulders of Complainant to show that Respondent has no rights or legitimate interest in respect of the domain name. Once Complainant has at least demonstrated enough indication, then, but only then does the burden shift to Respondent’s shoulders to rebut or explain.”
Even though Complainant has failed utterly to carry its burden of proof, Respondent nevertheless presents the following to demonstrate that it has rights or legitimate interests in the disputed domain name.
Respondent is using the domain name in connection with a bona fide offering of goods or services.
The term “Lodging Kits” is clearly descriptive of (unsurprisingly) kits - assemblies, packages, or combined materials or goods - designed for use in or connected to the lodging industry. A lodging organization seeking a kit of cleaning or maintenance material would readily describe its needs in those terms. This assertion is further supported by the opinion of the Trademark Office with regard to LODGING KIT, noted above. As made clear in the Soffer Declaration (Annex A), Respondent has been making use of the domain name in question in order to sell exactly those goods, to wit: kits (of maintenance supplies) directed to temporary residence suppliers. Soffer Decl.¶¶ 14-19. Even the Complainant’s own documents reflect that bona fide offering of goods. “Respondent operates <LODGINGKITS.COM>, an online store which offers household maintenance products, including, but not limited to, kitchen products, small appliances, food storage containers, housekeeping supplies, janitorial supplies, and other products useful for households and other facilities.” (Complaint, p.4)
Respondent has been using <LODGINGKITS.COM> for almost four years before the sudden ambush of Complainant, which fact also supports use of the domain name in connection with a bona-fide offering of goods. Datastream Intl Ltd. v. Micro Management Systems, FA094382 (Nat. Arb. Forum May 11, 2000)(The mere existence of Complainant’s trademark insufficient to trigger the “dispute” for these purposes; Respondent’s use of the domain name in offering services for three years before being contacted by Complainant established Respondent’s rights or legitimate interest in the domain name.)
Respondent is now and has been commonly known by the domain name.
Respondent established LODGING KITS
as a d/b/a for its parent company Daft LLC in 2005, and has been doing business
under that name continuously since then. Soffer Decl. ¶¶ 2,
16, 18. Respondent has maintained a website offering the relevant goods
for sale continuously since that time, and has taken any number of orders from
many different individuals and entities from multiple states in the
The website to which <LODGINGKITS.COM> resolved has, since its inception, included the LODGING KITS term prominently, and any of the many people visiting the site has thus been made to know the company by the domain name in question. Soffer Decl ¶¶ 14-19.
To the extent that the business entity is associated with the disputed domain name, then since its very inception in 2005 that business entity has certainly and clearly been “known by” the domain name, since the domain name is identical to the business name. Respondent, then, clearly has rights and legitimate interests in the <LODGINGKITS.COM> domain name.
Other factors demonstrating Respondent’s legitimate interest.
The website at <LODGINGKITS.COM> has never resolved to a parking site, has never been offered for sale to Complainant (or anyone else), has never made any reference to the Complainant’s websites or goods, and has never been merely “bait” for users who were otherwise looking for the Complainant’s site. Soffer Decl. ¶¶ 20-24. The <LODGINGKITS.COM> site has similarly never included metatags referring to LODGING KIT or <LODGINGKIT.COM>, and has, since very soon after its registration, resolved to an actual working website selling Respondent’s goods. Soffer Decl. ¶¶ 20-24.
Respondent did not register and use the domain name in bad faith.
ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
The Complainant has similarly completely failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent’s registration of the disputed domain name in 2005 predated Complainant’s rights in the mark: Complainant has not obtained any significant distinctiveness, as verified by the USPTO rejection of the recent application for descriptiveness and as ratified by Complainant itself by its amendment of the application to the Supplemental Register. Complainant does not have sufficient rights in its mark that predate the registration of the disputed domain name, therefore Respondent necessarily lacked the requisite intent to register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant does make a vague assertion of 4(a)(iii) bad faith under paragraph 4(b)(iv) of the Policy. However, Complainant simply parrots the legal standard under that paragraph, but cites no evidence whatsoever to support the accusation that Respondent registered the Domain Name with knowledge of Complainant’s mark and to cause confusion with Complainant’s mark. Such unsupported assertions are simply insufficient to carry the day for Complainant.
Complainant has made no showing whatsoever as to any of the elements listed, and Respondent hereby categorically denies those elements. Soffer Decl. ¶¶ 9-12, 21-22.
As set forth in the Complaint and the Declaration of Eric Martin submitted herewith, Complainant has been using the mark “LODGING KIT” since starting its business in October 1989 and has been continually using that mark in commerce for the sale of goods and services since that time. Complainant first registered the domain name <LODGINGKITS.COM> on December 30, 1998 and has continuously used that domain for the sale of its goods and services since that time.
In its response, Respondent places great emphasis on the recent registration of Complainant’s mark with the United States Patent and Trademark Office, and ignores the fact that Complainant has longstanding common law rights to its mark.
Respondent registered <LODGINGKITS.COM> on February 25, 2005. Respondent’s domain name differs from that of Complainant’s only by the addition of the single letter “S” and is otherwise identical to Complainant’s domain name. The addition, deletion or substitution of a single letter to a domain name is insufficient to avoid a finding that the domain name is identical or confusingly similar under Policy 4(a)(i).
The simple addition of the single letter “S” to form the plural of Complainant’s domain name renders Respondent’s domain name identical or confusingly similar to that of Complainant’s under Policy 4(a)(i).
In the Declaration of Natalie Soffer at Annex “A” to the Response, Declarant states:
2. In 2005, Daft, LLC established a d/b/a of Lodging Kits . . .
5. For some time before 2005, we had been selling cleaning and maintenance supplies piecemeal to various customers, including long-term lodging and hotel customers.
6. It occurred to me that there would be an added value for the potential customers and for Daft if equipment and materials specific to a particular circumstance were bundled and sold as a unit.
12. Because I was simply describing the goods I was selling, I did not engage in any significant domain name searching or trademark analysis.
Nowhere does Declarant deny knowledge of Complainant’s domain name dispute despite acknowledging she was selling the same goods in the same industry and in the same geographic region as Complainant “for some time”. Declarant states that “LODGINGKITS.COM was available, and I registered it.” (See Paragraph 13) Intentional ignorance of the rights of another in a prior mark or domain name is insufficient to support a defense of lack of notice. In addition, at Paragraph 2 of Registrar’s Domain Name Dispute Resolution Policy attached at Annex 2 of the Complaint, Respondent specifically represented and warranted that:
(a) the statements you made in your Registration Agreement are Complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable law or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (Emphasis supplied.)
Respondent clearly knew, or should have known, of Complainant’s prior rights in the disputed domain name.
Based upon Declarant’s own statement concerning the formation of Daft, LLC in December 2005, the business could not have been “commonly known” by the domain name at issue, which was registered eleven (11) months prior on February 25, 2005. Furthermore, Declarant’s statements support a finding that Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain.
There is “no evidence on the record that would indicate Respondent had any rights or legitimate interests in respect to the disputed domain names other than it registered the names. If mere registration of a domain name were sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(i) of the Policy, then all registrants would have such rights or interests and no complainant could succeed on a claim of abusive registration.” State Farm Mutual Automobile Insurance Company v. Bulldog, Inc., FA0094427 (Nat. Arb. Forum May 27, 2000).
Rule 4(b) of the Policy provides:
Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith . . .
or (iv) by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website... by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location, of a product or service on your website or location.
Evidence of bad faith includes
actual or constructive notice of a commonly known mark at the time of
Complainant’s Additional Submission is Wholly Insufficient to Rehabilitate the Inadequate Complaint.
Respondent has thoroughly demonstrated the gross inadequacy of Complainant’s original filing in this case. The Complainant has now made an additional submission attempting, gamely but without success, to rehabilitate the Complaint and to introduce new arguments and claims. Respondent herewith specifically responds to the statements and allegations contained in Complainant’s Additional Submission.
The phrase LODGING KIT, with or
without the .COM, describes (in whole) the goods or services
provided by Complainant, and as such the mark is descriptive. See,
Complainant is faced with the grim reality that LODGING KIT simply has not attained sufficient secondary meaning to serve as Complainant’s basis for this Proceeding. Complainant has conceded the absence of secondary meaning in a statement made under penalty of perjury before the US Trademark Office. Complainant’s application for registration of the mark was rejected by the Office “because the applied-for mark merely describes features of the [Complainant’s] services.” As clearly laid out in the USPTO Trademark Manual of Examining Procedure, 5th edition (TMEP), an applicant faced with such a rejection has two choices, barring direct objection to the examiner’s determination or abandonment: the applicant may either assert acquired distinctiveness in the mark or the applicant may amend the application to the Supplemental Register.
In response to the Trademark Office’s assertion that the LODGING KIT mark was devoid of any secondary meaning, Complainant did not argue for any acquired secondary meaning, nor submit any evidence supporting such a claim; Complainant instead conceded the matter, choosing to amend to the Supplemental Register.
It is important to note, further, that the Trademark Office determination was made even in light of Complainant/applicant’s claim of use since October 1989.
The Policy simply does not countenance Complainant’s efforts; where the Complainant has no rights in the mark in question, it can not satisfy its burden under Paragraph 4(a)(i). See, Roberta Chiappetta dba Discount Hydroponics v. C. J. Morales, D2002-1103 (WIPO Jan. 20, 2003) (“[W]hile Respondent’s domain name is identical to the Complainant’s trademark, the Complainant has no rights in the trademark and cannot succeed in meeting Paragraph 4a (i) [sic] of the Policy requirements.”)
Complainant misrepresents Respondent’s argument in an attempt to obfuscate its lack of rights:
In its Additional Submission, Complainant sets up two “straw man” arguments, entirely misrepresenting Respondent’s submission, and then (unsurprisingly) makes arguments to defeat them. These can be dispensed with briefly.
Complainant argues that that the addition of the letter “S” does nothing to render the <LODGINGKITS.COM> domain name less than substantively identical to Complainant’s claimed LODGING KIT mark. Respondent has nowhere argued otherwise.
What bars Complainant’s success is that even conceding, arguendo, that the domain name is identical to the mark, the Complainant has no rights in the mark to defend. The mark is – by Complainant’s own concession – merely descriptive and devoid of secondary meaning.
Complainant also contends adamantly that “[t]he UDRP does not distinguish between registered and unregistered marks.” (Complainant’s Add’l Submission, p. 2.) Here again, Complainant is rising to meet a challenge that it has invented for itself; Respondent has nowhere claimed that the UDRP speaks only to registered marks.
However, in order to successfully assert common-law or unregistered trademark rights, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services.
The Complainant’s inclusion of the Eric Martin Declaration is insufficient:
In neither the initial Complaint nor the Additional Submission has Complainant made an actual, direct assertion of secondary meaning. Apparently recognizing the failure of its initial Complaint, however, Complainant has included in the Additional Submission the Declaration of Eric Martin (Annex 1 to Complainant’s Additional Submission, hereafter “Martin Decl.”), which includes certain assertions that might be considered in a determination of secondary meaning.
These assertions can be summed up as follows: Complainant has been using LODGING KIT for a long time, and should be rewarded with a finding of secondary meaning. (Martin Decl. ¶¶ 3 – 6.)
As discussed above, this assertion was included in the Complainant’s initial application to the Trademark Office, and was therefore considered (and rejected) by the Office in its determination of descriptiveness, and was further conceded as insufficient to show secondary meaning by Complainant itself. Even setting that aside, the Complainant can not carry its burden by the simple inclusion of the Martin Declaration.
Where, as here, the mark is a highly descriptive term “a party seeking to establish exclusive rights carries a heavy burden of proof in removing the term from the public domain.” Snowboards-for-sale.com, Inc. v. Name Administration Inc., D2002-1167 (WIPO Feb. 19, 2003).
The bald assertion that “Complainant has expended substantial time and money . . . in creating goodwill in said mark,” (¶ 4) can not carry that burden. See, Amsec Enterprises, D2001-0083. Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning the complainant must show that the public identifies the source of the product rather than the product itself).
Respondent does not here dispute that Complainant has been in business as LODGING KIT COMPANY for many years. But without credible evidence concerning the development of secondary meaning – beyond mere assertions to that effect – that is simply not enough to show secondary meaning sufficient satisfy the requirements of the Policy. See, Deborah Kanani d/b/a Mendocino Weddings v. Ted Kidwell, D2004-0159 (WIPO May 27, 2004) (“While it is undisputed that Complainant has carried out her business under the [descriptive term] for over a decade, no other credible evidence concerning the other tests has been introduced. . . . Notably, Complainant has not submitted evidence of total advertising expenditures, the amount of sales under the mark or most importantly, a consumer survey or evidence of media recognition . . . .”)
Without a showing of secondary meaning, Complainant’s registration on the Supplemental Register does not confer rights in the mark under Policy ¶ 4(a)(i). See, Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA 259275 (Nat. Arb. Forum June 24, 2009) (holding that Supplemental Register registration of EVERYDAY FOOD did not confer rights to Complainant under the Policy)
Complainant opens its argument by noting that “[n]owhere does [Respondent] deny knowledge of Complainant’s domain name dispute.” The gravamen of this challenge is that Respondent did not independently come forward with proof of its legitimate interests in the domain name.
Complainant disregards, however, the shifting burden of proof applicable under the Policy. Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to show it does have such rights or interests.
Complainant is attempting to set aside its own obligation under the Policy to make a prima facie showing before the burden shifts to Respondent. That is to say, nowhere did Complainant make any sort of showing or proof supporting the assertion under Policy ¶ 4(a)(ii). The Complaint simply restates the language of the Policy and points to the argued similarity of the two domain names.
Moreover, Respondent did, in fact, make arguments and submit evidence supporting its rights and legitimate interests in the disputed domain name. (Response, p. 3 ‑ 5; Soffer Decl. ¶¶ 14 ‑ 24) It is not necessary to simply rehash them here.
Complainant further claims that “Respondent clearly knew, or should have known, of Complainant’s prior rights in the disputed domain name.” As established above, however, there exist no such rights in the disputed domain name.
Complainant in this case seems to confuse ownership of a domain name with ownership of trademark rights in domain name. “A domain name can give rise to trademark rights and a trademark can be used as a domain name, but mere registration of one does not automatically bestow one with rights to both.” Missouri Association of RV Parks, FA 1274853 (emphasis added). Similarly, simply naming a business with terms completely descriptive of the goods or services provided can not, on its own, give rise to trademark rights in that term. Without some evidence of secondary meaning – which evidence Complainant has conceded does not exist - the <LODGINGKIT.COM> domain registration is insufficient to even create a “dispute” concerning <LODGINGKITS.COM>. Respondent could have no notice of such a dispute because no such dispute existed.
In the instant case, Respondent is using the words LODGING KIT to indicate the goods being sold at the website in question. Complainant has certainly not invested the words with any sort of trademark value on which Respondent might trade. The value is only in describing the goods offered in a store or at a site, presenting a paradigmatic case of almost automatic legitimate interest. See, The Curvon Corporation v. Lauren Kallareou, The Tack Box, D2001-0565 (WIPO June 21, 2001)(“It is not apparent to the Panel why a dealer’s registration of a domain name which is descriptive of a product he or she sells should be viewed as lacking in legitimacy.”)
Complainant also asserts that “[Respondent’s] statements support a finding that Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain.” Again, Complainant has raised an adequate objection to a non-existent argument. Respondent has made it quite clear that the <LODGINGKITS.COM> domain is being operated for commercial gain. There is nothing inherent in “commercial gain” that automatically defeats “legitimate interest.” See, Advanced Drivers Ed. Prods. and Training, Inc. v. MDNH, Inc., FA 0567039 (Nat. Arb. Forum. Nov. 10, 2005).
Complainant relies exclusively on Policy ¶ 4(b)(iv), attempting to claim that Respondent’s registration and use of the disputed domain name is an attempt to trade on the established goodwill of Complainant’s mark under Policy ¶ 4(a)(iii). As has been discussed to the point of fatigue, Respondent has shown that Complainant does not have and has never had rights in the purely descriptive terms of the mark in question; there is simply no “goodwill” for Respondent to be trading on. Consumers are NOT typing “LODGING KIT” (or “LODGING KITS”) into their browser looking for Complainant’s goods; they are doing so in order to find the goods or services described by those terms, regardless of source.
As discussed in the original Response, Respondent’s registration of the disputed domain name in 2005 predated Complainant’s rights in the mark; Respondent necessarily lacked the requisite intent to register the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See, SPB Software House v. SPB Online Servs., Ltd., FA1067638 (Nat. Arb. Forum Oct. 17, 2007) (“When a domain name is registered before a trademark right is established, the registration of the domain name is not in bad faith under Policy ¶ 4(a)(iii) because the registrant could not have contemplated the complainant’s non-existent right.”).
Complainant’s claims on point are, in sum, that Respondent must have known about Complainant when registering its domain name, and that such knowledge is sufficient to satisfy the bad faith requirement of Policy ¶ 4(a)(iii). Respondent readily agrees that “evidence of bad faith includes actual or constructive notice of a commonly known mark at the time of registration” (Complainant’s Add’l Submission, p. 4, citing US Postal Srvc. v. Consumer Information Organization, FA 0095757 (Nat. Arb. Forum Nov. 27, 2000)) (emphasis added). It would make little sense to impute to a respondent the intent to free ride on another’s trademark without some knowledge of the existence of that trademark. While necessary, however, it a much more controversial proposition to assert that such knowledge alone is sufficient to satisfy Policy ¶¶ 4(a)(iii) and 4(b)(iv).
Complainant has made no showing whatsoever as to any of the elements listed, and Respondent hereby categorically denies those elements. Soffer Decl. ¶¶ 9-12, 21-22. It is notable that the fact that Respondent nowhere presents “LODGING KIT” on its website in a manner similar in nature to Complainant’s use of the term stands in stark contrast to Complainant’s own use of Respondent’s business name and domain name as metatags in Complainant’s own homepage.
The language of Policy ¶ 4(a)(iii) is conjunctive, requiring both registration and use in bad faith. See, Sanitech Corp. v. Paton, FA 0935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant).
Complainant would have to at least plead that Respondent knew or should have known about Complainant’s “well known” mark at the time of registration. Taking Complainant’s assertions at their face value, Complainant has nowhere asserted common-law rights in LODGING KIT at the time of registration of the disputed domain name. The Martin Declaration speaks only to the present status of the alleged mark. “[LODGING KIT] is widely associated with goods and services provided by Complainant.” (Martin Decl. ¶ 4.) (emphasis added). No mention is made anywhere of any such association at the time Respondent registered its domain name.
Respondent registered its domain name and has been using it continuously since February 2005, a full four and a half years before Complainant initiated this UDRP. For that entire length of time, Complainant’s LODGINGKIT.COM and Respondent’s LODGINGKITS.COM have co-existed, selling the same or similar goods. That long delay supports a finding that Complainant, at least, felt that Respondent’s use was made in good faith.
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.
Identical and/or Confusingly Similar Policy ¶ 4(a)(i)
The Panel finds the issues on this element in favor of Respondent.
Respondent contends that Complainant has not succeeded in establishing common law rights in the LODGING KIT mark. Respondent asserts that Complainant had applied for a registration for the LODGING KIT mark on the USPTO Principal Register, but was explicitly denied protection because LODGING KIT was “merely descriptive” and devoid of any secondary meaning. Thus, Respondent argues that this denial by the USPTO is evidence that Complainant cannot claim common law rights in the LODGING KIT mark. Without a showing of secondary meaning, Complainant’s registration on the Supplemental Register does not confer rights in the mark under Policy ¶ 4(a)(i). See, Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA 259275 (Nat. Arb. Forum June 24, 2009) (holding that Supplemental Register registration of EVERYDAY FOOD did not confer rights to Complainant under the Policy).
Complainant contends in its Additional Submission that Complainant registered the domain name September 30, 1998 and has continually used the domain name for sale of its goods and services since that time. In order to successfully assert common law or unregistered trademark right, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Complainant has not made any actual or direct assertion of secondary meaning sufficient to meet Complainant’s burden to do so. See, Deborah Kanani d/b/a Mendocino Weddings v. Ted Kidwell, D2004-0159 (WIPO May 27, 2004) (“While it is undisputed that Complainant has carried out her business under the [descriptive term] for over a decade, no other credible evidence concerning the other tests has been introduced. . . . Notably, Complainant has not submitted evidence of total advertising expenditures, the amount of sales under the mark or most importantly, a consumer survey or evidence of media recognition . . . .”)
The Panel finds that Complainant has failed to establish common law rights in the LODGING KIT mark under Policy ¶ 4(a)(i). See 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 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, Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO April 3, 2001) (“The mark . . . is obviously descriptive of Complainant’s services. Therefore, to establish common law rights, Complainant must prove secondary meaning. . . . Given the extremely weak character of Complainant’s mark, I find that the evidence of secondary meaning is inadequate to prove any enforceable rights in the mark.”) Complainant has failed to plead or prove secondary meaning sufficient to give it rights enforceable under the Policy.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark.
The Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Respondent requests that the Panel rule that Complainant is guilty of an attempt to reverse hijack the subject domain name.
The Panel has considered the request and finds it is without merit and it is therefore denied.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the requested relief be DENIED.
Timothy D. O’Leary,
Dated: November 5, 2009
National Arbitration Forum
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