WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fleming Sales Company, Inc. v. David Marketing Group
Case No. D2006-1174
1.
The Parties
The Complainant is Fleming Sales Company, Inc. of Chicago, Illinois,
United States of America, represented by Cook, Alex, McFarron, Manzo, Cummings &
Mehler, Ltd., United States of America.
The Respondent is David Marketing Group of Berea, Ohio, United States of America.
2.
The Domain Name and Registrar
The disputed domain name <patiohearth.com> is registered with
Network Solutions, LLC.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on September 12, 2006. On September 13, 2006, the Center transmitted
by email to Network Solutions, LLC a request for registrar verification in connection
with the domain name at issue. On September 14, 2006, Network Solutions, LLC
transmitted by email to the Center its verification response confirming that the
Respondent is listed as the registrant and providing the contact details for the
administrative, billing, and technical contact. The Center verified that the Complaint
satisfied the formal requirements of the Uniform Domain Name Dispute Resolution
Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy
(the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
Respondent of the Complaint, and the proceedings commenced on September 22, 2006.
In accordance with the Rules, paragraph 5(a), the due date for Response was
October 12, 2006. The Response was filed with the Center on October 3, 2006.
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The Center appointed Mr. Kevin C. Trock as the Sole Panelist in this matter on
October 23, 2006. The Panel finds that it was properly constituted. The Panel has
submitted the Statement of Acceptance and Declaration of Impartiality and
Independence, as required by the Center to ensure compliance with the Rules,
paragraph 7.
4.
Factual Background
The domain name at issue is <patiohearth.com>. Complainant is the owner of U.S.
Trademark Registration No. 2,289,163 for the mark PATIO HEARTH, for use with
portable fireplaces for burning wood and charcoal.
Respondent is a reseller of Complainant’s PATIO HEARTH brand goods, including
portable fireplaces and other related items.
The Complainant seeks transfer of the disputed domain name.
5.
Parties’ Contentions
A.
Complainant
Complainant alleges that it has used the mark PATIO HEARTH on and in connection
with portable fireplaces for burning wood and charcoal since at least as early as
November 15, 1996. Complainant claims that it has not authorized Respondent to use
Complainant’s registered trademark, either as a name of Respondent’s website or
business, or in any related domain name. Complainant alleges that Respondent’s use of
Complainant’s trademark began after Respondent started selling Complainant’s PATIO
HEARTH brand goods as well as the goods of other competitors of Complainant.
Complainant alleges that Respondent has used and continues to use the disputed
domain name to sell competing goods side by side with Complainant’s PATIO
HEARTH brand goods. Complainant also alleges that Respondent has never posted
any disclaimer on its website that would distinguish itself from Complainant.
B.
Respondent
Respondent is a reseller of Complainant’s PATIO HEARTH brand goods, including
portable fireplaces and other related items. Respondent purchases Complainant’s
PATIO HEARTH brand goods from Arctic Products, Inc. Arctic is a licensee and a
distributor of Complainant’s products. Respondent alleges that the disputed domain
name was purchased to sell patio and hearth goods and accessories. Respondent also
alleges that the Complainant’s licensee, Arctic, promoted its website by providing a
link to it as an “Authorized Dealer”.
Respondent further claims that the words “patio” and “hearth” are commonly used as
descriptive terms or as business names by many retailers in the industry and that
various combinations of these terms are quite common. Respondent alleges that the
words “patio” and “hearth” are descriptive terms and are therefore not protectable.
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6.
Discussion and Findings
In order to prevail, the Complainant must prove the following three elements:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights; and (ii) Respondent has no rights or
legitimate interests in the domain name; and (iii) Respondent has registered the domain
name and is using it in bad faith. (Policy, paragraph 4(a)).
A.
Identical or Confusingly Similar
Complainant is the owner of U.S. trademark registration No. 2,289,163 for the mark
PATIO HEARTH, for use with portable fireplaces for burning wood and charcoal, not
including gas-burning models. Complainant has used the PATIO HEARTH mark on
and in connection with such goods since at least as early as November 15, 1996.
Domain names that are identical to a complainant’s registered trademark have been
held to be confusingly similar thereto. See Nokia Corp. v. Nokia India private Ltd.,
WIPO Case No. D2006-0080 (March 19, 2006); Escher-Grad Tech, Inc. v. Tina
Ujevica, WIPO Case No. D2005-0956 (November 14, 2005)(complainant’s trademark
ESCHER GRAD found identical to domain name <eschergad.com>).
Respondent however, alleges that the words “patio” and “hearth” are commonly used as
descriptive terms or as business names by many retailers in the industry and that
various combinations of these terms are quite common. Respondent claims therefore
that the words “patio” and “hearth” are descriptive terms and are not protectable.
A registered trademark is presumptive evidence that the Complainant has rights in the
relevant trademark. Complainant is the owner of U.S. trademark registration
No. 2,289,163 for the mark PATIO HEARTH, for use with portable fireplaces for
burning wood and charcoal, not including gas-burning models. While Respondent’s
argument that the terms “patio” and “hearth” are descriptive when used with portable
fireplaces may have some merit, this is not the forum to answer that question. That
issue would be more properly addressed in a cancellation proceeding before the U.S.
Patent & Trademark Office.
The disputed domain name wholly incorporates and is identical to the Complainant’s
trademark, it being well established that the “.com” particle is disregarded for the
purpose of this comparison. Accordingly, the Panel finds that the domain name
<patiohearth.com> is identical to the registered trademark PATIO HEARTH in which
Complainant has rights.
B.
Rights or Legitimate Interests
This case raises the question of a whether reseller of trademarked goods can use the
trademark at issue in its domain name. Previous panels have considered the issue of
whether an authorized sales or service agent of trademarked goods can use the
trademark at issue in its domain name. In Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903 (November 6, 2001), the Panel surveyed the cases in this area
and articulated a standard for determining whether such activities constitute bona fide
offering of goods and services.
Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to
commencement of the dispute, Respondent used the domain name or a name
corresponding to the domain name in connection with the bona fide offering of goods
or services. Under the Oki Data test, to be bona fide, the offering must meet the
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following requirements:
(1)
Respondent must actually be offering the goods or services at issue. E.g., World
Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case
No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable
preparations to use the domain name in connection with a bona fide offering).
(2)
Respondent must use the site to sell only the trademarked goods; otherwise, it
could be using the trademark to bait Internet users and then switch them to other
goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774
(February 26, 2001) (use of Nikon-related domain names to sell Nikon and
competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case
No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
(3)
The site must accurately disclose the registrant’s relationship with the trademark
owner; it may not, for example, falsely suggest that it is the trademark owner, or
that the website is the official site, if, in fact, it is only one of many sales agents.
E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211
(April 25, 2001) (no bona fide offering where website’s use of Complainant’s
logo, and lack of any disclaimer, suggested that website was the official Curious
George website); R.T. Quaife Engineering v. Luton, WIPO Case
No. D2000-1201 (November 14, 2000) (no bona fide offering because domain
name <quaifeusa.com> improperly suggested that the reflected site was the
official U.S. website for Quaife, an English company; moreover, respondent’s
deceptive communications with inquiring consumers supported a finding of no
legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case
No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested
that it was the manufacturer of complainant’s products).
(4)
The Respondent must not try to corner the market in all domain names, thus
depriving the trademark owner of reflecting its own mark in a domain name.
Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525
(January 29, 2001) (“a single distributor is extremely unlikely to have a legitimate
interest in precluding others from using numerous variants on a mark”).
There is no dispute that the Respondent is a reseller of Complainants genuine PATIO
HEARTH brand goods. But the Respondent also sells the goods of Complainant’s
competitors. The record shows that the Respondent is not using the disputed domain
name to sell only Complainant’s PATIO HEARH brand portable fireplaces and related
goods. Rather, the record shows that the Respondent is using the disputed domain
name to sell competing goods through the website in conjunction with Complainant’s
PATIO HEARTH brand goods. Moreover, Respondent has never posted any
disclaimer that discloses its true relationship with or distinguishes itself from
Complainant. Thus, based on the record before the Panel, the Respondent has met
element 1 of the Oki Data test, but has not met elements 2 and 3. Accordingly, the
Panel finds that the Respondent has not made a bona fide offering of goods and services
and that the Respondent has no right or legitimate interest in the disputed domain name.
C.
Registered and Used in Bad Faith
Respondent is a reseller of the Complaint’s products. Accordingly, the Panel considers
it unlikely that the Respondent was unaware of the Complainant’s products and mark
when it acquired the disputed domain name. Because the disputed domain name is
identical to the Complainant’s registered trademark, the likelihood of confusion
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between the disputed domain name and the Complainant’s mark should have been
evident to the Respondent at the time.
The evidence before the Panel demonstrates that the disputed domain name is being
used by the Respondent to sell the Complainant’s products and those of its competitors.
The website at the disputed domain name includes a prominent reference to the name of
the Respondent, and immediately below that the words “patio” and “hearth” are also
prominently displayed. No disclaimer or statement regarding the Respondent’s
relationship (or lack thereof) with the Complainant is visible on the site. In the Panel’s
view it is disingenuous of the Respondent to argue that the site is being used in a
generic sense to sell “patio” and “hearth” related goods and accessories when the
Respondent is also using it to sell the PATIO HEARTH branded products of the
Complainant and those of its competitors; free riding in effect on the good will of the
Complainant’s mark. Such conduct is not consistent with good faith and demonstrates
a bad faith intent to trade off the good will of the Complainant’s mark to sell its
competitors products.
Under these circumstances, the Panel finds that the use of the domain name
<patiohearth.com> to sell the Complainant’s products and those of its competitors
constitutes an improper use of Complainant’s mark to attract internet users to the
Respondent’s site for commercial gain by creating a likelihood of confusion as to
source, sponsorship, affiliation or endorsement of the site. The Panel therefore finds
that the disputed domain name was registered and is being used in bad faith.
7.
Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and
15 of the Rules, the Panel orders that the domain name <patiohearth.com> be
transferred to the Complainant.
Kevin C. Trock
Sole Panelist
Dated: November 8, 2006
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