P. O. Box 50191
Minneapolis, Minnesota 55405 USA
NETGROCER, INC.
1112 Corporate Road
North Brunswick, N.J. 08902
COMPLAINANT,
vs.
ANCHOR
7131 West Yarmouth Ct.
West Bloomfield, MI 48322
RESPONDENT.
ADMINISTRATIVE
PANEL
DECISION
No.:
FA0002000094207
Complainant is NetGrocer, Inc., located at 1112 Corporate
Road, North Brunswick, N.J. 08902 ("Complainant"). Respondent
is Anchor, located at 7131 West Yarmouth Ct., West Bloomfield, MI
48322 ("Respondent").
-
The Domain Name(s) and Registrar(s)
The domain name at issue is <netgrocer.org>. The
registrar is Register.com, Inc. (the "Registrar"), 575 Eighth
Ave., 11th Floor, New York, NY 10018.
-
Procedural History
The National Arbitration Forum (the "Forum")
received the complaint on February 25, 2000. The Forum verified that
the complaint satisfies the formal requirements of the ICANN Uniform
Domain Name Dispute Resolution Policy (the
"Policy"), the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),
and the Supplemental
Rules for Uniform Domain Name Dispute Resolution
Policy (the "Supplemental Rules"). The Forum thereafter sent
the Respondent a notification of the administrative proceeding together
with copies of the complaint. This notification
was sent by the methods
required under paragraph 2(a) of the Rules. The formal date of the commencement
of
this administrative proceeding is February 29, 2000.
On March 7, 2000, the Registrar verified to the Forum
that:
- The domain name at issue was registered with Register.com; and
- That the registration for the disputed domain name was on "Hold"
status.
Respondent did not submit a response to the complaint
within twenty (20) days as required by Rule 5(a). The Administrative
Panel issues its decision below based upon the complaint, the filed
documents, the Policy, the Rules, and the
Supplemental Rules without
the benefit of any response from Respondent.
Complainant first used the NETGROCER mark in commerce
on May 4, 1997. Complainant is currently the owner of the registered
United States service mark NETGROCER (Registration No. 2,217,548)
which was issued on January 12, 1999
for computerized on-line ordering
services featuring consumer goods, namely groceries, in class 42 (U.S.
CLS.100 and 101). Complainant also has two pending trademark applications
for NetGrocer (App. Nos. 75/508,254 and
75/480,948).
In addition, Complainant registered the domain name
<netgrocer.com> in 1995 and has widely used this domain name
on the Internet.
Respondent registered the domain name <netgrocer.org>
on December 31,1999. No evidence was presented suggesting
that there
is an active web site associated with the <netgrocer.org> domain
name.
-
Parties Contentions
- Complainant contends that Registrants domain name <netgrocer.org>
is identical to or substantially similar
to Complainants NETGROCER
service mark.
- Complainant contends that Respondent has no rights or legitimate
interest in the disputed domain name.
- Complainant contends that Respondent registered and is using the
domain names in bad faith.
- Respondent has not contested that the domain name is identical
to or confusingly similar to Complainants service
mark.
- Respondent has not contested that it has no rights or legitimate
interest in the disputed domain name.
- Respondent has not contested that it has acted in bad faith in
registering and using the domain name.
- Discussion and Findings
To obtain relief under paragraph 4(a) of the Policy, the
Complainant must prove each of the following:
- That the domain name registered by the Respondent is identical
or confusingly similar to a trademark or service mark
in which
the Complainant has rights; and
- That the Respondent has no rights or legitimate interest in
the domain name; and
- That the domain name has been registered and used in bad faith.
- Similarity Between Registrants Domain Name and Complainants
Service Mark.
In this case, it is clear that the domain name registered
by Respondent is identical to the registered service mark owned
by
Complainant. The distinction between .org and .com is not significant
in determining similarity. The
panel finds that the domain name is
identical to and confusingly similar to Complainants registered
service mark.
-
Respondents Rights or Legitimate Interest
in the Domain Name.
Under paragraph 4(c) of the Policy, evidence of a registrants
rights or legitimate interest in the domain name includes:
- Demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services prior
to the dispute;
- An indication that the registrant has been commonly known by
the domain name even if it has acquired no trademark
rights; or
- Legitimate noncommercial or fair use of the domain name without
intent to divert consumers or to tarnish the trademark.
Respondent has made no showing with respect to any of
the above factors. Similarly, Complainant has asserted, without providing
any affirmative evidence, that Respondent has no rights or legitimate
interest in the domain name. Despite
the limited evidence, the Panel
believes that it is reasonable to infer that Respondent has no rights
or legitimate
interest in the domain name which is essentially identical
to Complainants registered service mark, NETGROCER.
- Respondents Bad Faith Registration and Use of the Domain
Name.
Under paragraph 4(b) of the Policy, evidence of Respondents
bad faith registration and use includes:
- Circumstances indicating the domain name was registered for
the purpose of resale to the trademark owner or competitor
for
profit;
- A pattern of conduct showing an attempt to prevent others from
obtaining a domain name corresponding to their trademarks;
- Registration of the domain name for the purpose of disrupting
the business of competitor; or
- Using the domain name to attract, for commercial gain, Internet
users to Respondents web site by creating a
likelihood of
confusion with the trademark owners mark.
The Panel finds that the Complainant has not met its burden
of proof on the issue of bad faith registration and use. There
is no
evidence of an attempt by Registrant to sell the domain name for profit.
There is no evidence that Respondent
engages in a pattern of registering
the trademarks of others as domain names. There is no evidence that
Respondent
registered the domain name for the purpose of disrupting
the business of a competitor. Indeed, there is no evidence of
any use,
much less bad faith use, of the contested domain name. Finally, the
record contains insufficient evidence
to establish that Respondent intentionally
attempted to create a likelihood of confusion with Complainants
mark which, after all, was not registered with the U.S. PTO until after
Respondent had registered the domain name in question.
Accordingly, the Panel finds that Complainant has failed
to meet its burden of proof on a prima facie issue: Registrants
bad faith in the registration and use of the contested domain
name. Accordingly, under the standards applicable to this proceeding,
the Panel
concludes that Complainant is not entitled to relief on the
record presented.
We find in favor of Respondent and deny Complainants
request for relief under paragraph 4 (i) of the Policy.
Date: April 7, 2000 Nelson A. Diaz
Presiding Panelist
AMENDMENT TO ADMINISTRATIVE
PANEL DECISION
No.: FA0002000094207
THE NATIONAL ARBITRATION FORUM
P.O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA
NETGROCER, INC.
1112 Corporate Road
North Brunswick, N.J. 08902
COMPLAINANT,
vs.
ANCHOR
7131 West Yarmouth Ct.
West Bloomfield, MI 48322
RESPONDENT.
File No.: FA0002000094207
This is an Amendment to the Administrative Panel Decision
with regard to the domain name dispute between the parties. The
last
sentence in the second to last paragraph in 6. Discussion and Findings
above should read as follows: "Finally, the record contains insufficient
evidence to establish that Respondent
intentionally attempted to create
a likelihood of confusion with Complainants mark by registering
the
domain name <netgrocer.org>."
The remainder of 6. Discussion and Findings remains
unchanged.
Having considered the above revision, the Panel reiterates
its finding that Complainant has not met its burden of proof
on the
issue of bad faith registration and use of the contested domain name.
Accordingly, the Panel reaffirms
its decision in favor of Respondent
and denies Complainants request for relief under paragraph 4(i)
of
the Policy.
Date: April 11, 2000Nelson A. Diaz
Presiding Panelist