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Pueblo International v. Pueblo Technology Publishing [2000] GENDND 953 (24 August 2000)

National Arbitration Forum

DECISION

Pueblo International, Inc. v. Pueblo Technology Publishing

Claim Number: FA0007000095252

PARTIES

The Complainant is Pueblo International, Inc., San Juan, Puerto Rico ("Complainant"). The Respondent is Pueblo Technology Publishing, San Francisco, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "PUEBLO.COM," registered with Network Solutions Inc. ("NSI").

PANELIST(s)

The Panelist 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 the panelist in this proceeding.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/18/2000; The Forum received a hard copy of the Complaint on 07/18/2000.

On 07/20/2000, NSI confirmed by e-mail to The Forum that the domain name "PUEBLO.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Dispute Resolution Policy ("Policy").

On 07/21/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/10/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On August 10, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The domain name "PUEBLO.COM" is identical to the service mark of Complainant. It has used the mark in commerce since at least 1955, and has spent annually millions of dollars in advertising its fifty supermarkets and its products.

2. Respondent has no right or legitimate interest in the domain name evidenced by its failure to respond to Complainant’s inquiries. Moreover, Respondent is not making a bonafide offer of goods and services. In addition, Respondent is not commonly known by the domain name, and, in fact, has not established a web site. Finally, Respondent is not making a legitimate noncommercial use of the domain name.

3. Respondent has registered and used the domain name in bad faith evidenced by its failure to respond to Complainant’s inquires, and failure to use the domain name for more than two years.

B. Respondent

1. Respondent does not contend that the domain name and Complainant’s service mark are not identical.

2. Nevertheless, Respondent has registered and used the domain name two years before Complainant registered its service mark with the United States Patent and Trademark Office. Respondent, accordingly, does have a right and legitimate interest in the domain name.

3. Respondent did not register nor is it using the domain name in bad faith. It is using the name in conjunction with its high technology business services.

FINDINGS

1. Respondent registered the domain name "PUEBLO.COM" with NSI on June 29, 1994.

1. Complainant registered the service mark "PUEBLO" on September 3, 1996, a later date, although it has used the mark in commerce since February 28, 1955.
2. Complainant has over fifty supermarkets and also uses its mark for marketing many products, including the nationwide sale of PUEBLO private label food products. It spends annually millions of dollars in advertising, and has over $650 million in sales each year.
3. While Respondent admittedly has not created a web site utilizing the domain name "PUEBLO. COM," it has used the name as an electronic address (i.e., e-mail) in conjunction with its high technology consulting service.

DISCUSSION

Paragraph 4(a) of the ICANN 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.

This is a companion case to Pueblo International, Inc. v. Pueblo On-Line, No. FA0007000095250, wherein it was held that Respondent’s domain name of "PUEBLO.ORG" was not identical or confusingly similar to Complainant’s service mark. This was because Respondent therein had utilized the top-level domain of "org," an inappropriate domain name for an enterprise such as Complainant’s by custom and usage, but an appropriate domain name for the Respondent.

Here, however, the domain name in issue is "PUEBLO.COM," and it is fully appropriate for a commercial enterprise such as Complainant’s.

Accordingly, it is determined that Respondent’s domain name and the Complainant’s service mark are identical.

Section 4c of the Policy sets forth the certain circumstances, in particular but without limitation, which will demonstrate a Respondent’s rights or legitimate interests to the domain name in issue, as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant argues that the domain name has not been used by Respondent in connection with an offering of goods or services; that it has tried to communicate with Respondent by e-mail and facsimile, but there has been no response; that Respondent is not listed on the Internet nor in the telephone directory, and, thus, there has been no commercial use of the domain name for over two years.

The difficulty with Complainant’s position is that the policies applied to the assignment of domain names by NSI do not correspond with the established principles of trademark law. (See, Delta and Matsuura, Law of the Internet (Updated 2000), §5.04(B), p. 5-56.) Thus, while §45 of the Lanham Act (15 U.S.C. 1127) provides that non-use of a mark for three consecutive years shall be prima facie evidence of abandonment, the Panelist can find no comparable provision in the Policy.

The Panelist also cannot find a requirement of a web site or a yellow page telephone listing in determining whether a Respondent has been commonly known by the domain name in issue.

By virtue of Respondent’s registration of its domain name prior to Complainant’s registration of its service mark, and by Respondent’s utilization of the domain name as an e-mail address, although not as a web site, the Panelist has concluded that Respondent does have a right and a legitimate interest in the domain name. (See, The Network Network v. CBS, Inc. (U.S.D.C. Central. Dist. California 2000) 54 U.S.P.Q.2d 1150.)

The Panelist has considered the circumstances, which, for purposes of Paragraph 4(a)(iii) of the Policy, would be evidence of the registration and use of the domain name in bad faith as follows:

(i) Circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

Again, as in the companion case, there is no evidence supporting this factor. To the contrary, Respondent asserts that it has no intention whatever of selling the domain name in issue.

(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.

Again, as in the companion case, there is no evidence supporting this factor. In any event, there is no evidence of a pattern of such conduct.

(iii) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet uses to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location.

Again, as in the companion case, there is no evidence supporting this factor. This conclusion is enhanced by the completely different services and/or products sold between Complainant and Respondent.

In the companion case and here, Complainant has cited authorities to the effect that non-use of a domain name over a period of time may establish bad faith.

The difficulty with Complainant’s cited authorities is that in each of them the Respondent defaulted, allowing the Panel to draw the adverse inference against the Respondent therein. Respondent here has not defaulted, but, to the contrary, has defended its registration and use of the domain name at issue.

In any event, the Panelist finds that Respondent has not registered or used the domain name in bad faith. It simply wants to continue using it as its e-mail address and does not want to sell it. In the last analysis, it is first come, first served.

DECISION

The claim of Complainant Pueblo International, Inc. against Pueblo Technology Publishing seeking to have the domain name "PUEBLO.COM" transferred to it, be and the same, is hereby denied.

Judge Irving H. Perluss (Retired)

Dated: August 24, 2000