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The Curvon Corporation v. Lauren Kallareou, The Tack Box [2001] GENDND 1205 (21 June 2001)

WIPO Arbitration and Mediation Center

The Complainant is The Curvon Corporation, a corporation of New Jersey, U.S.A., having a place of business at 34 Apple Street, Tinton Falls, New Jersey, U.S.A.

The Respondent is Lauren Kallareou, The Tack Box. According to the Complaint, Lauren Kallareou was located at 2 Windsor Road, Montvale, New Jersey and now is in Russia. Her mother Marilyn Kallareou, is the sole owner of The Tack Box at 92 Main Street, Tappan, New York. She is treated as spokesperson for the registrant of the domain name which is in dispute in this case.

The domain name in dispute is <bakerblanket.com>.

The Registrar of the disputed domain name is Network Solutions, Inc., of 505 Huntmar Drive, Herndon, Virginia, U.S.A.

The Complaint was received in hard copy on April 19, 2001, by the WIPO Arbitration and Mediation Center (the "Center"). An electronic copy followed on April 25, 2001. The Complaint indicated that it was being submitted pursuant to the Uniform Policy for Domain Name Dispute Resolution (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").

On April 24, 2001, the Center requested that Network Solutions, Inc., verify that a copy of the Complaint had been sent to it, that it is the Registrar of the disputed domain name, and that Respondent is the current registrant of the disputed domain name. Network Solutions, Inc., responded on April 27, 2001, confirming that it is the Registrar for an active registration of the disputed domain name and that Network Solutions’ Service Agreement 5.0 is in effect. The Registrar identified the domain name registrant contact as "Kallareou (BAKERBLANKER-DOM), 2 Windsor Road, Montvale, New Jersey" The administrative, technical, and billing contact is identified as "Kallareou, Lauren, The Tack Box, 92 Main Street, Tappan, N.Y."

After a formalities check was made with respect to the Complaint, the Center on April 30, 2001, sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent. This notice specified that the last day for sending Respondent’s Response would be May 19, 2001.

On May 22, 2001, the Center, not having received a Response, issued a Notification of Respondent Default. Thereafter, William L. Mathis was invited by the Center to serve as sole Panelist for this case. He accepted and provided to the Center his Declaration of Impartiality and Independence. On June 7, 2001, the parties were notified of the appointment of William L. Mathis and the case file was forwarded to him for a decision of the case.

The relief sought by Complainant in this Administrative Proceeding is transfer of the disputed domain name to Complainant.

Complainant is the owner of United States Trademark Registration No. 1,932,664, of November 7, 1995. This registration relates to a trademark for goods described as "horse blankets." The mark of the registration is a complex composite of design matter and word matter. The Complaint describes it as a "stylistic trademark (the ‘Mark’) consisting of a ‘Figure of a Horse with a Blanket’ prominently displaying the words ‘5/A BakerBlanket’ twice’." A web page of the United States Patent & Trademark Office web site provides a more extensive recitation of the word matter in the mark of Reg. No. 1,932,664:

BEWARE OF IMITATIONS THE ORIGINAL 5/A BAKER BLANKET HAS BEEN IMITATED INFERIOR QUALITIES WHICH WILL NOT WEAR. LOOK FOR THIS HORSE BRANDED INSIDE NONE GENUINE WITHOUT IT. TRIPLE WEAVE CONSTRUCTION 100% ACRYLIC FABRIC THIS IS ORIGINAL BLANKET. BY CURVON THIS BLANKET IS WOVEN WITH A GREAT NUMBER OF WARP THREADS. IT IS THE STRONGEST HORSE BLANKET MADE, AND WILL OUTWEAR MORE THAN FIVE BLANKETS OF ANY OTHER MAKE. NONE GENUINE WITHOUT THIS HORSE.

According to uncontested allegations in the Complaint, the "Respondent is a dealer of tack room supplies used for riding horses who has sold blankets on behalf of the Complainant." Para. 12(b).

The record does not contain any indication that the disputed domain name has been used to identify an operating web site.

Complainant has requested Respondent to transfer to Complainant the domain name in issue here. On one occasion, Complainant offered a "$500.00 merchandise credit in your account upon completion of the transfer." Complaint, Annex 5. This offer was not accepted. Nor has Respondent acted to transfer the domain name to Complainant.

The Complainant contends that it owns the trademark of U.S. Registration 1,932,664 and that the disputed domain name <bakerblanket.com> is confusingly similar to such trademark.

The Complainant contends further that Respondent has no rights or legitimate interests in respect to the domain name and that the domain name was registered and is being used in bad faith.

Since the Respondent failed to submit a Response to the Complaint, this dispute has proceeded to a decision in the absence of contentions made on behalf of the Respondent.

It is important to be clear about what is being compared with what in making a determination on whether a particular domain name is confusingly similar to a trademark. The domain name here is, of course, <bakerblanket.com>. But, what exactly constitutes Complainant’s trademark?

The mark of U.S. Registration No. 1,932,664 is the whole of the composite of design matter and word matter which is shown in the registration document. The registration stands under the law as evidence of Complainant’s ownership of the composite as a whole, not individual components of the mark. Two appearances of "baker blanket" in the extensive word matter which makes up part of the mark as shown does not justify a conclusion that Complainant has ownership of "baker blanket" as such. Complainant’s assertion that "[b]ased on knowledge and belief, no other trademark in the United States employs the combination of ‘baker’ and ‘blanket’" (Para. 12(b)of the Complaint) is without legal significance with respect to the issue of whether Complainant owns trademark rights in "baker blanket."

The Panel has considered also the allegations that Complainant has used the mark shown in Registration No. 1,932,664 since July 30, 1990, and that this composite mark has been used both "for the labeling and advertising" of Complainant’s horse blankets and by licensed third parties in connection with sports clothing and equipment. Standing alone, these bare allegations of use of the composite are insufficient to establish Complainant’s ownership of trademark rights to the component words "baker blanket."

Since no other evidence of ownership by Complainant of trademark rights has been presented, the Panel finds that the elaborate composite mark of Registration No. 1,932,664 is the only mark actually shown by the Complaint to be the owned by Complainant. After comparing the disputed domain name with the whole of the registered composite mark, the Panel also finds that the two are not confusingly similar. The mere appearances of "baker blanket" among the dozens of words which are included in the composite mark along with multiple design features does not justify a contrary conclusion.

In accordance with Section 4.a.(ii) of the Policy, the Complainant has an obligation to prove that the Respondent has no rights or legitimate interests in respect of the domain name.

Since it has not been established that Complainant owns trademark rights in "baker blanket", the Panel must view the rights and interests of Respondent in the context of an understanding that "baker blanket" could be a descriptive term pertaining to a type of horse blanket. The text matter in Complainant’s mark itself is not believed to be inconsistent with such an understanding.

Further, the Complainant acknowledges that Respondent as a dealer for tack room supplies, has sold blankets on behalf of Complainant. 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.

Accordingly, the Panel finds that Complainant has not carried its burden to prove Respondent’s lack of rights or legitimate interests in the disputed domain name.

Paragraph 12(d) of the Complaint contains a package of summary charges which apparently are intended to suggest bad faith on the part of Respondent. However, the Panel cannot accept them as sufficient to carry Complainant’s burden to prove that Respondent’s domain name has been registered and is being used in bad faith.

The Complaint does not explain either why Complainant considers "BakerBlanket" to be a key component of its registered mark or why Respondent’s role as "a dealer for the Complainant’s labeled products" should have made Respondent aware of a Key component" status for "BakerBlanket." Moreover, the Complaint does not explain what effect "key component" status would have either with respect to Complainant’s ownership rights in "BakerBlanket" or with respect to the issue of confusing similarity between <bakerblanket.com> and the composite trademark which forms the subject matter of Complainant’s Registration No. 1,932,664.

The remainder of Complaint Paragraph 12(d) is a single long sentence that insinuates wrongdoing on the part of Respondent. However, it does not provide clear evidence of facts on which the Panel might reasonably rely.

Paragraph 12(e) of the Complaint is similarly deficient as evidence in support of Complainant’s contention that Respondent has registered and is using the disputed domain name in bad faith. It merely says:

Respondent’s use of the domain name, "bakerblanket", prevents the Complainant from employing the site to create a web page which would advertise the availability of the Complainant’s products from each of its dealers throughout the United States by showing their locations, telephone and fax numbers, as well as e-mail addresses, including those of the Respondent.

Complainant has not shown that it has a desire to create such a web page or that no third party operates a web page accessible through a domain name substantially the same as <bakerblanket.com>. Hence, there is little basis for an assumption that Respondent’s actions have been directed against Complainant.

The Panel finds, therefore, that the evidence does not justify a conclusion that the disputed domain name was registered and is being used in bad faith.

It is the decision of the Panel that Complainant has not carried its burden of proof on the issues of (1) confusing similarity, (2) Respondent’s lack of rights or legitimate interests, and (3) Respondent’s bad faith registration and use of the disputed domain name.

Accordingly, the Panel does NOT order that the domain name <bakerblanket.com> be transferred to Complainant.

William L. Mathis
Sole Panelist

June 21, 2001