Generic Top Level Domain Name (gTLD) Decisions

The Complainant is GroupHug Productions, Inc. DBA Healthy Legs and Feet Too, Portland, OR, USA ("Complainant") represented by Laura J. Walker, of Cable Huston Benedict Haagensen & Lloyd LLP. The Respondent i s Overstreet Health Center, Bellevue, WA, USA ("Respondent") represented by Lou Barten, of Inside-e.com.

The domain name at issue is supportsock.com, registered with Network Solutions, Inc..

The undersigned each certify 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 a panelist in this proceeding.

R. Glen Ayers, Earl Gustafson and John A. Bender acted as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 13, 2000; the Forum received a hard copy of the Complaint on December 19, 2000.

On December 27, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name supportsock.com is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolut ion Policy (the "Policy").

On December 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 18, 2001 by which Respondent could file a Response to the Complaint, was tr ansmitted 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 postmaster@supportsock.com by e-mail.

On January 30, 2001, pursuant to Complainant’s request to have the dispute decided by a Three Member Panel, the Forum appointed R. Glen Ayers, Earl Gustafson and John A. Bender as Panelists.

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

A. Complainant

In its complaint, the Complainant asserts that it "uses the mark ‘supportsocks.com’ in connection with the sale of supportsocks, supportstockings, in a variety of socks and footwear products online." The Complainant also maintains a web page using that same domain name "supportsocks.com". The web page allows access to an online catalog and ordering service for this type of merchandise.

Complainant admits that this domain name, "supportsocks.com", is not registered with the Patent and Trademark Office of the United States. Complainant asserts that it has acquired common law trademark rights by using this name in inters tate commerce since October 29, 1999. Complainant goes on to assert that, by virtue of the existence of its alleged common law mark, Respondent’s conduct in registering the domain name "supportsock.com" constitutes the registration of a "confusingly simil ar" domain name, as prohibited by the ICANN Policies.

Complainant also goes on to assert that it registered the domain name "supportsocks.com" on December 11, 1998, and that Respondent did not register the domain name "supportsock.com" until October 16, 2000. Complainant assets that this r egistration misleads or diverts customers from Complaint’s web site to the web site of Respondent.

Complainant asserts that Respondent’s use is obviously in bad faith and is an attempt to attract users from Complainant’s web site for the commercial benefit of Respondent.

In support of its assertions, Complainant has attached a number of exhibits reflecting the use by Complainant and by Respondent of the competing domain names. Complainant attaches a cease and desist letter from counsel for Complainant a ddressed to Respondent alerting Respondent, to the concerns of Complainant.

Also attached as Exhibit "7" is an "Affidavit" executed by Complainant’s Vice President.

At no point in that Affidavit is there any evidence presented concerning the existence of a common law trademark.

B. Respondent

Respondent’s first point is that the common law trademark rights asserted by Complainant are meritless. Respondent has referred to and attached "Examination Guide No. 2-99", an official publication of the United States Patent and Tradem ark Office, to support Respondent’s contention that a term like "supportsocks.com" is so generic that it could have no trademark significance.

Respondent goes on to assert that she has appropriate rights and interests in the disputed domain name having properly registered the domain name. Respondent, a podiatric physician and surgeon, has apparently registered the domain name and established a web site for purposes of selling support hosiery. Of course, this business is identical to the business established by Complainant.

Respondent asserts that she has not acted in bad faith because the terms support sock and support socks are generic names for support hosiery. Therefore, any action of Respondent in utilizing such a generic term cannot be said to reflec t an intent "to misleadingly divert customers...and obtain commercial gain."

Respondent goes on to note, and support with exhibits, an assertion that Complainant has engaged in a pattern of registering the names of actual trademarked items. Respondent asserts that the Complainant has, for example, registered as a domain name "swissarmyonline.com".

The Panel finds, and the finding is not disputed, that there is no registered trademark held by Complainant in the name "supportsocks.com". Further, the evidence is clear that there is no common law trademark held by or owned by Com plainant. Respondent is correct in asserting that such generic terms could not ordinarily, without much more evidence, be considered to be common law trademarks. The only evidence offered is the assertion made in the Complaint signed by counsel. Otherwise , the claim of common law trademark is unsupported by any evidence or affidavit.

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 Rul es 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:

The law governing common law trademarks is well established in the United States. Certain names or terms, by extensive use, become common law trademarks and the user, holder or owner is entitled to trademark protection. This ext ensive use creates a secondary meaning for the word or term. See e.g., Mick Jagger v. Denny Hammerton, FA 95261, (Nat. Arb. Forum Sept. 11, 2000), and cases cited therein.

Given that the Complainant must establish under ICANN Policy 4(a)(i) that the "domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights", Complainant’s case has failed.

Apparently there are cases holding that Complainant might be able to demonstrate that its domain name is so distinctive that the domain name itself has acquired a secondary meaning which might or might not rise to the level of common la w trademark. See Lowestfare.com LLA v. US Tours and Travel, Inc., AF 0284(eResolution, Sept. 9, 2000). At the very least though, in such circumstances, the Complainant must demonstrate that it has a bona fide basis for making t he assertion of some form of common law trademark or secondary meaning. See Smart Design, LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000). Complainant has not met even this burden in its submission.

For other cases in point, See PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) which finds that "pet" and "warehouse" are generic and cannot be said to be either trade or service marks; the case also holds that the burden is on the party making the claim to show distinctiveness or secondary meaning.

Put another way, the panel must find the Complainant uses "supportsocks.com" not merely as a domain name to identify its web site but as a source identifier. See In re Eilberg 49 USPQ 2d 1955 (TTAB 1998), which affi rms a refusal to register a mark on the basis that the mark must separately identify goods and services and cannot merely indicate the location on the Internet of the mark applicant’s web site.

Because the Complainant has no rights in a mark, the Complaint must be dismissed. See Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000), holding because the Complainant had not clearly demo nstrated proprietary rights in the name, that the Complaint had to be dismissed.

It is not necessary to make additional findings under ICANN Policy, Paragraph 4(a)(ii) and (iii). Because Complainant has no mark, an inquiry into the rights or legitimate interest of the Respondent and in inquiry into Responden t’s bad faith is not necessary.

Certainly, Respondent has the right to use generic and descriptive terms like "supportsock" in order to describe the product it sells. See General Machine Products Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan . 26, 2000). Further because the Complainant’s alleged mark is not a protected mark, Complainant may not prevent Respondent from using a similar domain name. Such use cannot be said to be in bad faith. See Gold Masters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum, Aug. 21, 2000). See also Eddy’s (Nottingham) Ltd. v Smith, D2000-0789 (WIPO Sept. 7, 2000).

The domain shall not be transferred to Complainant.