Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Aquarius Enterprises, Inc., Austin, TX, USA ("Complainant") represented by Mark I. Feldman, Esq., of Piper Marbury Rudnick & Wolfe. The Respondent is Jeff Busche Pet Expo Online, Huntington Beach, CA, USA ("Respondent").

The domain name at issue is "PETEXPO.COM", registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Tyrus R. Atkinson, Jr. as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 2, 2001; the Forum received a hard copy of the Complaint on February 5, 2001.

On February 12, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "PETEXPO.COM" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 Resolution Policy (the "Policy").

On February 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 2001 by which Respondent could file a Response to the Complaint, was transmitted 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@PETEXPO.COM by e-mail.

A timely response was received and determined to be complete on March 13, 2001.

Complainant’s Additional Submission was received on March 21, 2001. On March 22, 2001, Respondent’s Additional Response was received.

On March 22, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

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

A. Complainant

Complainant has continuously sold pet supplies under the trade name and trademark PET EXPO, since 1987.

Through continuous use of the mark, Complainant established common law rights in the mark, PET EXPO.

Complainant has promoted the mark by displaying the mark in its store, on business cards, on letterheads, on shipping materials, on print advertisements, and on its website, PET-EXPO.COM. More than $250,000.00 has been expended by Complainant in promoting PET EXPO.

In 1988, Complainant obtained a trademark registrations in the State of Texas for "PET EXPO WHERE YOUR PET WOULD SHOP & DESIGN", as Registration Number 48484.

PET EXPO is an inherently distinctive mark.

Complainant has built substantial goodwill and brand recognition in this mark.

Actual confusion has occurred between Complainant’s PET-EXPO.COM and Respondent’s PETEXPO.COM. The domain names, for all practical purposes, are identical.

Respondent has no rights or legitimate interests in the PETEXPO.COM domain name. Despite registering the domain name on February 18, 1996, Respondent neither created a website at PETEXPO.COM nor used the mark PET EXPO in any manner until November, 2000, after receiving a request from Complainant to voluntarily relinquish the domain name.

Respondent has never been known by the domain name PETEXPO.

Respondent’s registration of the domain name PETEXPO.COM was done in bad faith. Respondent operates the business name of Iventure, an internet incubator. Respondent has registered dozens of domain names, many of which are exact or slight variants of the trademarks of others.

On August 15, 2000, Complainant’s counsel sent a letter to Respondent notifying Respondent of Complainant’s rights in the PET EXPO mark and requesting that Respondent voluntarily transfer the domain name to Complainant. Complainant’s attorney offered to buy the domain name. On September 28, 2000, Respondent sent a letter to Complainant’s counsel offering to sell the domain name for $22,000.00. Complainant declined the offer and offered Respondent $500.00.

After receiving the request from Complainant to transfer the name, Respondent established a sham "shell" website at PETEXPO.COM. Respondent placed links on his website to "PetsMart.com", a site which competes with Complainant. Respondent is intentionally attempting to attract Internet users to his website for financial gain by creating a likelihood of confusion with Complainant’s mark.

B. Respondent

The Respondent owns and operates "iventure", which has been building websites and Internet based businesses for over five years. "(I)venture" developed websites for many large companies but a few years back stopped developing website for other companies and focused its efforts on building websites and developing new Internet based businesses to own and operate. "(I)venture" has developed many sites including "Snowboarding.com", "Swimsuits.com", "VacationRentals.com", "YachtRacing.com", "Boarding.com" and others. "(I)venture" also has many other sites in development. "(I)venture’s" sites are based around descriptive and generic domain names.

Respondent has plans to develop all of the domain names it owns. It has developed many successful sites and serves millions of pages a month. It has names, which it has not put online yet because they are still in development. All of Respondent’s domain names are highly descriptive and do not infringe on anyone’s trademarks.

Complainant does not have a Federal or Texas registration for the mark PET EXPO.

Complainant is required to prove it has acquired secondary meaning and has not.

Complainant has produced no evidence that they have protected their purported mark, other than this proceeding.

Respondent has rights and legitimate interest in the domain name

U.S. Trademark Law protects the right to fair use of descriptive and generic terms. PET EXPO is a descriptive and generic term, which is widely used in the U.S. and Internationally.

Respondent had no knowledge of the Complainant’s business when it registered the domain name and there is no reason why it would have. Respondent conducts business in California. At the time Respondent registered the domain name in February of 1996, Complainant’s business consisted of one regional pet store that served the local area in Austin, Texas.

Respondent does not want to sell the domain name PETEXPO.COM. After receiving the cease and desist letter from Complainant, Respondent called counsel for Complainant and discussed Respondent’s rights and interests in the domain name as opposed to Complainant’s rights and interests. Counsel for Complainant requested Respondent to make an offer to sell the domain name. Respondent did so by letter to Complainant’s counsel in the amount Respondent calculated was a fair price-$22,000.00.

Respondent did not register the domain name in bad faith.

C. Additional Submissions

Complainant’s Additional Submission.

Complainant attaches as exhibits, certain orders from its internal files showing "PET EXPO" as the name with which Complainant conducts its Internet business under the domain name PET-EXPO.COM.

Complainant attaches as an exhibit internal documents for the years 1999 and 2000 that show the number of orders taken and the dollar amounts represented by such orders.

Complainant attaches a WebPosition Traffic Analyzer for domain www.pet-expo.com showing hits and visitors for parts of the months of September 1999, and parts July and August 2000. These documents are submitted as evidence of the secondary meaning and continuous and expanding use of the mark PET EXPO.

Respondent’s Additional Response.

Respondent includes exhibits taken from an Internet search engine for web page matches showing the use of the term "PET EXPO" by persons or organizations other than Complainant.

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 Rules 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:

(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.

The words PET EXPO and PETEXPO.COM are identical. See Hollywood Network, Inc. v. Video Citizen Network, FA95897 (Nat. Arb. Forum Dec. 20, 2000). Respondent does not contest this issue and it must be found for Complainant.

In addition to similarity, Complainant must show that it has rights in the trademark or service mark that is identical to Respondent’s domain name.

Respondent points out that Complainant has no Federal or State registration for PET EXPO. Respondent is correct. No Federal registration was ever filed. The Registration of the State of Texas has expired. Even when it was in force, the Registration did not purport to give Complainant a trademark in PET EXPO as a single mark. Complainant counters by showing that it has used the term PET EXPO as its mark at least since it became an Internet pet supply sales company. Complainant claims common law protection for PET EXPO. Common law rights in a mark are certainly valid and will be considered in a domain name dispute. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000). Respondent argues that PET EXPO is a descriptive mark, making it unenforceable unless Complainant proves that it has acquired secondary meaning. No such proof was presented, according to Respondent.

However, the Uniform Domain Name Dispute Resolution Policy does not require a Complainant to show exclusive trademark rights to proceed under Section 4(a)(i). All that must be shown is a bona fide basis for making the complaint. That is to say, proof of an interest in an alleged mark sufficient to illustrate some rights or interest in the mark. Complainant has made an ample showing on that issue. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000). Complainant prevails on this issue.

In order for Complainant to prevail in a domain dispute case, it must show that Respondent has no rights or legitimate interests in the domain name. See Uniform Domain Name Dispute Resolution Policy, Sec. 4(a)(ii).

Complainant advances the following reasons why Respondent has no rights or legitimate interests in the domain name. The first reason is that Respondent never created a website from February 18, 1996 until November 2000, after receiving a request from Complainant to relinquish the domain name. The second reason is that Respondent has invested no time, effort or expense in the domain name beyond the cost of registration and the establishment of the "sham" website in November 2000. The last reason is that Respondent has never been commonly known by the domain name.

Respondent contends that it has legitimate rights and interests in the domain name since the domain name PETEXPO is a descriptive and generic term that is widely used in the United States and Internationally. Respondent’s supporting evidence consists of Internet search printouts showing the use of PET EXPO by organizations other than Complainant on the Internet in connection with events or services unconnected with Complainant. While this evidence is far from conclusive, it requires an examination of the issue.

"Marks that constitute a common descriptive name are referred to as generic. A generic term is one that refers to the genus of which the particular product is a species…Generic terms are not registrable, and a registered mark may be canceled at any time on the grounds that it has become generic…A ‘merely descriptive’ mark, in contrast, describes the qualities or characteristics of a good or service, and this type of mark may be registered only if the registrant shows that it has acquired secondary meaning, i.e., it "has become distinctive of the applicant’s goods in commerce…" Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc. [1985] USSC 8; 469 U.S. 189, 194 (1985).

Though Complainant has shown that it has used the term PET EXPO for a number of years, it has attempted no showing at all to the effect that consumers are likely to associate the domain name only with Complainant. See General Mach. Prod. Co., v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000)

It was stated in Tough Traveler Ltd v. Kelty Pack, Inc. D2000-0783 (WIPO Sept. 28, 2000) the following: "Complainant lacks a trademark registration for this mark. Without a registration, there is no presumption of validity to Complainant’s claim of exclusive rights to the mark, and it must establish common-law rights to the term to prevail."

Under the circumstances of this case, Complainant must show proof of a secondary association in the mind of the public of the acronym with the full name of the Complainant or any evidence of attempted or actual registration of the mark. Otherwise, a mark, not arbitrary or fanciful, is not likely to satisfy the requirements of the Policy. See The Energy Authority v. Maslowski, FA 95313 (Nat. Arb. Forum Sept. 19, 2000).

This case is similar to the factual situation present in the case of Pet Warehouse v. Pet.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000). In that case the domain name at issue was "petwarehouse.com." Complainant used the mark "Pet Warehouse" in commerce since 1986 but could not obtain the domain name "Pet Warehouse" since Respondent had registered it as a domain name. Complainant relied upon common law rights in the mark. The Panel found that each of "pet" and "warehouse" is a generic term. The Panel noted that it is possible for two generic terms taken together to achieve trademark or service status by achieving a sufficient level of secondary meaning in the relevant community. However, the burden on the party making the claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage. "The Panel does not accept Complainant’s suggestion that "Pet Warehouse" is a suggestive mark, such that Complainant should not be required to prove secondary meaning. No imagination is required to associate the term with a retail establishment selling pet supplies…The claimed mark is descriptive, at best….The Panel considers the Complainant to shoulder a heavy burden to demonstrate that this generic word," (warehouse) "combined with the generic word "pet", together forms a distinctive service mark…Distinctiveness and secondary meaning are demonstrated by showing that the relevant public associates a service with a particular source. Evidence of the source’s publication of its name does not, standing alone, prove the connection…Complainant has not presented the Panel with evidence of prior attempts to enjoin others from using what it claims to be its exclusive service mark, or the results of those efforts. It has not presented evidence that would indicate that consumers of pet supplies connect the words "pet warehouse" with itself, …The Complainant has failed to establish rights in the service mark "Pet Warehouse"…The Panel therefore rejects its claim of abusive domain name registration against Respondent…It is important to note that this Panel has not made a determination that the name "Pet Warehouse" is generic or descriptive without secondary meaning. Rather, based on the record before us, serious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal."

This Panel finds the reasoning displayed in the Pet Warehouse case to be correct. Applying such reasoning to the facts of this case compel this Panel to find that Complainant has failed to carry its burden in showing Complainant has any more rights and interests in the name PET EXPO than does Respondent. Complainant certainly has not proved that Respondent has no rights or legitimate interests in the domain name PETEXPO.COM. Respondent must prevail on this issue.

"It is important to note that the ICANN Rules contemplate only limited evidentiary presentations by the parties. As such UDRP proceedings are inappropriate for conclusively deciding serious questions as to the ownership and proper classification of unregistered marks". See Tough Traveler, Ltd. v. Kelty Pack, Inc. D2000-0783 (WIPO Sept. 28, 2000).

Respondent contends that at the time of registration, that its principal, Jeff Busche, had no knowledge of the Complainant’s business or use of the term PET EXPO since Busche was located in California and at the time of registration, and Complainant’s business consisted of one regional pet store that served the local area in Austin, Texas. There were no trademark registrations to put Busche on notice of any rights Complainant might claim in the name PET EXPO. The Texas Registration was for PET EXPO WHERE YOUR PET WOULD SHOP & DESIGN. Complainant made no showing that these contentions are not accurate.

When only common law rights are claimed in a limited geographical area, it is difficult for a Panel to saddle a Respondent with a finding of bad faith registration when the Respondent affirmatively states that it had no knowledge of such rights. See Marbil Co. Inc. v. Sangjun Choi, D2000-1275 (WIPO Nov. 23, 2000); See also High Speed Productions, Inc. v. Thrasher Magazine, Ltd., FA96099 (Nat. Arb. Forum Jan. 8, 2000). The registration of the domain name in 1996 was not done in bad faith. The subsequent use of the domain name is not in bad faith since it has not been proven that Respondent has no rights and interests in the domain name and thus is entitled to use it freely.