DECISION

Coupons Inc. v. Motherboards.com a/k/a DNS Admin

Claim Number: FA0309000192249

PARTIES

Complainant is Coupons Inc., Belmont, CA (“Complainant”) represented by Ellen A. Efros, of Rader Fishman & Grauer PLLC, 1233 20th Street N.W., Washington, DC  20036.  Respondent is Motherboards.com, Bryan, TX, (“Respondent”) represented by John B. Berryhill, 1601 Market Street, Suite 2400, Philadelphia, PA  19103-2307.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <couponsinc.com>, registered with Gkg.Net, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Jacques A. Léger, Q.C., as Chair, Sandra J. Franklin and G. Gervaise Davis III as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 29, 2003; the Forum received a hard copy of the Complaint on September 2, 2003.

On September 3, 2003, Gkg.Net, Inc. confirmed by e-mail to the Forum that the domain name <couponsinc.com> is registered with Gkg.Net, Inc. and that Respondent is the current registrant of the name. Gkg.Net, Inc. has verified that Respondent is bound by the Gkg.Net, Inc. 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 September 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 29, 2003 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@couponsinc.com by e-mail.

A timely Response was received and determined to be complete on September 29, 2003.

Complaint submitted an Additional Submission that was deemed in compliance with Forum Supplemental Rule #7 on October 3, 2003.

Respondent submitted an Additional Submission that was deemed in compliance with Forum Supplemental Rule #7 on October 6, 2003.

On October 21, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Jacques A. Léger, Q.C., Sandra J. Franklin and G. Gervaise Davis III as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Founded in May 1988 as XAdvantage Corporation, Complainant Coupons, Inc. incorporated under the laws of the State of California in March 2001. Complainant is an independent privately-held company that is the leading provider of business-to-business Internet-based technology solutions that enable businesses to deliver secure consumer-printed coupons and other certificates. Complainant currently offers business customers different programs that can deliver coupons directly to their customers from their corporate web sites, from online banner advertisements, and through targeted email messages.

Complainant’s name and domain name, <coupons.com>, are well known in the industry and Complainant’s clients and licensees now include numerous Fortune 500 companies including Revlon, Dole, McDonald’s, Yahoo!, Dial Corporation, Kimberly-Clark, Johnson & Johnson, Nestle Corporation, Pfizer, Hershey Foods, News Corporation’s News America Marketing, Valassis Communications, Inc. and Val-Pak. In addition, the mark COUPONS INC. is prominently and consistently displayed.  There are approximately 15 million coupons that have been printed with “Powered by Coupons, Inc.” on them and Complainant has spent approximately $1,057,000 on promotion and marketing since March 2001.

Complainant acquired its primary domain name, <coupons.com>, as well as the domain name <coupon.com> on January 21, 2000, for $1.3 million. Since that time, Complainant has used its primary domain name <coupons.com> to direct Internet traffic to an active website that provides comprehensive information about its electronic coupon technology products and services. Complainant has expended substantial time, effort and resources to develop its < coupons.com> domain name as a viable source of information that is used to promote its services and reach potential new customers.

Respondent does not, and has never offered bona fide goods or services under the COUPONS, INC. or COUPONS.COM marks as required by Policy Paragraph 4(c)(i).  Rather, Respondent’s interest in the domain name is its value as being identical to Complainant’s legal corporate name, Coupons, Inc. and its trademark and primary domain name, COUPONS.COM, the latter of which is associated with Complainant’s website located at <coupons.com>.  In particular Respondent’s only interest in the domain name is its value in attracting or diverting traffic intended for Complainant’s website. See Fanuc Ltd v. Machine Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) wherein it was found that Respondent had no rights or legitimate interest because Respondent did not own the registered mark, had no permission from Complainant to use the mark, nor was affiliated with the Fanuc business in any way.   In this case, Respondent is not now, and has never been authorised by Complainant to use COUPONS, INC. or COUPONS.COM, including use in connection with any domain names.

Moreover, Respondent is not and has never been commonly known by the names COUPONS, INC. or COUPONS.COM in accordance with Policy paragraph 4(c)(ii).  Respondent Motherboards.com is not, and never has been engaged in the business of electronic coupon technology. In Clipper Magazine, Inc. v. Advanced Internet Marketing, FA 96180 (Nat. Arb Forum Jan. 11, 2001), the arbitration panel addressed this very issue, finding that Complainant had fulfilled its burden under Policy 4(c)(ii) because Respondent had failed to demonstrate any rights or legitimate interests in the disputed domain name. Specifically, the panel in Clipper held that no bona fide or legitimate use exists where a respondent uses the domain name to divert Internet users to its own website, and thereby furthers its own financial gain by infringing upon Complainant’s established business.  See also, North Coast Med. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000). 

Finally, in evaluating the third prong of the test, Respondent’s conduct cannot constitute “non-commercial or fair use without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”  Respondent’s use is wholly outside the 4(c)(iii) criteria, and is per se evidence of intent to reap commercial gain from Complainant’s protected and widely-recognised COUPONS, INC. and COUPONS.COM marks. 

Respondent’s registration and use of the domain name is clearly in bad faith. In light of the fame and reputation of Complainant as the leading provider of electronic coupons technology, it is inconceivable that Respondent could have registered the domain name without actual knowledge of Complainant’s rights.  Indeed, Respondent is and has been pointing the domain name to a webpage containing hyperlinks to unaffiliated third party websites that offer coupons.  By reaching Respondent’s website being used in connection with the domain name, consumers may be confused into thinking that Respondent’s website and the unaffiliated third-party links originate from, are affiliated with or are endorsed by Complainant in some way. More importantly, however, Respondent’s registration and use of the domain name is evidence of bad faith and done in violation of Policy Paragraphs 4(b)(ii), (iii) and (iv). 

 

Respondent is a known cybersquatter.  In fact, a National Arbitration Forum panel issued a decision against this same Respondent on December 2, 2002.  See Stanley Logistics v. Motherboards.com, FA 152617 (Nat. Arb. Forum. Dec. 2, 2002) wherein bad faith was found and transfer of <bostitch.com> was ordered. In addition, it appears to be cybersquatting on the legitimate rights of the San Francisco 49ers by registering the domain name <fortyniners.com> and operating a website under that name to sell football related products. In light of this documented history of bad faith conduct, there can be no question that Respondent herein has acted in violation of Policy 4(b)(ii). 

Respondent’s registration of the domain name is designed to attract web traffic intended for Complainant by those who type in the domain name directly corresponding to its legal corporate identity, Coupons, Inc.  This conduct intentionally disrupts the business of Complainant, creates consumer confusion, infringes Complainant’s rights as the rightful legal entity Coupons, Inc., and enables Respondent to reap its own financial gain on the fame and goodwill associated with Complainant and its domain name and trademark.  See Sports Auth. Mich. v. Akre, FA 147315 (Nat. Arb. Forum April 4, 2003) wherein it was found that Respondent’s conduct of deliberately creating a likelihood of confusion, and using the domain name to host a commercial website to sell products that directly compete with Complainant constitutes bad faith.

Since obtaining his registration, Respondent has used the domain name in connection with an active website to promote products and services in direct competition with those offered by Complainant.  In light of this evidence, it is abundantly clear that Respondent was well aware of Complainant and its domain name and trademark, and simply registered the name to trade on the fame and goodwill associated with Complainant and its marks.  Thus, Complainant urges that violation of the Registration Agreement should be deemed another element of bad faith in the proceeding herein.    

B. Respondent

Respondent, who is in the business of incorporating an e-commerce website that sells personal computer components, uses the webpage located at the <couponsinc.com> domain name as a means to earn revenue by way of pay-per-click advertising consolidator, by providing a listing of paid search links relevant to the term “coupons”.

According to Respondent, generic or descriptive terms, or terms which are not exclusive to the claimant for the same goods and services, are generally incapable of performing the function of acting as trade or service marks because they merely convey their primary meaning as indicators or descriptors of the goods or services themselves. Moreover, the designation of “Inc.” in a corporate name, just like the designation of “.com” in a domain name, does not convey sufficient distinctiveness to overcome the basic fact that the dominant portion of the term is generic or descriptive.

The corporate name “Coupons Inc.” in Complainant’s field of coupons is a non-distinctive trade name, and certainly not a trademark. There are many examples of non-exclusive users of the term “Coupons Inc.” in a trade name. It appears from the records of the U.S. Patent and Trademark Office (hereinafter the “USPTO”) that several others were using the term “coupons inc.”, “coupons.com” or variations thereof as a formative part of their trade names in the field of coupons long before Complainant adopted its current trade name in 2001. Indeed, a search of registered internet domain names shows that there are over 2,000 registered domain names with the word “coupon” in them.

Complainant holds U.S. Trademark Registration Applications Nos. 76/005807 and 76/005634. Both of these applications were filed in March 2000 on an intent-to-use basis for a stylised representation of the term “Coupons.com”, and both were met with the identical stock refusal under 15 U.S.C. §1052(e)(1) on the basis that the proposed mark is “merely descriptive”. In addition to the descriptiveness refusal, both applications were refused registration on grounds of confusing similarity with several prior applications by others. Both applications have been suspended by the USPTO pending disposition of the earlier-filed applications by others, and both grounds of rejection, including descriptiveness, have been maintained.

Identical results have been held under the Policy, in accordance with accepted principles

of trademark law pertaining to generic and descriptive terms. The facts here are similar to those in Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000). There, the panel did not accept that registration of the stylised term “Interactive Television” or the corporate trade name of Complainant, “Interactive Television Corporation”, were sufficient to overcome the wide use of “interactive television” as a generic or descriptive term. Here, Complainant’s case is much weaker, as it does not have a federal registration and, indeed, both of its registration applications have been refused on grounds of mere descriptiveness. Similarly, in Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO April 13, 2000), the panel declined to find that the corporate name of Complainant, “Pet Warehouse” was sufficient to convey a trademark right. Here, as in that case, the term “Coupons Inc.” is not distinctive to Complainant, as both of its

trademark applications have been rejected, and it would be absurd to find that the addition of “Inc.” renders a term distinctive, while the addition of “warehouse” does not. Indeed, as held in Henry A La Pensee, Inc. v. Societe a Responsibilite Limitee Henry a La Pensee, 243 F.2d 181, (C.C.P.A., 1957), “[...] ‘Inc.’ must be ignored in considering this question, a point which had long been settled on the theory that ‘Inc.’ does not serve to identify any corporation in particular."

For the foregoing reasons, Respondent submits that Complainant has failed to prove that the domain name is identical or confusingly similar to a trade or service mark in which Complainant has rights.

The second condition required to be proven by Complainant is that Respondent

lacks any legitimate rights or interests in the domain name. Respondent provides a listing of paid search links relevant to the term coupons. These links are provided by Respondent’s affiliation with a pay-per-click advertising consolidator, and correspond to links for which advertisers have paid to receive traffic relevant to the word “coupons”. The use of generic/descriptive terms to drive pay-per-click traffic to advertisers based on the nature of the term is a perfectly legitimate use of a domain name, and one in which Respondent has a legitimate expectation in the continuation of the revenue derived from providing this service. As noted in Canned Foods, Inc. v Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001), “Respondent is using the domain “groceryoutlet.com" for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site. The panel finds that this is a legitimate interest in the domain name. . . . Complainant alleges that Respondent derives revenue from its site when users click on the links. If this allegation were substantiated, it would support a finding of a legitimate right or interest in the domain, not bad faith.” See also Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., D2001-0031 (WIPO April 13, 2001) and Credit Mgmt. Solutions, Inc. v. Collex Res. Mgmt., D2000-0029 (WIPO March 17, 2000); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) wherein it was found that where the registrant is using the domain name to communicate some aspect of the services it provides, then the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest.

The third criterion required to be proven by Complainant under the Policy is that the

domain name was registered in bad faith and that the domain name has been used in bad faith. In this case, there can be no bad faith in Respondent’s use of a descriptive and utterly non-distinctive term relating to coupon companies for the purpose of advertising coupon companies and related goods and services. Such use of a domain name has repeatedly been held to constitute a legitimate good faith use of an available domain name.

Interestingly, Complainant’s research into finding that Respondent is a “cybersquatter” did not manage to turn up Wharton Sch. of the Univ. of Penn. v. Motherboards.com, FA 161274 (Nat. Arb. Forum July 24, 2003), in which Respondent’s use of the non-distinctive term “Wharton” in connection with the town of Wharton, nearby to Respondent’s location, was found to be a legitimate, good faith use of a domain name.

Moreover, merely stating that Respondent may have other domain names containing alleged trademarks having nothing to do with Complainant’s claim is not probative either of intent or of a pattern of behaviour. In regard to such “pattern” evidence, the Policy itself is clear that a “pattern of registrations” intends to block Complainant from reflecting its trademark in a domain name. Complainant has shown no such thing.

Reverse Domain Name Hijacking

In view of Complainant’s claim to a “famous trademark” in COUPONS.COM on which

the Complaint is based, Respondent respectfully requests the Panel to consider whether Complainant could possibly have made such a claim in good faith, knowing full well that both of  its trademark registration applications have been rejected on grounds of descriptiveness and of confusing similarity with alleged trademarks owned by others. Assertion to have a “famous trademark” in such a term, while deliberately concealing the truth from this Panel, would not pass muster under Federal Rules of Civil Procedure, Rule 11, and should not be countenanced in these proceedings which put the opposing party under considerable time pressure and disadvantage to investigate and uncover such clearly deceptive allegations. Indeed, since Complainant has been advised that its alleged mark is confusingly similar to prior claimed terms, the Panel may consider Complainant’s motives in seeking transfer of the domain name to Complainant, in view of the fact that Complainant has been put on notice of the confusing similarity of its claim to COUPONS.COM relative to prior pending claims of others.

C. Additional Submissions

1. By Complainant

Complainant must correct Respondent’s misstatements in these applications that have been refused or rejected by the USPTO. Both of the trademark applications cited by Respondent were suspended on April 8, 2003, and there has never been any final disposition or refusal to register either of these marks.  Neither of these applications, both of which are design marks for COUPONS.COM, were cited or relied upon in filing this action because they are completely irrelevant to a determination of Complainant’s established common law rights in its COUPONS, INC. mark, trade name and legal corporate name, which predate Respondent’s registration and use of the <couponsinc.com> domain name by more than two years. 

More importantly, Respondent has submitted absolutely nothing to rebut Complainant’s evidence; namely, that Respondent’s infringing registration of the <couponsinc.com> domain name is identical and confusingly similar to Complainant’s COUPONS, INC. mark, trade name and legal corporate.  Instead, Respondent bases its entire argument on whether Complainant has exclusive rights solely in the term “Coupons”.

In the realm of domain names disputes, the reference to a trademark or service mark “in which Complainant has rights” under the Policy Paragraph 4(a)(i) means that ownership of a registered mark is not required – unregistered or common law trademark or service mark rights will suffice. See, e.g., Nintendo of Am., Inc. v. Holland,  D2000-1483 (WIPO, Jan. 11, 2001) wherein transfer of several domain names was ordered based on Complainant’s common law trademark rights in each of the underlying names which were established through use of the names as video game characters; see also, Forrester v. Hoffman, FA 170644 (Nat. Arb. Forum, Sept. 3, 2003) wherein it was found that Complainant had common-law rights in his own name, Doug Forrester, as established through use as a public figure, and ordering a forced transfer of the domain name.

The evidence submitted by Complainant, including its Articles of Incorporation as filed with the California Secretary of State on March 21, 2001 is conclusive evidence that it is duly incorporated as COUPONS, INC.  Moreover, Complainant has established through the Affidavit of Francis L. Serafin, the Chief Financial Officer of Complainant COUPONS, INC., that to date, it has circulated over 15 million coupons bearing the COUPONS, INC. mark and has spent in excess of one million dollars on promotional and marketing itself under the COUPONS, INC. mark in magazines of mass circulation such as “Family Life” and “Cooking Light”, as well as through its own Internet website located at <coupons.com>. Complainant’s continuous and prominent use of its COUPONS, INC. mark in commerce since March 2001 has made Complainant the leading provider of Internet-based coupon technology.  As such, the public has come to associate the COUPONS, INC. mark with Complainant.

It is well established under the Policy and numerous UDRP decisions that the commercial use of a domain name to divert Internet traffic does not establish legitimate rights or interests.  See Vapor Blast Mfg. Co. v. R & S Tech. Inc, FA 96577 (Nat. Arb. Forum Feb. 27, 2001).  Moreover, prior National Arbitration panels considering the identical issue have consistently held that Respondents that behave in a manner similar to Respondent herein have no rights or legitimate interests under a Policy Paragraph 4(a)(ii) analysis.  See, e.g., Rock Financial, a Quicken Loans Company v. Chan, FA 167917 (Nat. Arb. Forum Aug. 15, 2003) and Kmart of Mich., Inc. v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002).

Respondent is not and has never been authorized in any way to use the COUPONS, INC. mark.   Respondent candidly admits that it is not authorized to use the mark or affiliated with Complainant.  Indeed, it is not even in the coupon business, and has only registered and used the <couponsinc.com> domain name which is identical to Complainant’s COUPONS, INC. mark to make money on the goodwill and reputation of Complainant by earning pay-per-click revenue from use of the domain name in connection with the third-party links on its website that direct traffic to Complainant’s competitors.

It is abundantly clear that Respondent behaved in a predatory manner by registering the domain name.  If Respondent were interested in creating a web page with links to coupon sites for the sole purpose of generating revenue through pay-per-click arrangements, it could have picked any number of domain names that incorporate the term “coupons” without selecting the domain name that is identical to Complainant’s COUPONS, INC. mark, trade name and corporate identity. 

Respondent registered the domain name more than two years after Complainant began using its mark. Clearly, it is because of Complainant’s notoriety and the goodwill associated with Complainant’s mark that this name had such immense value to Respondent for its use in soliciting web traffic. Respondent knew that by registering a domain name that is identical to Complainant, it would gain a great deal of web traffic from people trying to reach Complainant’s website and upon doing so, they would likely click through a link thereby generating money for Respondent.  This conduct consistently has been held to be in bad faith by numerous UDRP panels.  See Lowermybills.com, Inc. v. Dinoia, FA 183728 (Nat. Arb. Forum Oct. 2, 2003) wherein bad faith was found where respondent registered the misspelled version of Complainant’s <lowermybills.com> domain name to earn referral fees or commissions by redirecting Internet users to a pay-per-click search engine.  See also CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan 12, 2001) wherein it was found that Respondent’s use of the VINCE LOMBARDI mark to divert Internet users to its commercial website constituted bad faith use and registration of the disputed domain name. 

             

                        2. By Respondent

Respondent fully recognizes that Complainant asserts two alleged trademarks – COUPONS, INC. and COUPONS.COM.  It is a trite legal proposition that when considering a trademark consisting of a domain name, the “.com” portion does not provide a source-identifying function. Concerning “Coupons Inc.”, the legal result is the same.  First, the fact that it is Complainant’s trade name, as noted on its certificate of incorporation, is irrelevant under the Policy.  As noted by panelist Jacques A. Léger, Q.C., in Not My Kid, Inc. v. Ron Sawchak, FA 167978 (Nat. Arb. Forum Sept. 23, 2003):

Complainant asserts it was incorporated in April 2000, under the name NotMYkid, Inc. Although this is not specifically alleged by Complainant, Panel finds that “NotMYkid” may be viewed as Complainant’s trade name. However, as stated in Univ. of Konstanz v. uni-konstanz.com D2001-0744 (WIPO Oct. 18, 2001), the UDRP Policy’s scope did not encompass trade names in its definition of “mark” in which Complainant has rights. See also Sintef v. Sintef.com D2001-0507 (WIPO June 9, 2001) wherein it was found that “trade names as such are, however, not the subject of the current Policy”. [emphasis added]

Trade names, alone, do not operate as trademarks, and the term “Coupons” in “Coupons Inc.” cannot be a trademark for goods and services relating to coupons. The full term “Coupons Inc.” is included, in its entirety, in the trade names of several entities in the coupon trade. Complainant’s asserted “marks” would not satisfy the requirements of either de facto or de jure distinctiveness required of a common law trademark.

           

With regards to the pending applications, the USPTO has refused registration of both of Complainant’s applications on two grounds – confusing similarity with prior applications and descriptiveness.  The USPTO has also rejected Complainant’s arguments contrary to both grounds of rejection. It is worth noting that the only thing standing between Complainant and final rejection of the applications is the refusal based on non-distinctiveness – that is the only reason why the applications are “suspended”.

Respondent has made the full prosecution file of Complainant’s trademark applications available to the Panel. UDRP Panels are certainly free to make decisions on any legal basis they choose.  But when Panels under the UDRP proceed against the face of such well-accepted principles as those cited here, the Policy is brought into disrepute, as when the decision in Freebies Publ’g v. Retail Servs., Inc., FA 112565 (Nat. Arb. Forum July 15, 2002), relating to the <freebies.com> domain name which incorporated the common word “freebies”, was subsequently declared by a federal court to have lacked basis in either the facts or the law.  See Retail Servs., Inc., et al. v. Freebies Publ’g, et al., 2003 U.S. Dist. LEXIS 2934, 02-CV-1111 (E.D. Va. Feb. 27, 2003).  At least the “freebies” case involved a federally-registered trademark (also cancelled by the district court). Additionally, if Complainant were able to satisfy the common law requirements for a trademark, about which it propounds at length, then the USPTO would have certainly been able to comprehend that, as the distinctiveness requirements for registration are not materially different from the distinctiveness requirements at common law.

We are not dealing in this case with an inherently distinctive term.  We are dealing with the term “Coupons Inc.” which, if it conveys any meaning at all, conveys the primary meaning of a company that one would be willing to bet has something to do with coupons.  It should come as no shock that Respondent is using the domain name, surprisingly enough, to advertise companies that provide services relating to coupons.

See Car Toys, Inc v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum March 20, 2000); Dog.com, Inc. v.  Pets.com, Inc., FA 93681 (Nat. Arb. Forum March 31, 2000); Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000); Jewelry.com v Idealab!,FA 95242 (Nat. Arb. Forum Sept. 1, 2000); Lucky Money, Inc. v. ilovesschool.com, FA 96383 (Nat. Arb. Forum March 9, 2001).

Complainant makes much of the fact that its trademark applications are still pending.  Respondent admits that it has not researched the status of the patent infringement suit filed in March 2003 against Complainant by  E-Centives Inc. See, http://www.e-centives.com/pr_releases.html, “E-Centives Files Patent Infringement Lawsuit Against Coupons Inc.”  However, it may well be found as a result of that litigation that Complainant’s online coupon business is, itself, an entirely illegitimate enterprise.  Presumably, Complainant seeks to enlist this Panel as co-defendants for contributing to its patent infringement by providing yet another domain at which to infringe.  Respondent would respectfully request indemnification of some kind in the event Respondent is compelled to promote Complainant’s ongoing abuse of intellectual property rights.

Finally, Complainant helpfully suggests that Respondent may register, without objection, “any number of domain names that incorporate the term ‘coupons”.  Acting on this advice, Respondent has noted that the domain name “couponsincorporated” is, at the time of this submission, available for registration in .com, .net, and other top-level domains.

Complainant refers in its Supplement to “Respondent’s admitted bad faith conduct”.  Respondent believes the record is clear that Respondent has admitted no such thing.  Respondent reasonably believes, has sought the advice of counsel, and agrees with the relevant U.S. Government agency, that there can be no bad faith here, as Complainant has not proven that it has trademark rights in either COUPONS, INC. or COUPONS.COM.

DISCUSSION & FINDINGS

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 Complainant must prove cumulatively each of the following three elements so as to obtain an order for a domain name to be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

(1) Identical and/or Confusingly Similar

      Rights in the Mark

In this proceeding, Respondent has raised the crucial question as to whether Complainant has rights in any of the alleged marks, i.e. COUPONS, INC and COUPONS.COM in order to meet the requirements set forth in Policy Paragraph 4(a)(i).

Respondent’s entire argument seems to revolve around this very issue and for that reason, the Panel has reviewed it exhaustively, as failure to meet this burden leads automatically to a rejection of the Complaint.

First and foremost, the Panel wishes to stress the fact that Complainant has, by its own choosing, elected to rely solely on its common law marks. The Panel has therefore undertaken the analysis laid down in Policy Paragraph 4(a)(i) with regards to the alleged common law marks COUPONS, INC. and COUPONS.COM. Any reference by Respondent to USPTO proceedings, while not conclusive, is somewhat relevant if only to take into account other factors as to Complainant’s entitlement to trademark rights. Had the Panel entertained some doubt on this issue, it would have considered the weight to be given to Complainant’s election not to rely on its USPTO application, as stated by Respondent, as it is to say the least peculiar that Complainant has eluded to mention such documents.

Complainant makes a very clear statement that it relies on its common law rights  in COUPONS, INC, as a mark, a trade name and as its legal corporate name, which predate Respondent’s domain name registration by two years. Complainant contends that it has established rights in the COUPONS, INC. mark by virtue of the fact that it has been the legal corporate name of Complainant since March 2001. Complainant further affirms that it has established rights in the COUPONS.COM mark through its possession of the <coupons.com> and <coupon.com> domain names since January 2000. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) wherein it was noted that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applyed the Policy to “unregistered trademarks and service marks.”

Complainant further contends that it does not need to prove “exclusive” rights to meet its burden under Policy paragraph 4(a)(i). See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) wherein it was held that ICANN Policy paragraph 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place; see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) wherein it was found that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services.

As evidenced by the affidavit of Mr. Serafin, Complainant argues that it holds a famous trademark and that it has become well-know in its industry. In addition, Complainant states that 15 millions coupons have been printed via its company and that it has invested over one million dollars in promotion and marketing since March 2001. Besides a photocopied version of its Articles of Incorporation, Complainant submits as its evidence two photocopies of magazine advertisements, one in “Family Life” dated April 2000 and the other in “Cooking Light”, which unfortunately bears no date. These advertisements tend to show that the word “coupons” is used in a descriptive fashion, where Complainant itself is using its trade name to offer coupons, shopping lists, etc. As such, the Panel finds this evidence to be not persuasive, especially given the fact that no information has been provided as one would expect as to the distribution area of these publications and their readership. Finally, Complainant affirms that it is the leading provider of internet-based coupon technology and that as such, the public has come to associate the COUPONS, INC. mark with Complainant.

Respondent, for its part, argues that the term “coupons” is generic and that Complainant attempted and failed on two occasions to register the COUPONS.COM mark due to the descriptive nature of the mark and their confusing similarity to other marks, evidence that Complainant does not have rights in the mark. See PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) wherein it was found that "pet" and "warehouse" are generic terms and therefore not subject to trademark protection, while noting that the USPTO’s rejection of Complainant’s application for a service mark registration denied a presumption of validity to Complainant’s claim of exclusive rights in that mark; see also Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000) wherein it was found that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration.”

Respondent also states that there are actually over 2000 registered domain names with the word “coupon” in them. Moreover, Respondent is of the view that COUPONS.COM and COUPONS, INC. are in fact the same mark, since both “.com” and “inc.” cannot work as distinctive factors.

According to Respondent, Complainant’s marks are not famous and its advertising is not sufficient to create secondary meaning, given beforehand that distinctiveness is a requirement for common law marks. Furthermore, Respondent contends that the Policy was not designed to provide protections for trade names. See Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum April 4, 2003) wherein it was found that Complainant’s use of a trade name, without any showing of secondary meaning associated with the name, was an insufficient demonstration that Complainant “had rights” under the Policy; see also Powrachute Inc. v. Buckeye Indus., AF-0076 (e-Resolution, May 30, 2000) dismissing a Complaint where Complainant failed to contend, provide evidence, or give arguments to the effect that it had either a registered trademark or service mark in POWRACHUTE or any similar name, or that it had a common law trademark in the name. The only evidence provided, that it was incorporated under the name, was insufficient to create a trademark.

Respondent contends that Complainant has not proven that it has common law rights in a mark which incorporates the term COUPON, either in its submissions to the Panel or to the USPTO. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) wherein it was held that a finding of common law rights in a mark required a level of supporting evidence, statements or proof (such as business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) wherein it was found that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself.

It is the Panel’s opinion that the term “coupons”, though not generic in and of itself, is nonetheless highly descriptive. Consequently, in order to overcome this lack of inherent distinctiveness, Complainant had the burden to establish secondary meaning which it might have acquired as a result of extensive and widespread use. The Panel finds that Complainant has failed to do so.

As noted by Respondent, it was decided in Not My Kid, Inc. v. Sawchak FA167978 (Nat. Arb. Forum, Sept. 23, 2003) that a mere trade name cannot per se function as a mark, as indeed, only when used as a trademark may a trade name or business name constitute a mark under the Policy. While the facts of the present case  can be distinguished from those in Not My Kid, Inc. v. Sawchak, wherein Complainant had not submitted any relevant evidence to demonstrate rights in its alleged mark. Conversely, the Panel here has been presented with at least some material evidence, which however has not been considered sufficient to confer rights to Complainant’s alleged marks.

As stated in Classmates Online Inc. v. Zuccarini, D2002-0635 (WIPO Sept. 6, 2002), “while a descriptive term limits considerably a mark owner’s ability to prevent others from comparable use of the term in a domain name, and the scope of its mark generally, it does not ipso facto render the mark unenforceable or unavailable for use under the Policy.”

Furthermore, in Media West-GSI, Inc. v. Earthcards.com, Inc., D2000-0463 (WIPO July 28, 2000), the Panel enumerated the different factors which may come into play in order to evaluate secondary meaning in a descriptive term:

“this test requires a demonstration that the mark, by means of sufficient marketing, sales, usage, and passage of time, has become identified in the public mind with a particular source of the goods or services. In determining whether a mark has acquired a secondary meaning, courts consider such factors as: (1) advertising expenditures, (2) consumer surveys linking the mark to a source, (3) unsolicited media coverage of the service, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.”(references omitted). 

From the above, the case-law is quite adamant as to the requirement of extensive use evidence, particularly for trademarks that lack inherent distinctiveness. As to what such evidence might be, for example, it was stated in All Packaging Mach. Supplies, Corp. v. Crystal Flex Packaging Corp., D2002-0383 (WIPO July 17, 2002), “although the phrase may be descriptive, it is entitled to protection as a mark based on 20 years of use. As a result of that long use, there is a presumption that the mark has acquired distinctiveness, and Respondent has presented no evidence to rebut that presumption”. In Classmates Online Inc. v. Zuccarini, D2002-0635 (WIPO Sept. 6, 2002), Complainant had “demonstrated, on uncontested evidence, widespread recognition (and identification with Complainant) by United States Internet users of its registered mark, similar marks for which USPTO applications are pending and a heavily trafficked website.”

Another example of what kind of evidence is sufficient to establish secondary meaning is set out in Australian Trade Comm’n v. Reader, D2002-0786 (WIPO Nov. 12, 2002), wherein the Panel noted that:

“it is undisputed that Complainant has been identifying itself and its services with the “Austrade” mark since 1986. Also undisputed are Complainant’s claim that, in recent fiscal years, it has invested over 10 million Australian dollars to raise awareness of its services, and raised as much in the annual revenue for services provided, all in conjunction with its use of the “Austrade” identifier. Additionally,  the name has appeared in brochures and other written materials published by Complainant for a wide audience. Complainant also demonstrates awareness of its name and services both within and outside of Australia.”

Moreover the decision in Den Norske Laegeforeningen v. Eivind Nag, D2000-1267 (WIPO Nov. 15, 2000) is quite illustrative as it states that “in order to obtain such a right of user of a generic word a very extensive use is required.”

Considering the limited evidence filed by Complainant to meet the necessary burden imposed on it, the Panel is of the opinion that Complainant has not satisfactorily established rights in the marks COUPONS, INC. and COUPONS.COM. Indeed, the former being a trade name and the latter a domain name, in light of the evidence submitted, the Panel must find that Complainant has failed to achieve proprietary rights which it might have otherwise had if secondary meaning had been proven. For this reason there is no point in reviewing the other two elements necessary to prove a domain name case under the UDRP, and the Panel rules for Respondent.

 

REVERSE DOMAIN NAME HIJACKING

Respondent alleges that Complainant was well-aware that it had no enforceable rights in any mark containing the word COUPON and that the Complaint was therefore brought in bad faith. Complainant failed to address this issue.

As stated in Sydney Opera House Trust v. Trilynx Pty. Ltd, D2000-1224 (WIPO Oct. 31, 2000), to establish reverse domain name hijacking, Respondent must show knowledge on the part of Complainant of Respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by Complainant in the face of such knowledge. No such evidence has been brought to the attention of the Panel, thus this claim must be rejected.

In Aspen Grove, Inc. v. Aspen Grove, D20001-0798 (WIPO Oct. 5,  2003), the Panel noted that Complainant had not demonstrated it had trademark rights in the disputed domain name, Respondent demonstrated rights in the disputed domain name, and finally, Respondent had registered the domain name some two years before Complainant came into existence and thus could not have been in bad faith at registration relative to Complainant. In the case at hand, none of these circumstances are present, and as such, the Panel finds no reverse hijacking.

Moreover, the Panel is of the opinion that Complainant has presented a Complaint that meets the UDRP standards, and therefore, the Panel is not convinced that there is reverse hijacking. See N. Am. Die Casting Ass’n v. Genick Bar-Meir, D2000-0295 (WIPO July 6, 2000).

DECISION

Having failed to establish the primary element required under the ICANN Policy Paragraph 4(a)(i) with regards to any rights in the mark, the Panel concludes that relief shall be DENIED.

Jacques A. Léger, Q.C., Chair

Sandra J. Franklin and G. Gervaise Davis III, Panelists
Dated: November 4, 2003

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