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Generic Top Level Domain Name (gTLD) Decisions |
eSales & Marketing, Inc. v. Stephen
Traino d/b/a Candy Direct
Claim Number: FA0305000156315
PARTIES
The
Complainant is eSales & Marketing,
Inc., Chicago, IL (“Complainant”). The Respondent is Stephen Traino d/b/a Candy Direct, San Diego, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <candy2u.com>
registered with Go Daddy Software, Inc.
PANEL
The
undersigned 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
Panelist in this proceeding.
Edward
C. Chiasson, Q.C. as Panelist.
PROCEDURAL HISTORY
The
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on May 1, 2003; the Forum received
a hard copy of the
Complaint on May 1, 2003.
On
May 1, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain name <candy2u.com> is
registered with Go Daddy Software, Inc. and that the Respondent is the current
registrant of the name. Go Daddy Software, Inc.
has verified that the
Respondent is bound by the Go Daddy Software, 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
May 6, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 27,
2003 by which the Respondent could file a Response to the Complaint, was
transmitted to the Respondent via
e-mail, post and fax, to all entities and
persons listed on the Respondent’s registration as technical, administrative
and billing
contacts, and to postmaster@candy2u.com by e-mail.
A
timely Response was received and determined to be complete on May 27, 2003.
A
complete and timely Additional Submission was received from the Complainant on
May 31, 2003.
The
Respondent delivered a Supplemental Response dated June 15, 2003.
On June 5, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Edward C.
Chiasson, Q.C. as Panelist.
The Administrative Panel has considered all of the
submissions of the parties.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
Complainant.
A.
Complainant
The Complainant is a vendor of a variety of
confectionary products and sells products under its name and mark <candy2you.com>
to consumers and the trade throughout North America.
The Complainant primarily reaches its customers through
its website associated with its domain name <candy2you.com>. The Complainant’s name and mark, as
displayed on its confectionary sales website, is depicted below:
The Complainant’s president registered the domain name <candy2you.com>
at least as of August 2001 and the Complainant’s predecessor in interest,
Cline Sales, Inc., commenced use of the <candy2you.com> name and
mark online for retail and wholesale services in the field of confections
shortly thereafter.
The
Complainant’s business has been a great success under the <candy2you.com> name and
mark. Its website to which the domain
name resolves has received more than 30,000 visits per month each month, with
an average length of
those visits being 5 minutes and 30 seconds.
Since
use began, the <candy2you.com> name
and mark have each been featured prominently in advertising and promotional
materials, distributed throughout the United States,
for the retail and wholesale
services in the field of confections.
This advertising and promotion has included, inter alia, Internet advertising via the above depicted website,
trade show exhibitions, monthly newsletters, printed flyers, direct email
campaigns,
and distribution of free samples.
The Respondent registered the domain
<candydirect.com> at least as early as May 22, 1997 and has operated his
confectionary
sales website at that domain since at least as early as May 2,
1998.
The Respondent has not been known commonly as CANDY2U.
It is not using the name to identify itself or any good or service.
The Respondent’s own confectionary
sales website is depicted below:
A visitor arriving at the website to which the subject
domain name resolves sees an image of a candy confection and link reading
“candy
here.” Consumers clicking on the
link are then connected to the Respondent’s confectionary sales website
associated with the domain <candydirect.com>. The Respondent’s use of the subject domain name is depicted below:
After having operated his retail confectionary business
for almost five (5) years without the subject domain name, the Respondent
registered the subject domain name subsequent to a competitor, the Complainant,
adopting the name and mark <candy2you.com>.
B.
Respondent
More
than one year before this Complaint was filed, on April 24, 2002 the Respondent
registered the subject domain name. Prior to
being contacted by the
Complainant’s counsel in December 2002, the Respondent had used the subject
domain name in connection with
the bona fide offering of candy. It has continued to use the subject domain
name.
Prior
to being contacted by the Complainant’s attorney in late December 2002, the
Respondent was not aware of any use, claim, or common
law rights in the name
CANDY2U or any other similar name. When the Respondent registered the subject
domain name, he was not aware
that the Complainant or anyone else had ever used the phrase <candy2you.com> or any similar
term or logo as a trademark, domain name or otherwise.
When
the Respondent registered the subject domain name, he did so without the
Complainant in mind.
Prior
to registering the subject domain name the Respondent checked the United States
Patent & Trademark Office’s publicly available
Trademark Electronic Search
System (TESS) database located at http://www.uspto.gov/main/trademarks.htm
for the term CANDY 2 U.
The
Respondent’s sole purpose and intention in registering the subject domain name
was the legitimate and fair use of the aptly descriptive
and concise phrase
CANDY2U, without intent to mislead or divert, but to fairly use such in
connection of the sale and delivery of
candy and personalized candy gifts to
consumers.
In
addition to his main candy sales website located at <candydirect.com> and
the website to which the subject domain name resolves,
the Respondent also is
the owner of three dozen candy sales websites, each of which is used, or
intended to be used, in its generic
sense to sell candy and to expand his
company’s Internet presence and holdings.
Thousands
of third parties own generic domain names which are anchored by online
shorthand such as 2U and 4U (including <candy2u.net>). The Respondent’s use of the subject domain
name does not infringe any protectable interest asserted by the
Complainant.
Through
its lawyer, the Complainant knew of the Respondent’s use of the subject domain
name prior to December 20, 2002 when it communicated
with the Respondent asking
him to cease using the name. The
Respondent’s lawyer replied on December 30, 2002 setting out the Respondent’s
position and offering to communicate further concerning
the matter.
The term CANDY is generic. For instance, the USPTO’s
Acceptable Identification of Goods and Services Manual
includes as possible classifications:
G 030 Candy
G 030 Candy bars
G 030 Candy cake
decorations
G 030 Candy
coated apples
G 030 Candy
coated popcorn
G 030 Candy
decorations for cakes
G 030 Candy
mints
G 005 Medicated
candy [indicate use/therapeutic claim]
The
term can·dy (knd) was not
coined by the Complainant and has its roots in Middle English, as crystallized
cane sugar, short for
sugre-candi,
translation of Old French sucre candi,
and Old Italian
zucchero candi both
from Arabic
sukkar qandy : sukkar, sugar + qandy, candied (from qand, cane sugar, probably from
Dravidian
kau, lump)] and is defined as: a rich
sweet confection made with sugar and often flavored or combined with fruits or
nuts; a piece of such
a confection.
As
of December 28, 2002, there were more
than 150 records of trademark filings which include both the terms “2” and
“YOU” and/or “U” together, including: Registration
No. 2,604,452 for OFFICE SUPPLIES 2 U; Registration No. 2,475,932 for DIRECT - 2 U; Registration No. 2,338,136
for ACCOUNTANTS 2 U; and Registration No. 2,220,874 for STEAKS 2 YOU.
Recent
WHOIS searches showed that there are presently 8,504 registered domain names
ending in “2U” including <accessories2u.com>,
<advisor2u.com>,
<advocates2u.com>, <agents2u.com>, <agift2u.com>,
<agooddeal2u.com>, <airtools.com>,
<all-free2u.com>,
<applications2u.com>, <appraisal2u.com>, <apts2u.com>,
<architech2u.com>, <arearugs2u.com>,
<art2u.com>,
<art2udirect.com>, <artdirect2u.com>, <artistdirect2u.com>,
<audio2u.com>, <auto2u.com>,
<autographs2u.com>,
<autoparts2u.com>, to name only a few of the first several hundreds
domain names starting with the
letter “A.” and ending in “2U.com”.
In addition, using any simple Internet search there is
evidence of widespread use of the phrase CANDY 2 YOU by hundreds of thousands
of third parties. Indeed, a search on
the Google search engine for the phrase “candy 2 you” revealed more than 1.6
million results, and the same search
on the AltaVista search engine revealed 1,582,471
results.
The
Complainant’s Alexa traffic rankings for <candytoyou.com> for the past
year show that at no time has its website achieved
a ranking within the top
100,000 sites visited.
C.
Additional Submissions
The
parties both filed additional submissions.
The
following information derives from the Complainant’s reply.
The
Complainant has common-law rights to the name and mark <candy2you.com> on the basis
that the name is “unitary” because “...it creates a commercial impression
separate and apart from any unregistrable component”. The Complainant’s mark is said to be unitary, or composite,
because it is a compound word formed by joining two terms “CANDY” and
“YOU”
with a numeral between.
The
Complainant’s website, which displays the Complainant’s mark, was operating at
least five months before the Respondent registered
the subject domain
name.
The Respondent has never used either
“CANDY2U” or “CANDY2U.COM” as a trademark, service mark, trade name, or other
source identifier.
In his lawyer’s lengthy December 31, 2002
e-mail, no mention was made of the Trademark Office searches prior to the
registration of
the subject domain name.
The subject domain name resolves to a
site upon which no goods or services are offered. The Respondent’s affidavit states the only use he has made of the
subject domain name is “as a forwarding page to my company’s main
website and
online candy store.”
The following information derives from
the Respondent’s supplemental submission.
Nearly
all of the Complainant’s evidence of its alleged “advertisements” occurred
after the Respondent registered the subject domain
name. The Complainant has made no effort to show
that anyone other than its principal has ever seen such advertisements in 2001,
and has
not established any long-term use or identified any particular
advertising campaigns.
The Complainant has not offered evidence of any sales.
The Respondent uses the subject domain name to sell candy.
A. The Complainant
The
Complainant relies on a common-law trademark interest in candy2you and asserts
that the subject domain name is confusingly similar.
It asserts that the name
has been used for a sufficient time and has adequate public recognition to
qualify as a common-law trademark. The
combination of words and the number 2 makes the name unitary.
The
Complainant contends that the Respondent does not have a legitimate interest in
the subject domain name because he is not usually
known by the name cancy2you
and uses the subject domain name only to attract customers to a website for
redirection to his existing
website.
Bad
faith is said to derive from the use the Respondent makes of the subject domain
and from the fact that he must have known about
his competitor, the
Complainant.
The
Claimant denies that it is guilty of reverse domain name hi-jacking and states
that it legitimately brought this proceeding.
No useful attempt to resolve the dispute was possible.
B.
The Respondent
The
Respondent asserts that the Complainant does not have a common-law trademark
because it has not provided sufficient evidence of
use, the name is composed of
generic words and names using 2you or 4you, are common.
The
Respondent’s legitimate interest is said to be shown by the fact that he uses
the subject domain name in his business to attract
customers. He owns three dozen candy sale’s websites
and is developing a strong Internet presence.
The Respondent questions the strength of the Complainant’s Internet
presence.
He
denies bad faith and states that before registering the subject domain name he
searched for trademarks using candy 2 you and found
none. He states that until contacted by the
Complainant’s lawyer in December 2002, he was unaware of the Complainant.
The
Respondent takes the position that the Complainant is guilty of reverse domain
name hi-jacking.
DISCUSSION
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
parties have referred extensively to domain name dispute decisions and to the
decisions of domestic court. While
these are neither binding nor controlling in this proceeding, consideration of
them often is useful.
The case
must be decided on the basis of the Policy.
The main
focus of the domain name dispute process is to deal with cybersquating. The process has a very limited capacity to
resolve disputes over intellectual property rights or to deal with matters of
credibility.
It is
apparent that the Complainant has used the name candy2you in its business. It asserts that it has had success doing
so. While the use has not been long,
there has been significant exposure.
The words “candy” and “you” are generic, but in combination with the
number “2” a coined name is created. While there is considerable
use of the
components of the name, the Respondent’s position would lead to the conclusion
that those who use such names could not
acquire trademark rights for them. This is not a proposition that should be
developed in a domain name dispute case.
Insofar
as customers are aware of the name candy2you, it is clear that the subject
domain name is confusingly similar to the name
used by the Complainant.
The
Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(i).
The Respondent is not known commonly by
the subject domain name and he uses it only to attract customers to his
previously existing
website. It is
likely that this attracts customers who otherwise would do business with the
Complainant. Presumably, the Respondent
uses his three dozen other websites for the same purpose, but the use of a
confusingly similar domain name
for this purpose is not legitimate.
The Administrative Panel is satisfied
that the Complainant has met the requirements of paragraph 4(a)(ii).
A finding that a respondent does not have
a legitimate interest in a domain name that is confusingly similar to the mark
of another
does not lead automatically to bad faith, but the facts that the
support the finding may be relevant to the bad faith inquiry.
The Respondent and the Complainant are
competitors. The Respondent’s
pre-registration search was not designed to uncover the Complainant, but only
the possible trademark registration
of the words which form the subject domain
name. The Respondent did not refer to
his searches in the December 2002 communication from his lawyer. The
Complainant contends that the
Respondent must have known of the Complainant at
the time the subject domain name was registered.
The Respondent denies that he knew of the
Complainant. He points to the fact that
he owns a significant number of websites which are related to the sale of
candy. There has been no attempt to
sell the subject domain name. It has
been used in the Respondent’s business from the time of registration and use
continues.
The Complainant legitimately raises a
suspicion, but a great deal more would be required to supplant the specific
evidence of the
Respondent. On the
facts of this case and with the limited ability of the Administrative Panel to
resolve issues of credibility, the information
provided by the Respondent
cannot be dismissed.
The Administrative Panel is not satisfied
that the Complainant has met the requirements of paragraph 4(a)(iii).
In his December 31, 2002 letter, the lawyer for the
Respondent suggested that the parties might attempt to resolve the
dispute. They should have done so, but
the Complainant’s failure to respond positively to the initiative does not lead
to a finding that it
seeks a reverse hi-jacking of the subject domain
name. It is entitled to seek lawful
redress unless it does so illegitimately.
There is intensity in the feeling of both
parties. Each is incensed by the
position of the other. Both have put
forward very well presented and strong cases.
The Administrative Panel does not
conclude that the Complainant is guilty of an attempt to reverse hi-jack the
subject domain name.
DECISION
Having
failed to established all three elements required under ICANN Policy, the Panel
concludes that relief shall be DENIED.
These
findings are in the context of the limited mandate of an administrative panel
in a domain name dispute proceeding.
Edward C. Chiasson, Q.C., Panelist
Dated: June 19, 2003
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URL: http://www.worldlii.org/int/other/GENDND/2003/630.html