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Generic Top Level Domain Name (gTLD) Decisions |
Molecular Nutrition, Inc. v. Network News
and Publications c/o Dennis Baratta
Claim Number: FA0305000156715
PARTIES
Complainant
is Molecular Nutrition, Inc., Jupiter,
FL (“Complainant”) represented by Pamela
A. Johnson, of Isaacson Rosenbaum
Woods and Levy PC. Respondent is Network News and Publications c/o Dennis Baratta, Smyrna, GA
(“Respondent”) represented by Dennis Baratta,
of Network News and Publications.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <molecularnutrition.com>,
registered with Dotster.
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.
Dennis
A. Foster, Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 2, 2003; the Forum received
a hard copy of the Complaint
on May 5, 2003.
On
May 8, 2003, Dotster confirmed by e-mail to the Forum that the domain name <molecularnutrition.com> is
registered with Dotster and that the Respondent is the current registrant of
the name. Dotster has verified that Respondent is
bound by the Dotster
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 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 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@molecularnutrition.com by e-mail.
A
timely Response was received and determined to be complete on May 29, 2003.
On June 9, 2003,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
--
Complainant operates a nutritional supplements business in the United States,
selling its products primarily over the Internet
and through a variety of
distributors located in more than ten states.
--
Complainant has been using the trademark “Molecular Nutrition” since March of
2001 in connection with its products and currently
owns the domain name <molecularnutrition.net>,
which it registered on April 16, 2000.
--
The disputed domain name is identical or confusingly similar to Complainant's
mark, as they both contain the same words.
Complainant has received many complaints from its customers that they
have attempted to reach Complainant through the disputed domain
name. Complainant is losing sales because of this
confusion.
--
Respondent has no legitimate interest in the disputed domain name. Respondent is not involved in any industry
connected to nutrition. Since it
registered for the domain name, Respondent has not used the domain name for the
good faith offering of goods and services
or for any other purpose.
--
Respondent is holding the disputed domain name in bad faith. Respondent does not appear to be using the
disputed domain name. Complainant
offered to buy the name from Respondent for $1,000, but Respondent refused to
sell it unless Complainant was willing to
make a much higher offer.
B.
Respondent
--
Respondent, founded in 1996, is in the business of producing publications
regarding nutritional supplements, health issues and
direct marketing topics.
--
Complainant has not established rights to the trademark or service mark
"molecular nutrition".
Respondent has searched the United States Trademark Office and found
only an abandoned notice with Complainant's application for that
mark. "Molecular" and
"nutrition" are merely descriptive and general terms and
common words, and thus unlikely to ever be eligible for trademark recognition.
--
Respondent does have rights and legitimate interests in the disputed domain
name. Rights and interests in a domain name are decided based on the
principle of first-registration in the case of registration of a domain
name
made up of generic and descriptive words. In this case, Respondent's registration of the disputed
domain name preceded Complainant's existence and use of the "Molecular
Nutrition"
mark. Moreover, since
the disputed domain name was first registered, Respondent has intended to use
it in conjunction with a planned publication,
Molecular Nutrition,.
--
Respondent did not register and is not using the disputed domain name in bad
faith. Respondent registered the name
on April 16, 2000 for its own business interests prior even to the founding of
Complainant in July,
2001. Respondent and Complainant did engage in a series of
communications, initiated by Complainant, during which Complainant first
offered
Respondent $500, then $1,000 for the name.
The latter offer was accompanied by various threats and coercive
language which only increased Respondent's determination to refuse
to sell for
a price which Respondent told Complainant was much too low in any event.
FINDINGS
-- Complainant operates a nutrition
supplements business and has been selling products under the name
"Molecular Nutrition"
since 2001 over the internet and through
distributors. It does not have a registered
trademark or service mark in that name.
-- Respondent produces publications
concerning nutritional supplements and registered the disputed domain name
<molecularnutrition.com>
on April 16, 2000.
-- Complainant and Respondent engaged in a series of
communications, initiated by Complainant, during which Complainant offered as
much as $1,000 for the disputed domain name, an offer that Respondent declined.
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.
Complainant has not furnished the Panel
with any evidence that Complainant currently owns a valid trademark or service
mark registration
in the name, "Molecular Nutrition", or any similar
trademark name. Failing to furnish the
Panel with such evidence, Complainant may sustain the very first element of its
case only by providing the
Panel with alternative evidence that its use of the
name "Molecular Nutrition" has given Complainant common law trademark
rights in that name. Prior panels have
recognized “common law” trademark rights as appropriate for protection under
the Policy if the complainant can establish
that it has done business using the
name in question in a sufficient manner to cause a secondary meaning
identifiable to Complainant's
goods or services. See for example United
Artists Theatre Circuit, Inc. v Domains for Sale Inc., D2002-0005 (WIPO
Mar. 27, 2002) and Meijer, Inc. v
Porksandwich Web Services, FA 97186 (Nat. Arb. Forum July 6, 2001).
In this case, Complainant alleges that it
has been selling its products over the Internet and through distributors under
its mark
for a little more than two years.
Even if the Panel accepts Complainant's contention that its sales
involve as many as ten states in the United States, Complainant
has supplied
the Panel with no documentation to determine the volume and scale of such
sales. Furthermore, the Panel possesses
no independent knowledge that any significant group in the population
identifies the relatively non-distinctive
words, "Molecular
Nutrition", exclusively, or even primarily, with Complainant's products to
produce a secondary meaning.
Given that the Policy puts the burden
squarely on Complainant to establish the fundamental trademark or service mark
rights that serve
as the foundation for these proceedings, the Panel cannot
find in the record any basis to conclude that Complainant has obtained
trademark or service mark rights in the name "Molecular Nutrition" at
common law.
DECISION
Having
failed to establish the first element required under paragraph 4(a)(i) of the
ICANN Policy, the Panel concludes that relief
shall be DENIED.
Accordingly, it is Ordered that the <molecularnutrition.com> domain
name remain registered to Respondent, Network News and Publications c/o Dennis
Baratta.
Dennis A. Foster, Panelist
Dated: June 24, 2003
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