DECISION

Principe Foods, Inc. v. Donald Olson a/k/a Don Olson

Claim Number: FA0305000156843

PARTIES

Complainant is Principe Foods, Inc., (“Complainant”) represented by Richard A. Harris of Wild Carter & Tipton. Respondent is Donald Olson a/k/a Don Olson, (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <principefoods.com> registered with Register.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 8, 2003; the Forum received a hard copy of the Complaint on May 12, 2003.

On May 8, 2003, Register.com confirmed by e-mail to the Forum that the domain name <principefoods.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com verified that Respondent is bound by the Register.com 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 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 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@principefoods.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <principefoods.com>, is identical to Complainant’s PRINCIPE FOODS mark.

2. Respondent has no rights or legitimate interests in the <principefoods.com> domain name.

3. Respondent registered and used the <principefoods.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is incorporated in the state of California under the “Principe Foods, Inc.” name. Complainant filed its article of incorporation with the California Secretary of State on May 30, 2000.

Respondent registered the <principefoods.com> domain name February 20, 2003. Respondent is using the disputed domain name to post disparaging remarks about Complainant.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(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.

Identical to and/or Confusingly Similar

It is clear that Respondent’s <principefoods.com> domain name is basically identical to Complainant’s PRINCIPE FOODS mark because the disputed domain name appropriates Complainant’s entire mark and simply omits the space between the words and adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. Neither the omission of the space nor the addition of the gTLD sufficiently differentiates Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).

However, Complainant must establish more than that the disputed domain name is identical or confusingly similar to Complainant’s mark to fulfill the requirements of the Policy. Pursuant to Policy ¶ 4(a)(i), Complainant must initially prove that it has protectible rights in the PRINCIPE FOODS mark. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”); see also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible, and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name).

Complainant submitted no evidence in this proceeding that it holds a registered trademark or service mark for the mark, PRINCIPE FOODS. Complainant’s sole piece of evidence submitted is its Article of Incorporation filed with the California Secretary of State on May 30, 2000, which indicates Complainant is incorporated in that state under the “Principe Foods, Inc.” name. However, this evidence is not sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See 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, is insufficient to create a trademark); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, without further evidence of common law trademark, the Complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).

In order to be awarded the requested remedy, Complainant also could have established that it had rights in the PRINCIPE FOODS mark by showing that it had developed common law rights in the PRINCIPE FOODS mark. See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Or, Complainant could have proffered evidence that the PRINCIPE FOODS mark was inherently distinctive or that it had acquired distinctiveness through secondary meaning. See 15 U.S.C. § 1052(e)-(f); Lanham Act § 2(f), (A term is generally not viable for registration if it is “merely descriptive” when applied to the goods of the applicant. However, an exception is made for terms, which, although merely descriptive, have become “distinctive of the applicant’s goods in commerce.” If such “secondary meaning” is shown, the mark may be registered); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)  (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning the Complainant must show that the public identifies the source of the product rather than the product itself).

In the absence of evidence establishing legal or common law rights or distinctiveness, the Panel finds that Complainant failed to establish that it has rights in the PRINCIPE FOODS mark with regard to Policy ¶ 4(a)(i).

The Panel need not address further the remaining elements related to rights to or legitimate interests under Policy ¶ 4(a)(ii) or registration and use in bad faith under Policy ¶ 4(a)(iii) because Complainant is required to prove each element of the Policy. See CyberImprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, although Respondent’s domain name <cyberimprints.com> was identical to Complainant’s incorporated business name, Complainant did not claim to hold any trademark or service mark rights in CYBERIMPRINTS or CYBERIMPRINTS.COM, and therefore, its request for transfer was denied); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

The Panel denies Complainant’s request for relief, without prejudice to Complainant’s filing a subsequent Complaint that demonstrates such rights in the PRINCIPE FOODS mark pursuant to Policy ¶ 4(a)(i).

DECISION

Having failed to establish all three elements required under ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <principefoods.com> domain name REMAIN with Respondent.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 10, 2003.

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