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Generic Top Level Domain Name (gTLD) Decisions |
Polaner, Inc. v. DNS Services, a/k/a
Polaner.com
Claim Number: FA0407000295201
Complainant
is Polaner, Inc. (“Complainant”), represented by Sana Hakim of Bell, Boyd & Lloyd PLLC,
70 West Madison, Suite 3300, Chicago, IL 60602. Respondent is DNS Services, a/k/a Polaner.com (“Respondent”),
represented by Molly O. Kangas
of Eyetooth Branding and Trademark, 325 Bleecker Street, Floor
6-19, New York, NY 10014.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <polaner.com>,
registered with Enom, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Jeffrey
M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 8, 2004; the Forum received
a hard copy of the Complaint
on July 12, 2004.
On
July 9, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <polaner.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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
July 16, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of August 5,
2004 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@polaner.com by e-mail.
A
Response was received and determined to be complete on August 6, 2004.[1]
On
August 10, 2004, Complainant filed a “Supplement to Complaint” in accordance
with Supplemental Rule 7.
On August 18, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Jeffrey M.
Samuels as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
notes that it filed a UDRP complaint against the instant Respondent concerning
the <polaner.com> domain name on February 16, 2004. On April 12, 2004, a single member panel of
the National Arbitration Forum denied Complainant’s request to transfer the
domain name. See Polaner, Inc. v. DNS Service, FA 237522
(Nat. Arb. Forum, Apr. 12, 2004). Complainant maintains that the original
decision constitutes a “breach of natural justice”
justifying the re-filing of
the Complaint and reconsideration of the prior Panel’s “erroneous” decision.
According
to Complainant, the original decision constitutes a “breach of natural justice”
in at least two respects. First, the
decision demonstrates an “obvious and inexcusable carelessness” in the Panel’s
consideration of the facts. For
example, Complainant declares, while the Panel indicated that “Respondent had
knowledge of Complainant’s charitable services and
associated reputation,”
Complainant does not offer such services.
Second,
the original decision ignored the true facts and evidence offered in its
support. Specifically, Complainant offered evidence
of bad faith use by
Respondent by citing to, and including a copy of, another case (see L’Oreal USA Creative Inc. v. Syncopate.com,
FA 203944 (Nat. Arb. Forum Dec. 8, 2003)) demonstrating Respondent’s pattern of
registering domain names and preventing the owner
of the mark from reflecting
its mark in a corresponding domain name.[2] The original Panel found that Complainant
failed to show that Respondent had engaged in a pattern of such conduct and
then concluded
that “thus no evidence exists before the panel showing that
respondent has used the domain name in bad faith.”
According
to Complainant, the original Panel not only erred in failing to find a “pattern
of such conduct,” but also ignored the well-established
rule that failing to
use a disputed domain name for a legitimate business or noncommercial purpose
itself constitutes bad faith registration
and use of the domain name. In this regard, Complainant notes that
Respondent had owned the disputed domain name for almost three years but the
domain name still
does not resolve to an active website.
The
instant Complaint is “substantively identical” to the Complaint filed on
February 16, 2004. Complainant asserts that it has exclusively
and continuously
used the mark POLANER since at least as early as 1896 for jams, jelly,
marmalade, fruit preserves, fruit spreads,
and other food products. Complainant owns a number of U.S. trademark
registrations that incorporate the term POLANER. See, for example, U.S. Trademark Registration Nos. 596,870
(POLANER); 1,124,752 (POLANER LITE); and 1,545,485 (POLANER FANCY FRUIT). Complainant then alleges that the <polaner.com>
domain name is, with the exception of the generic element “com”, identical and
confusingly similar to Complainant’s company name
and POLANER family of marks.
Complainant
further contends that Respondent has no legitimate rights in the disputed
domain name. According to Complainant,
the domain name had and has no relevance to Respondent; upon information and
belief, Respondent was not
commonly known as POLANER prior to registering the
domain name and is not currently known as POLANER; and Respondent is not a
licensee
of Complainant’s POLANER marks and is not otherwise authorized to use
such marks.
Finally,
Complainant maintains that Respondent registered the domain name in bad faith.
It contends that bad faith may be presumed
in this case given the fact that all
but one of its POLANER marks has been registered for at least five years. Complainant also argues that Respondent has
registered and is using the domain name in bad faith by preventing Complainant
from using
its company name and identity in a corresponding domain name and by
registering other domain names to which it has no rights or legitimate
interests. Complainant also notes that, on January 6, 2004, its legal counsel
sent a “cease and desist” letter to Respondent and
that Respondent failed to
respond.
B.
Respondent
In
its Response, Respondent argues that it registered the domain name as an email
address for individuals or newly conceived businesses
sharing the “Polaner”
family name. According to Respondent, the name “Polaner” is a family name
shared by thousands worldwide.
Respondent
contends that Complainant has no trademark rights in POLANER given the fact
such name is shared by families worldwide.
It further argues that it has rights or legitimate interests in the
domain name since such name is and has been offered for use as
an email or for
outright purchase for parties with the “Polaner” name. Respondent cites the decisions in Puls Elektronische Stromversorgungen GmbH v.
NetIdentity, D2002-0205 (WIPO May 31, 2002), and Emilio Pucci SRL v. Mailbank.com, Inc.,
D2000-1786 (WIPO Mar. 19, 2001), in support of its argument.
With
respect to the issue of “bad faith” registration and use, Respondent contends
that it was not aware of Complainant’s “jam interest”
and that Complainant’s
primary mark until late 2003 was “Allfruit.” Respondent suggests that any
alleged pattern of conduct by Respondent
would be expected to involve the
“Allfruit” mark but that, in fact, Respondent has no domain names containing
this text string. According to Respondent,
the “Polaner” name has not been significantly advertised or appeared in stores
outside of the primary “Allfruit”
brand, except for mashed garlic.
Respondent
further alleges that it may not be found to have attempted to attract internet
users to its web site by creating a likelihood
of confusion with Complainant’s
mark given that Complainant sells foodstuffs and Respondent offers email and
web services.
Accusing
the Complainant of misrepresenting the nature of the parties’ communications,
Respondent seeks a finding of reverse domain
name hijacking.
C.
Additional Submissions
In
addition to contending that Respondent’s Response was untimely and should not
be considered, an argument considered and rejected
in footnote 1 to the
decision, Complainant, in its “Supplement to Complaint,” contends that in view
of its existing U.S. registrations
for the mark POLANER, it is clear that
Complainant has rights in the mark.
With
respect to Respondent’s contention that it intends to provide email services
using the <polaner.com> name or otherwise offer the domain name to
someone with the “Polaner” surname, Complainant suggests that the evidence[3]
establishes that Respondent is not in the business of providing email
services. Rather, Complainant
maintains, Respondent is engaged is “logo design, brand name and tagline
conception, U.S. trademark research and
marketing consultation” and registers
domain names to support those services.
According to Complainant, “[s]uch hoarding of domain names to sell to
third parties, including potential competitors of Complainant,
is not and never
has constituted a `legitimate interest’ or a `bona fide offering of goods and
services’. To the contrary, such
activity actually constitutes evidence of Respondent’s bad faith registration
and use of the polaner.com domain
name.”
Complainant
also argues that, in addition to the evidence about Respondent’s pattern of
registering domain names incorporating the
marks of third-parties, “bad faith”
registration and use is established by Respondent’s false and misleading
statements and contact
information.
Complainant asserts that the evidence reveals that Respondent uses at
least three different corporate identities to register domain
names, namely,
DNS Services, Syncopate.com, and MarketPoints.com, and that mail sent to
Respondent at its stated address has been
returned with the notation “No Such
Person.”
FINDINGS
The
Panel concludes that the instant Complaint may not be entertained under the
Uniform Policy and, thus, declines to reach the merits
of the case.
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 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 the 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.
As
noted in Grove Broad. Co. Ltd. v.
Telesystems Communications Ltd., D2000-0703 (WIPO Nov. 10, 2000), there is
no procedure in the Policy, the Rules, or the Supplemental Rules for either an
appeal
against a Panel’s decision or for reconsideration of a Panel’s decision.
Under
Clause 15(a) of the Policy, a Panelist is required to “decide a complaint on
the basis of the statements and documents submitted
and in accordance with the
Policy, these Rules and any rules and principles of law that it deems
applicable.” As pointed out in Grove, in most common law jurisdictions,
once a party has been given a defended hearing in a court and a decision
rendered, then a case
cannot be re-litigated unless either: (a) the decision is
overturned on appeal or (b) limited grounds for rehearing or reconsideration
by
the first-instance court have been established. Where, as in this case, the re-filed Complaint is based on the
same acts that formed the basis of the original Complaint, Grove instructs that the re-filed Complaint should only be accepted
for adjudication in “exceptional” circumstances. Such “exceptional”
circumstances are usually specified in Rules of Court and can include, for
example: (a) serious misconduct on the part of a judge,
juror, witness, or
lawyer; (b) perjured evidence being offered to the court; (c) the discovery of
credible and material evidence
which could not have been reasonably foreseen or
known at trial; and (d) a breach of natural justice.
With
respect to “breach of natural justice,” the argument advanced by Complainant in
this case, the Grove Panel pointed
out that breach of the rules of natural justice are unlikely to occur since
Panelists receive the submissions of both
parties for consideration and one
expects all ICANN providers to exercise quality control and provide Panelists
with some adjudicatory
or forensic experience and repute. “A disgruntled party
would have to offer strong proof in
order to sustain a rehearing on this ground.” (emphasis added)
This
Panel concludes that the approach outlined in Grove and applied in subsequent cases[4]
provides an appropriate framework for determining whether a re-filed Complaint
may be heard and decided. As set forth
above, Complainant asserts that the initial decision in this matter constitutes
a breach of natural justice in that it
relied on “imaginary facts” regarding
Complainant’s charitable services; rejected, despite the decision in the L’Oreal case, Complainant’s assertion
that Respondent had engaged in a pattern of registering domain names and
preventing the owner of the
mark from reflecting its mark in a corresponding
domain name; and ignored the well-established rule that failing to use a
disputed
domain name itself constitutes evidence of bad faith registration and
use.
The
instant Panel has reviewed carefully the earlier decision in this matter. With respect to Complainant’s argument
regarding reliance on “imaginary facts,” the instant Panel notes that the earlier
Panel’s discussion
regarding Complainant’s charitable services arose solely in
the context of a determination of whether the domain name was registered
in bad
faith. The earlier Panel concluded that
the domain name was registered in bad faith.[5]
Thus, this error on the part of the earlier Panel was “harmless.”
With
respect to the earlier Panel’s refusal to find a pattern of conduct of
registering domain names, the L’Oreal
decision does not suggest, let alone require, a contrary determination. The L’Oreal
Panel found that Respondents in that matter, who are apparently related to the
instant Respondent, registered and used the <kiels.com>
domain name in
bad faith on grounds that the registration was primarily for the purpose of
disrupting the business of a competitor
and that Respondents’ use of the domain
name attempted to attract internet users to Respondents’ website for commercial
gain by creating
a likelihood of confusion with Complainant’s mark. There is nothing in L’Oreal to support a determination that the instant Respondent has
engaged in a pattern of registering domain names.
Complainant
contends that the earlier Panel’s decision ignores “the well-established rule
that failing to use a disputed domain name
for a legitimate business or
noncommercial purpose, also known as `passive holding,’ itself constitutes bad
faith registration and
use of the domain name.”[6] As related above, Complainant asserts, and
the evidence establishes, that the domain name in dispute has not been used for
almost
three years.
However,
the earlier-filed Complaint is at best ambiguous as to whether it can be
interpreted to set forth a case of “passive holding.” In that portion of the Complaint addressing the issue of
“legitimate rights,” Complainant asserted as follows: “Respondent is not a licensee of
Complainant’s POLANER marks and is not otherwise authorized to use
Complainant’s marks. Consequently,
Respondent has no legitimate business purpose with which it can use the domain
name and is not in fact using the domain
name for a legitimate business
purpose.” The term “passive holding”
did not appear anywhere in the original complaint. Nor did Complainant cite to any case holding that “passive
holding” is evidence of bad faith registration and use.
Applying
the Grove analysis to the facts of
this case, the Panel concludes that this is not such an exceptional case to
warrant acceptance of the re-filed
Complaint.
For the reasons set forth above, the proof advanced by Complainant in
support of re-filing is not so strong as to support a determination
that the
earlier Panel decision constitutes a breach of natural justice.[7]
DECISION
Having
concluded that Complainant’s re-filed Complaint may not be entertained under
the procedure for dispute resolution provided
by the Uniform Policy, the Panel
concludes that relief shall be DENIED.
Jeffrey M. Samuels, Panelist
Dated: September 5, 2004
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