DECISION

OnlineHobbyist.com, Inc. v. SerpenCo

Claim Number: FA0311000213440

PARTIES

Complainant is OnlineHobbyist.com, Inc. (“Complainant”) represented by Robert J. Barringer 1950 Dryden, #3, Houston, TX, 77030.  Respondent is SerpenCo  (“Respondent”) represented by Anthony J. DeGidio, 3738 Treelawn Dr., Toledo, OH, 43614.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kingsnakes.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

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 Panelists in this proceeding.

James Carmody, Esq., Hon. Bruce E. Meyerson (Ret.), and Prof. David Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 20, 2003; the Forum received a hard copy of the Complaint on November 24, 2003.

On November 20, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <kingsnakes.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that the Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 December 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 22, 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@kingsnakes.com by e-mail.

An untimely Response was received January 2, 2004.  Complainant submitted an untimely Additional Supplement on January 14, 2004, and Respondent submitted a Reply to the Additional Supplement on January 16, 2004.  The Panel, in the exercise of its discretion, has considered all of the foregoing submissions. 

On January 15, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed James Carmody, Esq., the Hon. Bruce E. Meyerson (Ret.), and Prof. David Sorkin as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant (Including Additional Submissions)

Complainant describes itself as a web-based media, hosting a classified ad service company which functions as a “portal” for owners, hobbyists, and businesses for the reptile and amphibian community.  Complainant asserts that it is not in the business of selling snakes and does not sell snakes on its website. Complainant contends that Respondent owns and operates many websites, one of which is a competing site directed at the reptile and amphibian community.

According to Complainant, “kingsnake.com” has acquired a common law trademark through a secondary descriptive meaning that is eligible for protection under the UDRP.   Complainant contends that its website has become distinctive and acquired a secondary meaning because many thousands of messages have been posted on discussion sites about reptiles that specifically reference Complainant’s “kingsnake.com” site.  Complainant asserts that the majority of these web postings directly discuss the Complainant’s services at its website and not the generic meaning of the term king snake.

 

Complainant asserts that the disputed domain name, <kingsnakes.com>, has the potential to cause confusion both phonetically and visually with the Complainant's “trademark.”  Thus, Complainant contends that the Panel should conclude that the domain name is confusingly similar to a trademark or service mark in which the Complainant has prior common law trademark rights.

Furthermore, Complainant contends that the panel should find that the Respondent has acted in bad faith primarily to disrupt Complainant’s business and to gain commercially by intentionally misdirecting internet users to the competing website. Moreover, Complainant contends that bad faith is evidenced by Respondent’s offer to sell the domain name.

B. Respondent (Including Additional Submissions)

Respondent contends that Complainant is a competitor of Respondent and that both entities operate businesses relating to the selling of snakes and both use the internet to further their business goals.  Respondent contends that “king snakes” is a generic term referring to a particular type of snake.

Respondent acknowledges that Complainant has filed an application to register “kingsnake.com” with the United States Patent and Trademark Office (“USPTO”), but contends that the “mark” is generic and merely descriptive of the services offered by Complainant.  Respondent acknowledges that <kingsnakes.com> is almost identical to “kingsnake.com” but again, contends that Complainant’s website address cannot form the basis of a trademark.

FINDINGS

Complainant is a web-based media which functions as a “portal” for owners, hobbyists, and businesses for the reptile and amphibian community.  Complainant filed in June 2003 a trademark application for “kingsnake.com” with the USPTO (Ser. No. 78258091), although the record indicates that the USPTO has refused to publish the mark for “opposition.”   

Respondent has been in the business of breeding and selling snakes, including king snakes, since 1991.  The domain name <kingsnakes.com> was first registered by another party in 1998 and acquired several years later by Respondent.

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 Lacks “Rights” in its Claimed Trademark

It is Complainant’s position that “kingsnake.com” has become distinctive and has acquired secondary meaning.  In support of this position, Complainant contends, among other things, that there are many thousands of postings on various Internet sites wherein individuals have made reference to their use of the “kingsnake.com” site and this site was recognized for its services in “Yahoo Internet Life” which references the types of resources available to the public.  Respondent contends that the words “king snake” are generic and not eligible for protection as a common law trademark.[1]

Unregistered marks may be either generic or descriptive.  A generic term is the name of a product, service or thing “itself—what [the thing] is, and as such . . . the very antithesis of a mark.”  2 J. Thomas McCarthy, Trademarks and Unfair Competition § 12:1[1] (4^th ed. 1997). Descriptive terms, unlike generic terms, can be subject to trademark protection provided they acquire secondary meaning.  To establish rights in an unregistered  descriptive mark, a complainant bears a substantial burden of proving distinctiveness and secondary meaning.  Chromalloy Men’s Apparel Group v. Burch & Hatfield Formal Shops, D2000-1046 (WIPO Oct. 20, 2000).

It appears to the Panel that “king snake” is a term that describes a type of snake and is therefore generic if used by Complainant to describe his goods (i.e., snakes).   Moreover, even assuming “king snake” was being used by Complainant as a weak descriptive mark, Complainant has not established a sufficiently clear secondary meaning to obtain common law trademark protection.  Although Internet users may use Complainant’s website to access information about snakes and other reptiles, such use cannot create common law trademark rights where none by law can exist.

Because Complainant cannot establish that it has “rights” in a trademark or service mark, it is unnecessary to consider the remaining UDRP policy elements.

DECISION

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

James Carmody, Esq., Hon. Bruce E. Meyerson (Ret.), and Prof. David Sorkin, Panelists
Dated: February 3, 2004

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