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Deborah Kanani d/b/a Mendocino Weddings v. Ted Kidwell [2004] GENDND 813 (4 June 2004)

1. The Parties

The Complainant is Deborah Kanani d/b/a Mendocino Weddings, Comptche, California, United States of America, represented by Mansfield Law Office, United States of America.

The Respondent is Ted Kidwell, Fort Bragg, California, United States of America, represented by Simpson Partners LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mendocino-weddings.com> is registered with The NameIT Corporation d/b/a NameServices.net.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2004. On February 27, 2004, the Center transmitted by email to The NameIT Corporation d/b/a NameServices.net a request for registrar verification in connection with the domain name at issue. On March 1, 2004, the NameIT Corporation d/b/a NameServices.net transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2004. The Response was filed with the Center on March 23, 2004.

The Center received on March 25, 2004: a further statement by Complainant; a letter from Respondent's representative; and a reply letter from Complainant's representative.

The Center appointed Nels T. Lippert as the sole panelist in this matter on April 27, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel requested and on May 17, 2004, the Center re-set the decision date to May 25, 2004.

4. Factual Background

Complainant, Deborah Kanani, is an individual doing business as Mendocino Weddings. Complainant registered Mendocino Weddings as a fictitious business name with the Mendocino California County Clerk's Office at least as of May 19, 1997, and registered the domain name <mendocinoweddings.com> on July 28, 1997.

Mendocino Weddings is not registered by Complainant as a service mark either with the State of California or on the United States Federal Register.

Respondent, Ted Kidwell, operates the Weller House Inn and registered the disputed domain name on January 25, 2000.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

• Complainant has been using the name Mendocino Weddings for at least 17 years for a wedding planning and coordination business operated out of Comptche, California and has submitted records evidencing use of "Mendocino Weddings" as a business name since at least 1995.

• Complainant has established an Internet website which can be reached through the domain name <mendocinoweddings.com>.

• Complainant has common law trademark rights to "Mendocino Weddings" through use thereof as a business name and as a domain name. Although "Mendocino Weddings" originated as a descriptive mark, it has acquired secondary meaning by use over an extended period of time and through sales and advertising.

• The disputed domain name is identical or confusingly similar to Complainant's mark and domain name because it differs only by the addition of a dash between "Mendocino" and "Weddings" and is likely to cause confusion among the consuming public.

• Respondent has no rights or legitimate interests in respect of the disputed domain name because he had full knowledge of Complainant's business and domain name before registering the disputed domain name and, therefore, there can be no bona fide preparation to offer or promote wedding services through such disputed domain name.

• Neither Respondent nor the establishment he operates have ever been known by the name Mendocino Weddings.

• Respondent is not making use of the domain name for a non-commercial purpose; but instead is using the disputed domain name to divert traffic from individuals looking for Complainant's business.

• Respondent's knowledge of Complainant's name and mark before registration of the disputed domain name, coupled with the offer to sell the domain name back to Complainant for a sum in excess of reasonable out-of-pocket expenses demonstrates that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent contends that:

• Complainant has no trademark rights in "Mendocino Weddings" because the term is descriptive and Complainant has not established proof of acquired secondary meaning.

• Even if Complainant has rights in the alleged mark, Respondent's use constitutes a fair use because Respondent's use of the term is in its purely descriptive sense and not as a trademark.

• Respondent's registration and use of the disputed domain name is not in bad faith because the domain name was not registered primarily with an intent to sell, rent or transfer for excess consideration. Respondent alleges he chose the disputed domain name because he wished to develop a companion website to <wellerhouse.com> to better advertise the Weller House Inn as a location for weddings in Mendocino County; and that the website has been in use with respect to promoting the Weller House Inn for weddings since January 2000.

• It was only after Respondent was threatened with litigation by Complainant that Respondent proposed to sell the domain name for an amount that was reasonable in light of its established value.

• Respondent did not register the disputed domain name to prevent Complainant from registering <mendocino-weddings.com> because Complainant had already registered Complainant's domain name.

• Respondent did not register the disputed domain name for the purpose of disrupting Complainant's business because Respondent and Complainant are not competitors and Complainant has provided no evidence of economic harm.

• Complainant has provided no evidence that Respondent's use of the domain name is an intentional attempt to attract for commercial gain Internet users to Respondent's website by creating a likelihood of confusion with the Complainant's mark. With regard to Complainant's contention that Respondent's use of "Mendocino" in the domain name is misleading because Respondent's establishment is not located in the Town of Mendocino, Respondent responds that because his establishment is located in Mendocino County, the use of "Mendocino" in his domain name is not misleading.

6. Discussion and Findings

At the outset, the Panel has reviewed the supplemental filings of the parties on March 25, 2004, and declines to consider such submissions because they do not add anything to the facts and allegations of the Complaint and Response.

In order for Complainant to prevail and have the disputed domain name <mendocino-weddings.com> transferred to itself, Complainant must prove the following:

(Policy 4(a)(i-iii)):

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has rights

The Panel is satisfied that the disputed domain name is confusingly similar to "Mendocino Weddings". The addition of a hyphen between "Mendocino" and "Weddings" does not create a new or different mark.

However, the Panel is of the view that the Complainant has failed to establish that it has protectable rights in the phrase "Mendocino Weddings". Complainant admits that the phrase "Mendocino Weddings" is descriptive of the services performed under Complainant's business. It immediately calls to mind a wedding planning business for weddings in Mendocino County. Complainant contends, however, that the mark has acquired secondary meaning and is thus protectable under common law rights, due to the length of time of use and consumer recognition. Where, as here, the mark is a highly descriptive term "a party seeking to establish exclusive rights carries a heavy burden of proof in removing the term from the public domain." Snowboards-for-sale.com, Inc. v. Name Administration Inc., WIPO Case No. D2002-1167 (February 19, 2003). "Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition." Id.

While it is undisputed that Complainant has carried out her business under the name "Mendocino Weddings" for over a decade, no other credible evidence concerning the other tests has been introduced. Those letters and testimonials submitted by Complainant, while supporting the claim of long use of the name do not establish consumer recognition. The letters and testimonials are all from people that are suppliers or acquaintances of Complainant. Notably, Complainant has not submitted evidence of total advertising expenditures, the amount of sales under the mark or most importantly, a consumer survey or evidence of media recognition (the sole reference to "Mendocino Weddings" in the article in Martha Stewart Living dated June 20, 1998, Exhibit N to the Complaint is not compelling.) Moreover, as Complainant admits, any consumer recognition is limited to "Mendocino County and its surrounding environs."

As pointed out by the Respondent, numerous organizations in Mendocino County refer to "Mendocino" and "Weddings"; and the exact phrase "Mendocino Weddings" is commonly used descriptively as illustrated by a Google search. As such, the phrase is not a source indicator and absent compelling evidence of secondary meaning, cannot be used exclusively by one person to the exclusion of others.

While the Complaint certainly presents a compelling story of unfairness, under the present facts and evidence, it is not one that can be resolved under the UDRP.

The Panel finds that the disputed domain name employs a term that is descriptive and the Complainant has not met the proof required to establish that she has rights in the phrase "Mendocino Weddings". As the Panel has found that the Complainant has failed to prove this element, it is unnecessary to consider whether the Respondent has rights or legitimate interests in respect of the disputed domain name and whether the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Nels T. Lippert
Sole Panelist

Date: May 27, 2004