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Generic Top Level Domain Name (gTLD) Decisions |
Batesville Services, Inc. and Batesville
Casket Company, Inc. v.
All County Funeral Home
Claim Number: FA0406000289006
PARTIES
Complainant
is Batesville Services, Inc. and
Batesville Casket Co., Inc. (“Complainant”), represented by Erin Roth Bohannon, of Barnes & Thornburg,
11 South Meridian Street, Indianapolis, IN 46204. Respondent is All County Funeral Home (“Respondent”),
1107 Lake Ave., Lake Worth, FL 33460.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <batesvillecasket.com>
and <batesvillecaskets.com>, registered with Network Solutions, Inc.
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.
Mr. Peter L. Michaelson, Esq. as
Presiding Panelist, and Hon. Tyrus R. Atkinson and Hon. Daniel B. Banks, Jr.
(Ret.) as Co‑Panelists.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the
Uniform Domain Name Dispute Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrp‑policy‑24oct99.htm>,
which was adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999, and approved on October
24, 1999, and in
accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution
Policy (“Rules”) as approved on October
24, 1999, as supplemented by the
National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy
then in effect (“Supplemental Rules”).
The
Complainants submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on June 22, 2004; the Forum
received a hard copy of the
Complaint, together with Exhibits A‑D, on June 24, 2004. On June 25, 2004 and at the Forum's request,
the Complainants slightly amended the Complaint.
On
June 24, 2004, the Registrar, Network Solutions, Inc. (NSI), confirmed by e‑mail
to the Forum that the domain names <batesvillecasket.com>
and <batesvillecaskets.com> are registered with NSI and that the
Respondent is the current registrant of both names. NSI has verified that the Respondent is bound by the NSI
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
June 28, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 19,
2004 by which could file a Response to the Complaint, was transmitted to the
Respondent via e‑mail,
post and fax, to all entities and persons listed
on the Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@batesvillecasket.com and postmaster@batesvillecaskets.com
by e‑mail.
A
timely Response, together with Exhibits A‑I, was received and determined
to be complete on July 19, 2004.
Subsequently
and pursuant to Supplemental Rule 7, the Complainants timely filed an
additional submission, together with Exhibits E‑N,
on July 26, 2004.
Thereafter
and also pursuant to Supplemental Rule 7, the Respondent timely an additional
submission, together with Exhibits A‑G,
on August 2, 2004.
On August 5, 2004,
pursuant to the Respondent’s request to have the dispute decided by a three‑member panel, the Forum appointed Mr. Peter L.
Michaelson, Esq. as Presiding Panelist
and Hon. Tyrus R. Atkinson and Hon. Daniel B. Banks (Ret.) as Co‑Panelists
and set a due date of August 19, 2004 to
receive the decision from the Panel.
On August 17, 2004 and owing to
unforeseen and exceptional circumstances, the Panel extended the due date for
the decision by two
weeks to September 2, 2004.
RELIEF SOUGHT
The
Complainants request that the disputed domain names be transferred from the
Respondent to the Complainants.
PARTIES’ CONTENTIONS
A. Complainants
1. Confusing
similarity/identicality
Though Complainants do not expressly
address this issue in the Complaint (however they did so in their Additional
Submission), it
is clearly implicit in the Complaint that Complainants contend
that each of the disputed domain names is identical or confusingly
similar to
Complainants' registered "BATESVILLE" mark inasmuch as each name
incorporates that mark in its entirety.
Hence, the Panel infers that Complainants
believe that the requirements of paragraph 4(a)(i) of the Policy are
satisfied with respect
to each of the two disputed domain names.
2. Rights
and legitimate interests
Complainants
contend that Respondent has no rights or legitimate interests in either of the
disputed domain names under paragraph
4(c) of the Policy.
Specifically,
Complainants state that the Respondent
has no license, either oral or written, to use the Complainants’ marks, and
hence has no trademark or other intellectual
property rights in the terms
"BATESVILLE," "BATESVILLECASKETS," or
"BATESVILLECASKET."
3. Bad
faith use and registration
Complainants
contend that Respondent has registered and is using both of the disputed domain
names in bad faith, hence in violation
of paragraph 4(b) of the Policy.
First,
Complainants contend that Respondent directed Internet traffic, meant for at
least one of the disputed domain names, to a web
site that featured
pornography.
Further,
Respondent used each of the disputed domain names, without Complainants'
permission, to sell Respondent’s funeral home and
crematory products and
services via the Internet. Respondent purchases, for resale and from
Complainants, branded caskets that carry
the Complainants' registered mark. However, the Respondent's goods and
services, with which it is using Complainants' mark, extend beyond sale of just
Complainants'
branded caskets.
Accordingly, Complainants contend that Respondent, by using the disputed
domain names in this fashion, is intentionally attempting
to attract, for
commercial gain, Internet users to its web sites by creating a likelihood of
confusion with Complainants’ registered
BATESVILLE mark, as to the source,
sponsorship, affiliation or endorsement of its web sites and the products offered
thereon. A hard‑copy printout of
Respondent’s home page resolvable through each of the disputed domain names
appears in Exhibit C to
the Complaint.
Also,
Complainants state that they have not granted Respondent the right to use their
registered BATESVILLE mark in a domain name
for any purpose, including
Respondent’s use in connection with the sale of Respondent’s funeral home and
crematory products and services.
Furthermore, Complainants state that they have informed Respondent of
their objections to the latter's use of the disputed domain
names.
Lastly,
Complainants contend that since Respondent knows that Complainants own the
registered BATESVILLE mark for use with the sale
of Complainants' burial
caskets, then, a priori, Respondent’s registration of the disputed domain names
had to be done primarily
for the purpose of disrupting Complainants’ business.
Hence, Complainants conclude that
Respondent's actions in registering and using the disputed domain name is in
bad faith and contravenes
paragraph 4(b) of the Policy.
B. Respondent
1. Confusing
similarity/identicality
Respondent contends that neither of the disputed
domain names is identical or confusingly similar to Complainants' registered
BATESVILLE
mark.
In that regard, Respondent asserts that adding
the words “CASKET” and “CASKETS” to Complainants' registered mark to form the
disputed
domain names sufficiently differentiates that mark from either of
these names to ostensibly dispel any confusion.
2. Rights
and legitimate interests
In
stark contrast to Complainants' view, Respondent contends that, under
paragraph 4(a)(ii) of the Policy, it has rights and legitimate
interests
in both of the disputed domain names.
Specifically,
Respondent states that it has a license not only to use Complainants'
registered mark, but also to use that mark in
conjunction with certain
products, images and text as specified in Complainants' license agreement
("License Agreement")
(a copy of which appears in Exhibit D to the
Response) and in Complainants' Marketing Material Usage Policy ("Sales
Policy")
(a copy of which appears in Exhibit E to the Response). Respondent states that the agreement allows
it to use Complainants' mark in advertising and on Respondent’s Internet web
site. Moreover, Respondent contends that
the License Agreement does not restrict the use of Complainants' registered
mark within a domain
name. In support
of his view, Respondent points to three e‑mails (a copy of which appear
in Exhibit F to the Response) between Complainants'
representative and
Respondent and which date back to April 24, 2001. The Panel observes that these e‑mails
are directed to: a procedure for Respondent to use in accessing various digital
pictures
provided by Complainants to its customers ostensibly for the latter's
use in marketing Complainants' caskets; Respondent's login
procedures to access
a limited‑access area on Complainants' web site; and providing an ID and
password for Respondent to use
in accessing Complainants' on‑line product
catalog, and the provision of on‑line order e‑mail confirmation
messages.
Further,
Respondent contends that, prior to its
receipt of any notice of the dispute, it was offering for sale its services
along with Complainants' goods. Also,
Respondent states that it is an authorized re‑seller of Complainants'
caskets.
Lastly, Respondent asserts, as corrected by its
Supplemental Submission and as understood by the Panel, that the disputed
domain names
provide a commonly used vehicle through which Internet users,
employing, for example, the Google search engine, can readily access
Respondent's web site.
3. Bad
faith use and registration
Respondent
contends that it did not register and use either of the disputed domain names
in bad faith.
First, Respondent states that, as to Complainants'
allegation that Respondent used the disputed domain names to divert Internet
users
to a web site that featured pornography: "Unless, Complainant views
caskets being displayed without their protective plastic
coverings as being
'naked', then Respondent has not and will not ever direct either of the
disputed names to a site featuring pornography'."
In addition, Respondent contends that by virtue of
its License Agreement with Complainants, Respondent is using Complainants'
registered
mark in conjunction with a bona‑fide offering of goods and
services. Moreover, Complainants'
customer base consists of funeral homes, and at no time has Respondent
misleadingly diverted or tried to divert
funeral homes (which are Complainants'
customers) away from Complainants or to tarnish Complainants' mark, nor has
Respondent disrupted
Complainants' business.
Also,
Respondent states that it has not
engaged in any conduct, nor have Complainants shown any indication of
Respondent having either registered or acquired either
of the disputed domain
names:
(a)
primarily for the purpose of selling, renting, or otherwise transferring
the domain name registration to Complainants;
(b) to
prevent Complainants, as owner of a registered trademark or service mark, from
reflecting the mark in a corresponding domain name;
(c) to disrupt the business of a competitor, i.e.,
Complainants here; or
(d) to
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s web site or other on‑line location
by creating a likelihood
of confusion with Complainants' registered mark. Specifically, Complainants' License Agreement and Batesville’s
Marketing Material Usage Policy grant permission to the Respondent
for it to
include Complainants' registered mark in Respondent's Internet web site.
Respondent contends that "there is no confusion
as authorized re‑sellers
(funeral homes) know how to contact the Complainant via the telephone and/or
web site name BATESVILLE.COM. The
trademark is used in an attempt to describe the product being marketed by the
Respondent for the Complainant."
C. Additional Submissions
Inasmuch
as both Complainants and Respondent timely filed their respective additional
submissions, the Panel has fully considered
both of these submissions.
1. Complainants' Additional Submission
a. Confusing
similarity/identicality
Complainants
specifically contend that each of the disputed domain names is identical or
confusingly similar to a trademark or service
mark in which Complainants have rights. In essence, Complainants assert that
appending the generic terms “casket” or “caskets” to Complainants'
"BATESVILLE" mark
to form the disputed domain names does not
differentiate the resulting names from the mark to sufficiently ameliorate any
resulting
confusion.
b. Rights
and legitimate interests
Complainants
advance the following arguments to counter Respondent's position that the
latter has rights and legitimate interests
in both domain names.
First and to amplify their prior
position, Complainants state that despite Respondent’s contractual relationship
with Complainants
as reseller of Complainants’
burial caskets, Complainants have never licensed nor authorized Respondent to
use Complainants’ registered mark in any domain name. In particular, the License
Agreement grants Respondent “a non‑exclusive, non‑transferable
limited license to…use the [Complainants’] Trademarks…in advertising
to promote
the sale of Batesville products (‘Advertising’).” However, all of Respondent’s “Advertising,” must be
reviewed and approved by Complainant Batesville Services, Inc. [See Response,
Exhibit D, para. 5] Since “Advertising”
includes any type of promotion of Batesville products for sale, Respondent’s
use of Complainants' "BATESVILLE"
mark in its web site seeking to
sell the Complainants’ burial caskets and Respondent’s services collectively
constitute “Advertising.” Accordingly,
Respondent was required to seek approval for use of Complainants’ mark in the
disputed domain names. Complainants
assert that: (a) Respondent did not do so, and (b) Complainants never approved
of Respondent’s use of those names.
Indeed, Complainants contend that their filing of the Complaint
evidences Complainants’ objection to Respondent’s
use of the mark "BATESVILLE" in the disputed domain names. Furthermore, Complainants state that
Respondent and Complainants have not entered into any other agreement that
would allow Respondent
to use Complainants' "BATESVILLE" mark in any
domain name.
Further, since Complainants have never
agreed to allow Respondent to use their registered marks in the disputed domain
names, Respondent
cannot retain those domain names. The fact that Respondent
is a re‑seller of Complainants’ goods does not, in and of itself,
authorize or permit Respondent
to use Complainants’ mark in those names.
Complainants then state that without
evidence that Complainants specifically allowed Respondent to use Complainants'
registered mark
in a domain name, Respondent bears the burden of demonstrating
its rights and legitimate interests in those names. Complainants assert that Respondent has simply not met this
burden. In that regard and
illustratively, Complainants contend, that pursuant to paragraph 4(c)(i) of the
Policy, Respondent has no rights
or legitimate interests in the domain names
because Respondent’s use of either of the domain names does not occur in
conjunction
with a bona fide offering of Complainants’ goods (burial
caskets). Complainants cite to Oki
Data Americas, Inc. v. ASD Inc., Case No. D2001‑0903 (WIPO Nov. 6,
2001) wherein the panel held: an authorized re‑seller’s or licensee’s use
of a domain
name in connection with the sale of the licensor’s products is only
deemed to be “use in conjunction with a bona fide offering of
goods or
services” if Respondent is: (1) actually selling the goods or services at
issue; (2) selling only Complainants' products
on the web site in
question; (3) accurately disclosing the relationship between Complainant
and the Respondent; and (4) not attempting to corner the
market in all domain names incorporating Complainants' mark and thereby prevent
Complainant from
reflecting its mark in its own domain name. Under this test, Respondent’s use of the
disputed names is not in conjunction with a bona fide offering of Complainants’
goods, because Respondent
is selling not only the Complainants' products on
Respondent's web site but also, as admitted by Respondent in its Response, Respondent's own services (e.g.,
burial and crematory).
Furthermore, as to whether Respondent is
commonly known by the disputed domain names, Complainants point to a search
made through
the corporate records of the state of Florida which indicates that
the registered business name of Respondent is “All County Funeral
Home &
Crematory Gold Coast Chapel Inc.” (a
copy of the search results appears in Exhibit G to the Complainants' Additional
Submission).
In addition, a newspaper article (a copy
of which appears in Exhibit H of Complainants' Additional Submission) posted to
Respondent’s web site and
attached to the Response, refers to Respondent as “All County Funeral Home” and
lists Respondent’s web address as
<www.allcounty.com>. Moreover, Respondent lists itself in
telephone directories as “All County Funeral Home,” but not through either one
of the disputed
domain names (copies of search results from on‑line
telephone directory switchboard.com appears in Exhibit I to the Complainants'
Additional Submission). Further, a
search using the Internet search engine Google for the names
BATESVILLECASKETS.COM and BATESVILLECASKET.COM did not reveal
that Respondent
is commonly known by either of these names (a copy of those search results
appears in Exhibit J to the Complainants'
Additional Submission).
Finally, Complainant asserts that
Respondent’s use of the domain names, as admitted by Respondent in its
Response, is not for legitimate
noncommercial or fair use without intent for
commercial gain. In that regard,
Respondent’s use of the domain names is for commercial purposes.
Accordingly, the Complainants conclude
that the Respondent cannot demonstrate that it meets any of the circumstances
listed in Paragraphs
4(c)(i)‑(iii) of the Policy and as such has not and
cannot demonstrate that it has rights or legitimate interests in respect
of
either of the disputed domain names.
c. Bad
faith use and registration
Complainants
further argue that Respondent has registered and is using both domain names in
bad faith.
First, Complainants assert, pursuant to
Paragraph 4(b)(iii) of the Policy, that Respondent registered the domain names
primarily for
the purpose of disrupting the business of Complainant. In that regard, Respondent knows that
Complainants license other entities to sell their burial caskets, each of which
are granted
rights to sell those caskets with, at least, use of the BATESVILLE mark,
as evidenced by, e.g., the terms of the License Agreement
and the Sales
Policy. Further, Respondent knows that,
as a licensee of Complainants and as an authorized re‑seller of
Complainants’ burial caskets,
Respondent’s use of Complainants' registered mark
is restricted to the terms of the License Agreement. The License Agreement is a non‑exclusive license and
limits, through paragraph 5 thereof, Respondent’s use of Complainants’
trademarks to only those uses approved by Complainant, Batesville Services,
Inc. In addition, the License Agreement
prohibits licensees from using Complainants’ trademarks “for price
comparisons…with competitor’s
products.”
Nevertheless, Respondent is using the domain names in violation of the
License Agreement because: (a) Respondent did not secure approval
of its use of
Complainants' mark BATESVILLE in those names, and (b) Respondent uses
those names to resolve to Respondent's website
where Respondent declares, in
part, that it is the “Low Cost Leader when it comes to merchandise” on a web page that
displays Complainants’ burial caskets (a hard‑copy printout of various
pages
from that site appear in Exhibit K of Complainants' Additional
Submission). Hence, Complainants
conclude that such registration and use of the domain names disrupts
Complainants’ business and the business of
Complainants’ other
licensees/authorized re‑sellers.
Second, Complainants assert, pursuant to
Paragraph 4(b)(iv) of the Policy, that Respondent has intentionally attempted
to attract,
for commercial gain, Internet users to its website or other on‑line
location, by creating a likelihood of confusion with Complainants’
mark as to
the source, sponsorship, affiliation or endorsement of Respondent's website or
location of a product or service on its
website or location. Specifically,
Respondent is using the disputed domain names, which are confusingly similar to
Complainants'
BATESVILLE mark, to sell Respondent’s funeral home crematory
products and services, including products and services not sponsored
by,
endorsed by or affiliated with Complainants.
Complainants state that they have not
granted Respondent any rights to use the BATESVILLE mark in a domain name to
sell Respondent’s
products and services. Complainants have granted Respondent
limited rights to use Complainants' mark, as described in the License
Agreement
and Sales Policy, to sell Complainants’ burial caskets. These rights do not extend to Respondent’s
use of that mark within a domain name, without permission and approval from
Complainant,
Batesville Services, Inc., or to Respondent’s use of the mark to
sell Respondent’s products and services other than Complainants’
burial
caskets. Despite this, Respondent has
registered and is using the names to sell products and services other than
Complainants’ burial caskets. In that
regard, Respondent uses the domain names to direct Internet users to its home
page, which lists its crematory and chapel locations
(hard‑copy printouts
of Respondent's web site appear in Exhibits L and M of Complainants' Additional
Submission). Specifically, upon
clicking on the “HOME” link on Respondent’s web site pages, an Internet user is
directed to a web page (a hard‑copy
of which appears in Exhibit N to the
Complainants' Additional Submission) that lists the prices for particular
funeral services (e.g.,
“$325 Simple Cremation” and “$980 Cremation with
Viewing/Service”) and states that Respondent offers “Payment Plans” and
“Financing
Available.” Hence,
Complainants assert that Respondent uses the disputed domain names, which are
confusingly similar to Complainants’ mark, to
attract Internet users to all of
Respondent’s web site pages, not just to the home page directly resolvable
through each of the domain
names.
Lastly, Complainants do not sponsor,
endorse or affiliate themselves with Respondent’s website. Respondent has created a likelihood of
confusion with te Complainants’ mark as to the source, sponsorship, affiliation
or endorsement
of Respondent’s non‑BATESVILLE products and services that
Respondent offers for sale on its web site through which Respondent
intentionally attempts to attract, for commercial gain, Internet users to its
web site to sell its goods and services.
2. Respondent's Additional Submission
a. Confusing
similarity/identicality
Respondent re‑iterates its position that
adding the words “CASKET” and “CASKETS” to Complainants' registered mark to
form the
disputed domain names sufficiently differentiates the mark from either
of these names.
b. Rights
and legitimate interests
Respondent asserts that Complainants' License Agreement specifically grants
Respondent the right to use Complainants' marks solely in advertising used to
promote the sale of Complainants'
products.
The license specifically states that Respondent may use the trademark in
conjunction with websites. Furthermore,
there are no restrictions as to the use of the trademark in the disputed domain
names.
Further, Respondent contends that it is
using Complainants' mark in conjunction with a bona‑fide offering of the
goods and services
and as permitted by Complainants. In that regard, Respondent points to Complainants' marketing and
usage policy as specified in: (a) a letter dated July 2, 2004 from
Complainants
to Respondent; (b) the "Batesville Casket Company, Inc., Sales
Policy"; and (c) Complainants' "Sale Manual"
(copies of which
appear in Exhibits B, C and D, respectively, of Respondents' Additional
Submission) ‑‑ with which Respondent
is in full compliance. Respondent contends that, if it were not so
compliant, then Complainants would have found Respondent to be in “breach of
contract,”
therefore, terminating Respondent’s right to sell Complainants'
caskets. To date, Complainants and
Respondent still conduct business together.
Respondent views Complainants as
asserting that all of Respondent’s advertising must be reviewed and approved by
Complainants, and
since advertising includes any type of promotion of
Complainants' products for sale, Respondent’s use of the “Batesville” mark in
its website, through which Respondent seeks to sell Complainants' caskets and
Respondent’s services, constitutes advertising. As such, Respondent was required to seek approval for the use of
the trademark and domain names.
Paragraph 5 of the License
Agreement expressly states: “Batesville
reserves the right to review and approve the advertising upon written
notice". However,
Respondent has received no such notice to date nor have Complainants provided
such as an exhibit.
c. Bad
faith use and registration
Respondent, in furtherance of its assertion
that it has neither registered nor used the disputed domain names in bad faith,
provided
the following arguments.
First, Respondent points to an e‑mail
dated April 15, 2002 from Joe Weigel, Director of Communication for Batesville
Casket
Company (a copy of which appears in Exhibit E to Respondent's Additional
Submission), which states:
“Dear Vince, according to network
solution, you are the owner of www.batesvillecasket.com and
www.batesvillecaskets.com. What are
your long term plans for these web sites?”
to which Respondent replied later that
day:
“Joe, at some point I was planning on establishing a web site and
using the [the] sites. What were you
thinking, concerning the sites, please let me know. Vince”.
Respondent views these e‑mails as
evidencing that it did not register the disputed domain names in bad faith and
in fact, through
Complainants' inclusion of the phrase "long term
plans," reflected Complainants' tacit approval of Respondent's
registrations.
Respondent states that it has contracted
with Complainants to exclusively sell Complainants' caskets and strictly
adhered to Complainants'
sales and marketing policies which require Respondent
to be “a full service funeral provider offering to prepare and care for the
deceased human body for burial, cremation, or other final disposition.”
Furthermore, Respondent states that its
website accurately discloses the relationship between Complainants and
Respondent by stating
that Respondent is an “authorized reseller of Batesville
caskets”. Respondent's web site also
provides a link to Complainants' website, as allowed by the Batesville Casket
Company Link Statement [a
copy of which appears in Exhibit F to the
Respondent's Additional Submission].
Moreover, Respondent states that it does
not use Complainants' mark to promote or sell caskets manufactured by
Complainants' competition;
hence, Respondent is not disrupting either
Complainants' business or for that matter Respondent's competition. In that regard, Complainant has offered no
proof of any such disruption. Lastly,
as to Complainants' allegations that Respondent, in offering price information
on its website, is violating the License
Agreement, Respondent simply states that he Complainants' License Agreement does not restrict
the price at which Respondent re‑sells the Complainants' caskets.
FINDINGS
A copy of the
WhoIs registration record for each the disputed domain name appears in
Exhibit A to the Complaint and Exhibit C to the
Response. These records indicate that Respondent
registered <BATESVILLECASKETS.COM>
on May 15, 1999 and <BATESVILLECASKET.COM>
on June 4, 1999.
A. Complainants' BATESVILLE Marks
Complainants currently own two federal
trademark registrations for the term "BATESVILLE," and have provided,
in Exhibit
B to the Complaint, a copy of the pertinent record of each mark from
the Trademark Electronic Search System (TESS) which is provided
by the United
States Patent and Trademark Office (USPTO) and is accessible through the
Internet. The pertinent details are as
follows:
1. BATESVILLE
(stylized)
registration:
1,259,446; registered: November 29, 1983
section
8/15 affidavit filed
registration
renewed: June 6, 2003
serial
number: 73/302,661; filed: March 25, 1981
This mark was registered for use in
connection with: "burial caskets " in international
class 20. This mark claims a first
use and first use in commerce date of August 31, 1980.
2. BATESVILLE
(block letters)
registration:
1,347,930; registered: July 9, 1985
section
8/15 affidavit filed
serial
number: 73/494,377; filed: August 10, 1984
This mark was registered for use in
connection with: "burial caskets " in international
class 20. This mark claims a first
use and first use in commerce date of December 31, 1969.
B. Complainants'
and Respondent's Activities
Complainant,
Batesville Casket Company, Inc., engages in the business of, inter alia,
manufacturing and selling burial caskets.
It sells those caskets under its registered mark BATESVILLE and has been
doing so since December 31, 1969.
Complainant, Batesville Services, Inc., owns the BATESVILLE marks and
has licensed those marks to Complainant, Batesville Casket Company,
Inc.
Complainants
have used their registered marks to the exclusion of others, in connection with
the sale of burial caskets, for over
thirty years and have devoted significant
resources to advertising their products in connection with those marks. As such, those marks have acquired
distinctiveness in the marketplace.
Complainant Batesville Casket Company, Inc. is a significant supplier of
burial caskets in the United States and has established itself
as a leader in
the burial casket market.
Respondent
is Florida’s largest funeral provider.
Respondent provides both Complainants' branded burial caskets as well as
Respondent's own services at drastically reduced prices relative
to others in
the markets which Respondent serves. Respondent provides its goods and services
through various marketing channels,
including the Internet. In doing so and by virtue of its attractive
pricing, Respondent has become extremely successful.
Complainants
and Respondent have enjoyed a mutually beneficial business relationship since
1987. In that regard, Respondent has a
contract with Complainants which requires that Respondent only sell
Complainants' caskets and no
other.
Complainants distribute their caskets on a wholesale basis to those
funeral homes which are its authorized re‑sellers, of which
Respondent is
one. Both Complainants and Respondent
continue to have a working relationship through which Respondent continues to
sell only Complainants'
caskets.
The
License Agreement currently in
effect between Complainants and Respondent which governs Respondent's use of,
inter alia, Complainants' BATESVILLE marks
contains the following provisions,
in pertinent part:
"By
this letter, Batesville Services, Inc. ('Batesville') agrees to provide to you
or to your company ... the use of Trademarks
as defined in the attached Exhibit
... for your use in advertising to promote the sale of Batesville products ('Advertising'). The Advertising may include print media or
electronic media, such as radio, video, television, CD ROMS, electronic
catalogues, displayed
on a screen display of a stand‑alone computer, on a
computer networked only within your facility, or on your Internet web site.
...
1.
License: Batesville grants to you ... a non‑exclusive, non‑transferable
license to ... use the Trademarks solely as
Advertising used to promote the
sale of Batesville products.
...
4.
Termination: If any terms or conditions
of this Agreement are violated by you, Batesville may terminate this Agreement
and the license herein by
giving five (5) days prior written notice to you. ...
5.
Reservation of right to Review and Approve:
... Batesville reserves the right to review and approve the Advertising
upon written notice to you. Upon
receipt of the written notice, you shall provide to Batesville copies of the
requested Advertising. Should Batesville
not approve of the Advertising, the Advertising shall, at the discretion of Batesville,
be modified according to
Batesville's instruction ... and Trademarks shall be
withdrawn from use."
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; and
(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.
The Panel, merely focusing on the domain
names and Complainants' registered marks, finds that confusion is likely to
arise as a result
of Respondent’s use of either of the two disputed domain
names.
Specifically, the Panel finds that the
terms "casket” and “caskets” are simply generic terms, each of which adds
absolutely no
distinctive element to either of the disputed domain names, let
alone of any magnitude sufficient to distinguish that name from Complainants'
BATESVILLE marks and thus, in and of itself, preclude user confusion. See, e.g., Register.com, Inc. v. Wolfgang Reile et al FA208576 (Nat.
Arb. Forum January 27, 2004); Cable News Network LP, LLP v. Khouri, FA 117876 (Nat. Arb. Forum Dec. 16,
2002); Pfizer Inc. v. Order Viagra Online,
D2002‑0366 (WIPO
July 11, 2002); Dell Computer Corp. v.
MTO C.A., D2002‑0363 (WIPO July 5, 2002); Am.
Online, Inc. v. Woods,
D2001‑0555 (WIPO June 13, 2001); Dell
Computer Corp. v. Logo Excellence, D2001‑0361 (WIPO May 7, 2001); and Quixtar
Invs., Inc. v. Hoffman, D2000‑0253
(WIPO May 29, 2000).
Such
confusion ‑‑ were it to arise ‑‑ would undoubtedly
cause Internet users intending to access Complainants'
website, but who reach a
website through either of the disputed domain names, to think that an
affiliation of some sort exists between
Complainants and Respondent, when, in
fact, no such relationship would exist at all.
See, also, e.g., Caesars
World, Inc. v. Japan Nippon, D2003‑0615 (WIPO Sept. 30,
2003); Leiner Health
Servs. Corp. v. ESJ Nutritional Prods., FA 173362 (Nat. Arb. Forum Sept. 16,
2003); Am. Family Life Assurance Co. of Columbus v. defaultdata.com,
FA 123896 (Nat. Arb.
Forum Oct. 14, 2002); AT&T Corp.
v. Abreu, D2002‑0605 (WIPO Sept. 11, 2002); Pfizer Inc., supra;
L.F.P., Inc. v. B and J Props., FA
109697 (Nat. Arb. Forum May 30, 2002); Frampton
v. Frampton Enters., Inc., D2002‑0141 (WIPO Apr. 17, 2002);
Spence‑Chapin Servs. to Families
and Children v. Wynman, FA
100492 (Nat. Arb. Forum Dec. 10, 2001); MPL
Commun. v. LOVEARTH.net, supra; Meijer,
Inc. v. Porksandwich Web Servs., FA 97186 (Nat. Arb. Forum July 6,
2001); MPL Commun. v. 1WebAddress.com, FA
97092 (Nat. Arb. Forum June 4, 2001); Am.
Home Prods. Corp. v. Malgioglio, D2000‑1602 (WIPO Feb. 19,
2001); Surface Prot. Indus., Inc. v.
Webposters, D2000‑1613 (WIPO Feb. 5, 2001); Dollar Fin. Group, Inc. v. VQM NET, FA 96101 (Nat. Arb. Forum Jan.
25, 2001); eBAY Inc. v. G L Liadis
Computing, Ltd., D2000‑1463 (WIPO Jan. 10, 2001); Treeforms, Inc. v. Cayne Indus. Sales Corp.,
FA 95856 (Nat. Arb. Forum Dec. 18, 2000); see also Pep Boys Manny, Moe and Jack of CA v. E‑Commerce
Today, Ltd., AF‑0145 (eResolution May 3, 2000).
Therefore,
the Panel finds that each of the two disputed domain names sufficiently
resembles Complainants' BATESVILLE mark as to cause
confusion; hence,
Complainant has shown sufficient similarity between its marks and both of the
disputed domain names under paragraph
4(a)(i) of the Policy.
The Panel finds that Respondent has
rights and legitimate interests in both of the disputed domain names.
Specifically, the License Agreement between
the parties broadly defines “Advertising” as “may include print media or
electronic media, such as radio, video, television, CD ROMS, electronic
catalogues, displayed on a screen display
of a stand‑alone computer, on a
computer networked only within your facility, or on your Internet web site”
[emphasis added].
This list, being prefaced by the words “may include,”
is not exclusive.
Consequently, the Panel finds that the
"Advertising," as defined under the agreement through a list of
examples, is ambiguous
by omission. The
list is simply silent as to whether Respondent can use Complainants' BATESVILLE
mark as part of Respondent's own domain names
to resolve to its own web site
through which Respondent will advertise both Complainants' goods and its own
services ‑‑
as it has done so here. It is certainly reasonable given the broad nature of the list and
its specific inclusion of Internet channels to infer, as Respondent
attempts to
do, from the “may include” language that such use is included and permitted.
However, one need not resort to such inferences.
In the Panel's mind, Complainants simply
resolved the ambiguity by reserving for themselves the right to review and
approve of the
Respondent’s advertising. Paragraph 5 of the License
Agreement states, in pertinent part: “As such, Batesville reserves the right
to review and approve the Advertising upon written notice to you. Upon
receipt of the written notice, you shall provide to Batesville copies of
the requested Advertising. Should
Batesville not approve of the Advertising, the Advertising shall, at the
discretion of Batesville, be modified according to
Batesville’s instruction
or the Works and Trademarks shall be
withdrawn from use.” [emphasis added].
The Panel fails to see anywhere in the record
before us where Complainants, having an affirmative duty under the reservation
clause
quoted above, expressly notified Respondent that they wanted to review
Respondent’s use of the disputed domain names and the content
of the web site
to which those names resolve. In that regard, all that exists in the
record is an e‑mail dated April 13, 2002
‑‑ more than 2 years
prior to the filing of the Complaint ‑‑ where Complainants inquired
about Respondent’s
use of the disputed domain names. Respondent replied
that it was then planning to establish a web site, presumably resolvable
through
those names. Complainants said nothing further until they filed
the present Complaint over 2 years later. Hence, Complainants,
if they
truly objected to Respondent’s registration of the disputed domain names, had a
duty to undertake specific affirmative action,
i.e., (a) to provide notice that
they wanted to review and approve or object to the Respondent’s planned site,
and (b) to then actually
review the intended content and either approve or
object to it. Complainants simply failed to do so. Complainants
knew about Respondent’s
use of the disputed names for over 2 years and at no
instance during that time ‑‑ certainly after Respondent’s web site
became operational ‑‑ made any request to review and approve or
disapprove the site content and use of the names. Therefore,
Complainants
simply acquiesced to Respondent’s “advertising,” i.e., which included its
registration and use of the disputed domain
names. Respondent is entitled
to rely on that acquiescence as otherwise, after some 2 years, it would be
patently unfair to Respondent
for it to now be stripped of those names ‑‑
to its ultimate detriment.
Therefore, Respondent has sufficiently
demonstrated that it has rights and legitimate interests in both of the
disputed domain names,
and, as such, has met the requirements of paragraph 4(c)
of the Policy.
In view of the Panel's finding that
Respondent has rights and legitimate interests in both of the disputed domain
names, all issues
of bad faith use and registration under paragraph 4(a)(iii)
of the Policy are now moot.
Consequently, the Panel has no need to consider any of these issues and
thus declines to do so.
Hence, the Complainants have failed to
meet their burden under paragraph 4(a) of the Policy.
DECISION
Consequently and in accordance with
paragraphs 4(i) of the Policy and 15 of the Rules, the relief sought by the
Complainants is hereby
DENIED.
Peter L.
Michaelson, Esq., Presiding Panelist
Dated: August
23, 2004
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