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Saltworks, Inc. v. Tom Graham [2005] GENDND 1811 (5 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Saltworks, Inc. v. Tom Graham

Case No. D2005-0874

1. The Parties

Complainant is Saltworks, Inc., Redmond, Washington, United States of America, represented by Ian Lurie, United States of America.

Respondent is Tom Graham, Washington, DC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <saltworks.com> (the “Domain Name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2005. On August 17, 2005, the Center transmitted by e-mail to Tucows a request for registrar verification in connection with the domain name at issue. On August 17, 2005, Tucows transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 26, 2005. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 22, 2005. The Response was filed with the Center on September 19, 2005.

The Center appointed Robert A. Badgley as the sole panelist in this matter on September 30, 2005. 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.

4. Factual Background

Complainant alleges that it manufactures and sells gourmet cooking salts, as well as bath and spa salts. Complainant claims to use the term SALTWORKS as its mark for such products, but provides in the Complaint no information regarding its first use of that alleged mark. Complainant further claims that its website “www.saltworks.us” has “been in business selling bath and gourmet salt since June 2002.”

Respondent registered the Domain Name on June 17, 2001, a year before any use of SALTWORKS by Complainant is alleged in the Complaint. Respondent’s Domain Name registration also predates the first-use date claimed on Complainant’s application for trademark registration for the mark SALTWORKS, namely, February 6, 2002.

Respondent alleges that it registered the Domain Name, without knowledge of Complainant or its alleged mark, in furtherance of its business of producing salt from a facility in Anguilla, British West Indies, and selling luxury bath salts.

In April and May 2001, Respondent presented to the Government of Anguilla a business plan for its proposed venture. In May 2001, Respondent engaged a University of Florida botanist to conduct a feasibility study with respect to the Anguilla saltworks facility reclamation project. In September 2001, Respondent began using the Domain Name for its e-mail address in conjunction with its business plans. The foregoing activities are reflected in exhibits annexed to Respondent’s Response.

Respondent claims that a website will be established at the Domain Name by the end of 2005.

5. Parties’ Contentions

A. Complainant

Complainant alleges, without elaboration or evidence, that “Respondent holds no trademark or other right to the Saltworks name.” Complainant further alleges, again without elaboration or evidence, that Respondent has never operated any online business, does not seem to have “any business plan or purpose for owning” the Domain Name, and is “simply squatting” on the Domain Name.

B. Respondent

Respondent’s activities and motives vis-ą-vis the Domain Name are summarized in Section 4 above.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

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

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

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has failed to demonstrate rights in the alleged mark SALTWORKS. There is no trademark registration, and there is insufficient evidence that Complainant holds common law trademark rights.

First, Complainant has furnished no documentary proof of its alleged use of SALTWORKS as a mark for its cooking and bath salt products.

Second, SALTWORKS appears to be a descriptive term as applied to the goods that Complainant claims to sell. As such, it lacks inherent distinctiveness, and cannot enjoy trademark protection without proof of acquired distinctiveness.

There has been no showing by Complainant that its unregistered, descriptive mark has acquired distinctiveness, or “secondary meaning,” to qualify for trademark protection.

In sum, the Complaint fails under paragraph 4(a)(i) of the Policy since Complainant has not established that it has rights in a mark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your [Respondent’s] use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you [Respondent] have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). See Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001).

The activities of Respondent, as summarized above in Section 4, clearly reflect “demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods.” Hence, Respondent enjoys “rights or legitimate interests” in the Domain Name within the meaning of paragraph 4(c)(i) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Domain Name cannot be said to have been registered in bad faith since, at the time of registration, Respondent had no knowledge of Complainant or Complainant’s alleged trademark. This principle was well articulated in Rusconi Editore S.P.A. v. Bestinfo, WIPO Case No. D2001-0656 (July 5, 2001), wherein the panel observed:

“The Policy is directed to dealing with cybersquatters. For an allegation of bad faith registration and use of a domain name to succeed, the Complainant has to show at the very least that when the Respondent registered the Domain Name, the Respondent was (or was likely to have been) aware of the existence of the Complainant or, more particularly, the Complainant’s rights in respect of the trade mark in question.”

As noted above, the Domain Name was registered several months before any alleged use by Complainant of its alleged mark SALTWORKS.

In sum, in the absence of any evidence, or even reason to infer, that Respondent knew of Complainant and/or its mark at the time the Domain Name was registered, this Complaint must fail for want of bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Sole Panelist

Dated: October 5, 2005