WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Media West-GSI, Inc., and Gannett Satellite Information Network, Inc., d/b/a The Burlington Free Press v. EARTHCARS.COM, INC.
Case No. D2000-0463
1. The Parties
The Complainants are Media West-GSI, Inc. ("Media West") and its parent corporation, Gannett Satellite Information Network, Inc. ("Gannett"), d/b/a The Burlington Free Press (hereafter, collectively, "Complainant").
The Respondent (the named registrant of the contested domain name) is EARTHCARS.COM, which appears to be affiliated with a corporation named Earthcars Dot Com, Inc. and both list their address as 431 Pine Street, Burlington, Vermont, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is ��. Its registrar is Network Solutions, Inc. ("NSI"), of Herndon, Virginia, U.S.A.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 18, 2000 (hereinafter "the Complaint") and the signed hard copy was received by the WIPO Center on May 22, 2000. An acknowledgment of Receipt of the Complaint was sent by the WIPO Center to the Complainant on May 23, 2000.
On May 23, 2000, a Request for a Registrar Verification was submitted to NSI requesting it to: (1) confirm that a copy of the Complaint was sent to it by Complainant; (2) confirm that the domain name �� is registered with NSI; (3) confirm that the person identified as the Respondent is the current registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrar�s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain name(s); and (6) indicate the current status of the domain name.
On May 30, 2000, NSI confirmed by reply e-mail that the domain name �� is registered with NSI and that the Respondent, EARTHCARS.COM is the current registrant of that domain name. The registrar also confirmed that the NSI�s 4.0 Service Agreement is in effect and that the domain name registration �� is in "Active" status.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center case administrator on June 2, 2000. The Panelist has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The Panelist is informed that the required fees for a single-member panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on June 2, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the complainant, NSI and ICANN), setting a deadline of June 21, 2000, by which the Respondent could make a Response to the Complaint. The Commencement Notification was also transmitted to the Respondent by e-mail to the e-mail address indicated in the Complaint and specified in NSI�s Whois Confirmation. In addition, the Commencement Notification was sent by express courier and transmitted by facsimile to the addresses listed in the Complaint and confirmed by NSI. Having reviewed the communications records and the case file, the Panelist finds that the WIPO Center has discharged its responsibilities under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve an actual notice to Respondent."
On June 28, 2000, having received no Response from the designated Respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default. No response or other communication has been received by the WIPO Center or the Administrative Panel from the Respondent since the Notice of Default.
On June 28, 2000, in view of the Complainant�s designation of a sole panelist, the WIPO Center invited this Panelist to serve as the panelist in Case No. D2000-0463 and transmitted to her a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Following her submission of her Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Panelist finds that the administrative panel was properly constituted and appointed in accordance with the Rules and WIPO�s Supplemental Rules.
4. Factual Background
The allegations and evidence submitted by Complainant show as follows:
Gannett operates newspaper businesses and its subsidiary, Media West, owns the rights in various marks used under license by Gannett�s newspaper businesses. One of these businesses is The Burlington Free Press, a daily newspaper that has been published in Burlington, Vermont since 1827.
Complainant registered the internet domain name on August 12, 1997 for the operation of a website service containing "classified advertisements for a variety of products and services." Complaint at � 14. The website, originally launched in April of 1998, operates in connection with the on-line version of the Burlington Free Press newspaper, which is located at , and can be accessed by clicking the "classifieds" icon on the website. Complainant has conducted an extensive campaign to promote its website through advertisements and flyer inserts in its own newspaper and advertisements on the radio. Since August, 1998, Complainant�s website has received at least 400,000 visits, close to 40,000 of which were made in January, 2000.
While Complainant alleges that it "owns the service mark ," it does not allege and has submitted no evidence that it has sought or obtained registration of this mark with the United States Patent and Trademark Office ("PTO") or any other analogous authority.
On May 13, 1999 Respondent registered the domain name . According to the Complaint, at one time the website operated to redirect visitors to a website located at , a website that promotes Respondent�s business of designing websites for automobile dealerships. Respondent had advertised this business in Complainant�s newspaper on several occasions prior to registering the disputed domain name. As of the date of the Complaint, the website contained a one-page advertisement to "All Freepress Newspapers" for the sale of the domain name, , for $10,000.00. Respondent has registered other domain names, nine of which incorporate various car model names.
5. Parties� Contentions
A. Complainant contends that Respondent has registered a domain name which is identical or confusingly similar to a service mark in which Complainant has rights; that the Respondent has no rights or legitimate interests in respect to the domain name; and that the Respondent has registered and is using the domain name at issue in bad faith.
B. Although Respondent has not submitted a response in this proceeding setting forth its contentions, the record does contain some indication of Respondent�s position in the form of a print-out of an e-mail message that Respondent�s contact person, Mark Bonfigli, (Annex H to the Complaint) sent in response to Complainant�s counsel�s cease-and-desist letters. Mr. Bonfigli appears to argue that Complainant does not, and cannot, own exclusive rights to its domain name and that many publishers nationwide, including in Detroit, use the terms "freepress" and "classifieds" in various combinations. Mr. Bonfigli concludes with a reference to an offer he had previously made to Complainant on the telephone, which was to sell his domain name for $10,000.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Under Paragraph 15(a) of the Rules, "A Panel shall 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." By the combined operation of Paragraphs 5(e) and 14(b) of the Rules, a respondent�s failure to respond does not automatically subject it to an adverse decision akin to a default judgment; rather, the panel in such cases must "decide the dispute based on the complaint," and may only draw such inferences from the respondent�s default "as it considers appropriate."
Pursuant to Paragraph 4(a) of the Policy, in order to prevail, a Complainant must prove each of the following elements:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no legitimate interest in respect to the domain name; and
(iii) that the domain name has been registered and used in bad faith.
Because the United States is, in this case, the locus of both parties, the registrar, and all relevant activities, the Panelist will consult certain substantive principles of the United States federal jurisprudence in determining whether Complainant has met its burden under Paragraph 4(a). See The Final Report of the WIPO Inter net Domain Name Process (April 30,1999). [http:\\\domaines\process\eng\processhome.html]).
B. Application of Paragraph 4(a) to the Facts
The threshold -- and in this case, dispositive -- issue under Paragraph 4(a) is whether Complainant has protectable "rights" in the mark to which it contends Respondent�s domain name is identical or confusingly similar. Given the obvious sophistication of Complainant and its counsel in matters of intellectual property, as well as the thoroughness of the Complaint and supporting documentation, it is fair to infer from the omission of any reference to registration that the mark "" is not, in fact, registered with the PTO or any analogous authority. Consequently, Complainant does not enjoy the benefit of any presumption of the exclusive right to use a mark afforded by registration and must prove that its mark is distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 120 S. Ct. 1339, 1342 (2000).
To be distinctive, a mark must, either inherently or through an acquired secondary meaning, be capable of identifying the source of a particular product or service. Only marks that are arbitrary or fanciful in the sense of bearing no logical relationship to the product or service for which they are used, or suggestive in the sense of requiring imagination to be associated with a product or service, are deemed inherently distinctive. Wal-Mart, 120 S. Ct. at 1343. Complainant�s mark, , is not arbitrary, fanciful, or suggestive; rather, it quite plainly describes the very service in connection with which it is used by Complainant: "a website service contain[ing] classified advertisements for a variety of products and services." Complaint, � 14. The joining of "freepress" with "classifieds" could add an element of distinctiveness to Complainant�s mark if it were unique to Complainant. However, as Mr. Bonfigli�s e-mail correctly pointed out, and is sufficiently well known to be properly subject of judicial notice, the use of "free press" in the names of English language newspapers is so ubiquitous that it can not plausibly be argued that "" necessarily points to The Burlington Free Press rather than, to pick just one example, The Detroit Free Press, as the source of the particular Internet classified advertisement service 1.
Indeed, given that ubiquity, the phrase "free press" simply connotes a newspaper, and the combination "" is no more than a direct description of a particular service, namely the operation by a newspaper business or group of businesses of a website containing classified advertisements. As such, Complainant�s mark is generic, because it does no more than describe a class of service without distinguishing the source of origin. Such marks cannot be appropriated or monopolized, and are therefore not entitled to protection. Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct. 2753, 2757 (1992); CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13 (2d Cir. 1975); Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F.Supp. 2d 488, 494 (E.D. Va. 1999).
The extensive detail in which Complainant sets out its effort to promote its website through advertising indicates its awareness that the only route to the recognition of its unregistered mark as protected is to have it classified as descriptive. A descriptive mark is one which portrays a characteristic of the particular article or service to which it refers. Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 374 n.8 (1st Cir. 1980). Such marks are entitled to protection only if they have acquired a "secondary meaning." Wal-Mart, 120 S. Ct. at 1344; Big Star Entertainment, Inc. v. Next Big Star, Inc., 2000 WL 420549*9 (S.D.N.Y.).
This test requires a demonstration that the mark, by means of sufficient marketing, sales, usage, and passage of time, has become identified in the public mind with a particular source of the goods or services. Id.; see also, Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S. Ct. 2182, n. 11 (1982); Bristol-Meyers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir. 1992). In determining whether a mark has acquired a secondary meaning, courts consider such factos as: (1) advertising expenditures, (2) consumer surveys linking the mark to a source, (3) unsolicited media coverage of the service, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark�s use. Centaur Communications Ltd. v. A\S\M\ Communications, Inc., 830 F.2d 1217, 1221 (2d Cir. 1987); Zatarain�s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786(5th Cir. 1983).
Complainant�s dedication of significant resources to the promotion of its website through advertising in its own Burlington Free Press newspaper, on the radio and through fliers, and its sales success as measured by the number of visits to its website, while relevant, are not, without more, sufficient to support a finding that it has succeeded in creating a secondary meaning for its mark. It is the effect of such activities, not merely their extent, that shows actual acquisition of a secondary meaning. Co-Rect Prods. Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324, 1329 (8th Cir. 1985). Complainant has presented no evidence of consumer surveys, focus group studies, or even substantial anecdotal evidence, showing that consumers have come to associate with The Burlington Free Press. Likewise, Complainant has provided no evidence of any independent or unsolicited media coverage of its website service.
Furthermore, the Panelist doubts that the 27-month period over which Complainant has been operating its service is sufficiently long for its domain name to have acquired a secondary meaning and that doubt is deepened by the previously noted fact that its use of the "freepress" component of its mark is far from exclusive. Whatever the length of use by one party, use of part or all of the mark by third parties weakens the mark�s overall strength. Big Star Entertainment, Inc. 2000 WL 420 549*17; Streetwise Maps Inc. v. Vandam, Inc., 159 F.3d 739, 744 (2d Cir. 1998).
In sum, on the evidence available in this case, the Panelist cannot conclude that "in the minds of the public, the primary significance of [the mark ] is to identify [Complainant] as the source [of its website service] rather than the [service] itself." Inwood Laboratories, supra. Since Complainant has failed to discharge its burden of proof as to the threshold element of its case under the ICANN Policy, par. 4(a), it is not necessary to reach the remaining elements: whether the domain name is identical or confusingly similar to , whether Respondent has any rights or legitimate interest with respect to , and whether it has registered and used that domain name in bad faith.
7. Decision
Having considered this case in accordance with Paragraph 15 of the Rules, the Panelist finds that Complainant has failed to prove that it has rights in its service mark for the purpose of satisfying Paragraph 4(a)(1) of the Policy. Therefore, Complainant�s request that the domain name be transferred from Respondent to Complainant is DENIED.
Natasha C. Lisman, J.D., F.C.I.Arb.
Sole Panelist
Dated: July 28, 2000
Footnotes:
1. Other notable examples are The London Free Press, The Winnipeg Free Press, Chicago Free Press and Haight Ashbury Free Press.
Full & Egal Universal Law Academy