WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bergen�s Greenhouse, Inc. v. Jennifer Barnes
Case No. D2000-1503
1. The Parties
The Complainant is Bergen�s Greenhouse, Inc., with place of business in Detroit Lakes, Minnesota, United States of America (USA).
The Respondent is Jennifer Barnes, with address in Grover Beach, California, USA.
2. The Domain Name and Registrar
The disputed domain name is "".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on November 2, 2000. The registrar was misidentified in the initial complaint, and following WIPO�s identification of the appropriate registrar, Complainant filed an amended complaint by courier mail received by WIPO on November 30, 2000, and by e-mail received by WIPO on December 15, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On December 15, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrar�s Response received by WIPO on December 19, 2000).
(b) On December 22, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. Following correspondence between Respondent, WIPO and Complainant regarding Respondent�s updated contact information, WIPO granted Respondent an extension for filing her response until January 24, 2001.
(c) Respondent�s response was received by WIPO via e-mail on January 24, 2001, and via courier mail on January 29, 2001. Respondent also transmitted the response to Complainant.
(d) Between January 25, 2001 and January 31, 2001, Complainant and Respondent exchanged e-mail communications through WIPO regarding various elements of each other�s case. WIPO forwarded these communications to the Panel as part of the case file in this matter.
(e) On February 1, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On February 1, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(f)) On February 6, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by February 20, 2001. On February 6, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions (taking note of the e-mail communications referred to in paragraph 3(d) above), waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant registered the trademark "Plant Perfect" with the office of the Secretary of State of Minnesota on August 28, 2000, for use in connection with potted plants blooming, bedding plants and green plants. Said registration was issued by the Secretary of State on the date of filing the application. In its Minnesota trademark application, Complainant asserted a first use in commerce in that state of June 1, 2000. (Complaint, Annex 2)
Complainant has submitted an application for trademark registration for the stylized word "PLANT PERFECT" on the Principal Register of the United States Patent and Trademark Office (USPTO), Serial No. 76/115893, filing date August 23, 2000, in international class 31, covering "Blooming Plants Foliage Plants Spring Bedding Plants and Perennials Plants All plants are potted and of various sizes". In its USPTO application, Complainant claims a date of first use in commerce of the "PLANT PERFECT" mark of March 1, 1982. (Id.)
Complainant has indicated that it markets its products regionally in the United States.
According to the registrar�s verification response to WIPO, dated December 19, 2001, "Jennifer Barnes" is the listed registrant of the domain name "". The Administrative Contact is "Barnes, Jennifer". A Network Solutions� WHOIS database search indicates that the record of registration for "" was created on September 28, 1999 and that this record was last updated on September 28, 1999 (Complaint, Annex 1 and Response, Annex 1).
On November 1, 1999, the California State Board of Equalization issued a Seller�s Permit in the name of "PLANTPERFECT.COM" and Jennifer Barnes (Response, Annex 2).
On January 27, 2000, Respondent Jennifer Barnes filed a fictitious business name statement to do business as "PLANTPERFECT.COM" in and for San Luis Obispo County, California, with the Clerk of that County (id. Annex 3).
On January 27, 2000, Respondent Jennifer Barnes, as proprietor/owner, submitted a Statement of Personal History in the name of the applicant firm "PlantP" with the U.S. Small Business Administration (id., Annex 4).
A comprehensive draft business plan ("The Business Plan For PlantP�) for Respondent�s proposed business (showing copyright date of 2000) indicates that Respondent researched the identity of potential Internet business competitors in connection with registering the disputed domain name and did not identify Complainant as a potential competitor (id., Annex 6).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states that the name "plant perfect" was trademarked in the state of Minnesota on August 28, 2000, and "registered" with the USPTO on August 23, 2000 (see Factual Background, supra).
Complainant states that the disputed domain name is identical or confusingly similar to its mark. It alleges "The Complainant has the logo Plant Perfect trademarked. It only makes sense to have customers seek a website for further growing instructions at www.."
Complainant states that Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that Respondent�s website is under construction.
Complainant requests that the disputed domain name be transferred to it.
B. Respondent
Respondent asserts that the Rules are not applicable to her since she registered the disputed domain name prior to the effective date of the Rules.
Respondent indicates that she registered the disputed domain name prior to Complainant�s registration in Minnesota of the mark "Plant Perfect". In addition, "PlantP" is the name of her business, while "Plant Perfect" is used by Complainant for "branding".
Respondent asserts that the disputed domain name is generic.
Respondent asserts that she registered the disputed domain name with the intention of starting an e-commerce business selling tropical plants. Although this business was not immediately established following registration because of financing difficulties, it continues to be Respondent�s intention to establish the proposed e-commerce business (in the near future).
Respondent requests a finding of reverse domain name hijacking against Complainant since Complainant might have, but did not, contact Respondent in connection with this dispute. Also, Complainant unreasonably delayed in seeking to and registering the "Plant Perfect" mark.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this proceeding, Respondent has furnished a response to the complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.
The Panel rejects Respondent�s argument that she is not bound by the Rules. Respondent�s registration agreement with the Registrar provided that changes to the Registrar�s dispute settlement policy would be binding on Respondent as evidenced by Respondent�s continued maintenance of registration of the disputed domain name. Following the Registrar�s adoption and implementation of the Policy and Rules, Respondent maintained its registration of the disputed domain name and is bound by the Policy and Rules.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has not registered the trademark "PLANT PERFECT" on the Principal Register at the USPTO. (Footnote 2) Complainant has applied for registration of the mark at the USPTO. An application for trademark registration as such confers no exclusive rights on the applicant in respect to the mark for which registration is sought. (Footnote 3) Complainant�s asserted mark does not enjoy a presumption of secondary meaning under federal law. (Footnote 4)
Complainant has registered the "Plant Perfect" mark with the Secretary of State of Minnesota. Complainant has not in its pleadings provided any indication of the legal consequences of its recent trademark registration in that state. Absent a prima facie showing by Complainant that registration of a mark under the law of a particular U.S. state would at least establish a presumption of secondary meaning in that state, this Panel will not on its own initiative draw such an inference.
Common law trademark rights may arise under the federal Lanham Act or state law based upon the acquisition by a term of secondary meaning. (Footnote 5) The geographical extent of consumer recognition of the mark may be limited, and the scope of protection afforded to the mark in the infringement context may accordingly be limited. (Footnote 6)
Complainant�s asserted mark combines a generic noun and a common descriptive term.
Complainant has submitted very limited evidence regarding its claim to secondary meaning and trademark rights in the "PLANT PERFECT" mark. Complainant has done little to carry the burden of demonstrating exclusive rights in the "PLANT PERFECT" mark. However, the Panel does not consider it necessary to make a determination as to whether Complainant has rights in the trademark "PLANT PERFECT" because that determination is not necessary to reach a decision in this case.
If Complainant had established rights in the "PLANT PERFECT" mark, then Respondent�s "" domain name would be identical or confusingly similar to that mark.
The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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." (Policy, para. 4(c))
Respondent registered the disputed domain name prior to Complainant�s registration of the "PLANT PERFECT" mark in Minnesota and prior to its submission of an application for trademark registration at the USPTO. Respondent undertook an investigation of potential competitors of her proposed "" e-commerce business and did not find evidence of Complainant�s business. Complainant by its own account is a regional business, and did not have a presence on the Internet prior to Respondent�s registration of the disputed domain name. The Panel concludes that Respondent did not have actual or constructive notice of Complainant�s asserted trademark prior to her registration and preparations to use the disputed domain name.
Respondent has submitted substantial evidence of her preparations to use the disputed domain name for a bona fide offering of goods. This evidence includes various filings to do business under the disputed domain name in the State of California, and the preparation of a comprehensive business plan. The fact that Respondent has not yet initiated her proposed business has been explained as a consequence of start-up financing difficulties. This is a problem confronting many similarly situated enterprises. The Panel concludes that Respondent registered the disputed domain name and used it in preparation for the bona fide offering of goods before notice to her of a dispute within the meaning of paragraph 4(c)(i) of the Policy.
Complainant has failed to demonstrate that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy. The Panel therefore rejects Complainant�s request for a finding of abusive domain name registration and use against Respondent.
In light of the foregoing, the Panel need not address the issue of bad faith.
The Panel rejects Respondent�s request for a finding of abusive domain name registration and use on the part of Complainant. The Panel has not found a bad faith motivation on the part of Complainant in initiating this action.
7. Decision
Complainant, Bergen�s Greenhouses, Inc., has failed to establish that Respondent, Jennifer Barnes, has no rights or legitimate interests in the disputed domain name, "" within the meaning of Paragraph 4(a)(ii) of the Policy. The Panel therefore denies Complainant�s request that the Panel direct the registrar to transfer the disputed domain name to it.
Frederick M. Abbott
Sole Panelist
Dated: February 18, 2001
Footnotes: See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000. See Factual Background, supra. See this sole panelist�s decisions in, e.g., Monty and Pat Roberts, Inc. v. J. Bartell, Case No. D2000-0300; decided June 13, 2000; Marcario Casillas v. Maverick Group, Inc., Case No. D2000-0340, decided June 11, 2000, and; PG&E Corporation v. Samuel Anderson and PGE in the year 2000, Case No. D2000-1264, decided Nov. 22, 2000. In U.S. law, an application for trademark or service mark registration on the Principal Register constitutes constructive use of a mark, contingent on subsequent registration. 15 USCS � 1057(c). See 15 USCS � 1057(b) (establishing presumption of exclusive right to use based on registration). See, e.g., Century 21 Real Estate v. Billy Sandlin, 846 F.2d 1175 (9th Cir. 1988). See J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition � 26:29 (4th ed. 1996 and updated).
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