WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bar Code Discount Warehouse, Inc. v. Barcodes, Inc., dba Barcode Discount and Dan Reynolds
Case No. D2001-0405
1. The Parties
The Complainant is Bar Code Discount Warehouse, Inc., a corporation organized in the State of Ohio, United States of America (USA), with place of business in North Royalton, Ohio, USA.
The Respondent is Barcodes, Inc., a corporation organized in the State of Illinois, with place of business in Chicago, Illinois, USA, doing business as Barcode Discount, and Dan Reynolds, with address in Chicago, Illinois.
2. The Domain Names and Registrar
The disputed domain names are and .
The registrar of the disputed domain names 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 courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on March 22, 2001, and by e-mail received by WIPO on April 4, 2001. Complainant elected a single-member administrative panel. Payment of the requisite filing fees accompanied the courier mailing. On March 26, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrar�s Response received by WIPO on March 28, 2001).
(b) On April 4, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) On April 25, 2001, Respondent�s response was received by WIPO. Respondent also transmitted its response to Complainant. Respondent requested the appointment of a three-member administrative panel, and paid the requisite fee in connection therewith.
(d) On July 6, 2001, WIPO notified Complainant and Respondent of the appointment of Frederick Abbott (Presiding), Scott Donahey and Mark Partridge as the Administrative Panel in this matter. Each of the aforesaid panelists had provided to the Center an executed Statement of Acceptance and Declaration of Impartiality and Independence. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 20, 2001. On July 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.
(e) Because of difficulties encountered in the transmission of the hard copy file to the Panel, WIPO notified the parties that the projected date for a decision in this matter was extended until July 27, 2001.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, 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 has submitted an application for registration of the word service mark "BAR CODE DISCOUNT WAREHOUSE" on the Principal Register of the United States Patent and Trademark Office (USPTO) (serial no. 76023446, dated April 12, 2000). Such application is in International Class 42, covering "mail order services featuring bar code equipment and other related automated identification and data collection products". (Complaint, paragraph 12 & Annex D).
Complainant�s application for service mark registration has been initially refused by the USPTO on grounds that the proposed mark is merely descriptive of the services. (USPTO Action no. 1, mailing date October 17, 2000, Response, paragraph 10.6 & Exhibit 24). Complainant has previously abandoned a combination design and word mark application including the term "BAR CODE DISCOUNT WAREHOUSE", USPTO serial no. 74428406, filed August 25, 1993, abandoned September 30, 1994. (SAEGIS Report, April 12, 2001, Response paragraph 10.7 & Exhibit 25).
Complainant did not disclose in its complaint the initial refusal by the USPTO of its pending application for service mark registration of "BAR CODE DISCOUNT WAREHOUSE", nor did it disclose the abandonment of its earlier application.
Complainant uses the term "Bar Code Discount Warehouse" on the home page of a commercial Internet website identified by the address (URL) . Complainant also uses the term "Bar Code Discount Warehouse" in connection with a mail order business featuring bar code equipment and related data collection products. (Complaint, paragraph 12, and Annex E).
According to the registrar�s verification response to WIPO, dated March 28, 2001, "Barcode Discount" is the listed registrant of the domain name . The Administrative Contact, at the same address, is "Reynolds, Dan". According to a Network Solutions� WHOIS database record furnished by Complainant, the record for this disputed domain name was created on January 4, 2001, and was last updated on January 4, 2001, (Complaint, Annex A).
According to the registrar�s verification response to WIPO, dated March 28, 2001, "Reynolds, Dan" is the listed registrant of the domain name . The Administrative Contact, at the same address, is "Reynolds, Dan, Barcode D". According to a Network Solutions� WHOIS database record furnished by Complainant, the record for this disputed domain name was created on May 7, 1999, and was last updated on December 8, 1999, (Complaint, Annex A).
Respondent operates active commercial Internet websites (with apparently identical content) at addresses identified by each of disputed domain names (that is, at and ). These websites are identified on their home pages as "Barcode D", and offer for sale an extensive listing of bar code equipment and related data collection products.
Complainant and Respondent are in agreement that they are active competitors in the U.S. market for sales of bar code equipment and related data collection products (Complaint, paragraph 16, and Response, paragraph11.1). Complainant asserts a first use in commerce of "Bar Code Discount Warehouse" in connection with mail order sales in June 1993, (Complaint, paragraph 16). Respondent asserts a first use in commerce of names or slogans incorporating "bar code" in October 1995, (Response, paragraph 12 & Exhibit 26).
Respondent has submitted evidence of active third-party USPTO registrations for marks including the words "Bar Code" (i.e. "Bar Code Direct" and "The Bar Code Broker"), as well several pending third-party applications for registration of marks including those terms (e.g., ) (Response, paragraph 10 & Exhibit 1). Respondent has submitted evidence of numerous entities doing business in the United States with names that include the word "barcode" (id.). Respondent has submitted evidence that numerous domain names incorporating the word "barcode" are registered and are being used in connection with active commercial Internet websites (e.g., at ) (id., Exhibit 17).
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 the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant asserts that it is the owner of an application for registration of the service mark "BAR CODE DISCOUNT WAREHOUSE", and that it has used that mark in commerce since as early as June 1993.
Complainant states that Respondent has registered and used the domain names and , and that such names are identical or confusingly similar to its mark.
Complaint argues that Respondent does not have rights or legitimate interests in the disputed domain names because it was not commonly known by the disputed domain names.
Complainant asserts that Respondent registered and has used the disputed domain name in bad faith by intentionally diverting Internet users to its website by use of a name which is identical or confusingly similar name to Complainant�s mark. Complainant asserts that Respondent registered and has used the disputed domain name in bad faith by disrupting Complainant�s business through use of a name confusingly similar to Complainant�s mark.
Complainant requests the Panel to direct the registrar to transfer the disputed domain names to it.
B. Respondent
Respondent asserts that Complainant does not have rights in the service mark "BAR CODE DISCOUNT WAREHOUSE". Respondent indicates that Complainant�s application for registration of the mark does not establish rights. Respondent indicates that Complainant failed to disclose the status of its application for service mark registration, and that the USPTO has refused registration of the mark as merely descriptive.
Respondent states that Complainant cannot establish exclusive rights in the words "BAR CODE DISCOUNT WAREHOUSE" because the term "BAR CODE" is generic, and is being used with other generic or merely descriptive terms. Respondent notes that there are existing trademark registrations including the term "BAR CODE", that there are several pending applications including that term, and that there are numerous businesses in the United States that use that term in their name. Respondent asserts that the term "BAR CODE" is the "core term" used in Complainant�s name and that it cannot be combined with generic or descriptive terms to form an exclusive mark.
Respondent asserts that it has rights and legitimate interests in the disputed domain names. It states that it used the term "bar code" in an advertising slogan in 1995, and that it has used "bar code" in its corporate name since 1996. Respondent states that it has been commonly known by the names "Barcodes, Inc.", "Barcode D" and "Barcode Supply, Inc." since prior to registering the disputed domain names. It further indicates its good faith registration is demonstrated because the disputed domain names accurately describe its business of providing "barcode" equipment at a "discount" from a "warehouse".
Respondent indicates that Complainant has not submitted evidence of any bad faith. Respondent indicates that it has not offered to sell the names to Complainant or a competitor, that it has not registered the names to prevent Complainant from registering them, that it has not attempted to disrupt Complainant�s business, and that it has not used the names to divert business to its website by use of names confusingly similar to Complainant�s mark.
Respondent requests the Panel to reject the findings requested by Complainant.
Respondent also requests the Panel to find that Complainant filed its complaint in order to reverse hijack Respondent�s domain names. This is evidenced by Complainant�s failure to contact Respondent, by its failure to disclose to the Panel the status of its application for registration at the USPTO, and by attempting to obtain Respondent�s names in which Claimant has no rights or legitimate interests.
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 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 have 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 case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent has filed a detailed response to the complaint indicating that it received notice and was afforded an adequate opportunity to respond.
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 asserts rights in the service mark "BAR CODE DISCOUNT WAREHOUSE". Complainant has failed to establish such rights.
Complainant holds no USPTO service mark registration for "BAR CODE DISCOUNT WAREHOUSE", and Complainant does not enjoy a presumption of rights in that combination of terms [1]. Complainant asserts rights on the basis of its application for service mark registration. Yet an application for registration standing alone establishes neither rights nor presumptions [2]. Moreover, in this proceeding, Complainant�s application has been subject to an initial refusal by the USPTO on grounds that the proposed mark is merely descriptive of the services offered. Although Complainant might eventually overcome this initial refusal with adequate evidence of secondary meaning in its proposed mark, the USPTO refusal is certainly material to this proceeding as evidence of the descriptive character of Complainant�s proposed mark, and Complainant should have disclosed this refusal to the Panel.
Second, the terms in which Complainant claims service mark rights are generic or commonly descriptive. "Bar code" or "barcode" is the common word for a thing, that is, "a code consisting of a group of printed and variously patterned bars and spaces and sometimes numerals that is designed to be scanned and read into computer memory as identification for the object it labels"[3]. This is a generic term. "Discount" is commonly descriptive of prices lower than regular or retail prices. The common or generic character of the term "warehouse" has already been decided by the U.S. Court of Appeals for the Seventh Circuit in Mil-Mar Shoe v. Shonac, 75 F. 3d 1153, 1160 (7th Cir. 1996). In combination, the terms "Bar Code Discount Warehouse" commonly describe an establishment where certain kinds of equipment are sold at low prices.
Complainant in theory might establish that its commonly descriptive name has acquired sufficient secondary meaning to be exclusively associated with Complainant and thereby serve as a service mark. However, Respondent has provided substantial evidence that the terms used in Complainant�s proposed mark are widely used by other enterprises in the same channel of commerce. Complainant has not submitted evidence beyond its own use of the subject terms to establish that the public exclusively associates it with its combination of terms. In a case where the proposed mark consists of a combination of highly descriptive terms, a party seeking to establish exclusive rights carries a heavy burden of proof in removing those terms from the public domain. Complainant has not carried that burden here. See Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, decided April 13, 2000.
In light of its determination that Complainant has failed to establish rights in a trademark or service mark, the Panel need not consider the additional elements necessary for a finding of abusive domain name registration and use.
Respondent has requested the Panel to find that Complainant has attempted reverse domain name hijacking. The Panel admonishes Complainant�s counsel for its failure to disclose the status of its pending service mark application, particularly in light of its material reliance on that application as the basis for its assertion of rights in the mark. However, the Panel also recognizes that Complainant is doing business under the name in which it has asserted rights, and that Respondent�s use of that name in a domain name creates business difficulties for Complainant. Although Complainant has not successfully established rights in a mark, it does not appear to have initiated this proceeding in bad faith. The Panel therefore rejects Respondent�s request for a finding of reverse domain name hijacking.
7. Decision
Complainant, Bar Code Discount Warehouse, Inc., has failed to establish rights in the service mark "Bar Code Discount Warehouse" for the purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel therefore rejects its claim of abusive domain name registration and use against Respondent, Barcodes, Inc., dba Barcode Discount and Dan Reynolds, and denies its request that the Panel ask the registrar to transfer the domain names and from Respondent to it.
The Panel rejects Respondent�s request for a finding of reverse domain name hijacking on the part of Complainant.
Frederick M. Abbott
Presiding Panelist
Scott Donahey
Panelist
Mark Partridge
Panelist
Dated: July 27, 2001
Footnotes:
1. See 15 USCS � 1057(b) (establishing presumption of exclusive right to use based on registration).
2. An application creates a presumption of use, but contingent on subsequent registration. 15 USCS � 1057(c).
3. Merriam-Webster�s Online Collegiate Dictionary, , Panel search of July 26, 2001.
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