WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Keystone Publishing, Inc. v. UtahB
Case No. D2004-0725
1. The Parties
The Complainant is Keystone Publishing, Inc. of Salt Lake City, Utah, United States of America, represented by Durham Jones & Pinegar, P.C. of Salt Lake City, Utah, United�States of America.
The Respondent is UtahB of Salt Lake City, Utah, United States of America, represented by Howard, Phillips & Andersen of Salt Lake City, Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on September 9, 2004. On September 10, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. Still on September 10, 2004, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent, UtahB, was the current registrant of the disputed Domain Names. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on September 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October�11, 2004. At the request of the Respondent, the Center granted an extension until October 21, 2004. The Response was filed with the Center on October 21, 2004.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November�3, 2004. 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.
On October 27, 2004, the Complainant sent an email to the Center requesting permission to file a reply to the Respondent’s Response. On October 29, 2004, the Respondent sent an email to the Center opposing the Complainant’s request. Having read the Complaint and the Response, the Panel is prepared to render its decision and, per paragraph 12 of the Rules, the Panel will not request additional filings from the parties. The Panel does not believe there is anything in the Response that the Complainant was not aware of when it filed the Complaint.
4. Factual Background
The Respondent, UtahB, bought the disputed domain name, , during 2003, from a predecessor who registered the name on June�19, 2001. The Respondent uses the domain name to direct the public to its main business web site at .
The Complainant acquired the domain name at the end of 1999, from a person who had registered it in 1997. Some time during 2001, the Complainant began using the name UtahW as its business name. There is no evidence that the Complainant’s predecessor made any business use of the domain name .
The Complainant and the Respondent are both located in the State of Utah, know each other, and consider themselves business competitors engaged in organizing wedding services in Utah. At one point, the Complainant attempted to buy the disputed domain name from the Respondent.
5. Parties’ Contentions
A. Complainant
Complainant’s predecessor, Aaron Barker, registered the domain name on December 1, 1997. Complainant purchased the business and the domain name on November 2, 1999. Like its predecessor, Complainant does business as UtahW and uses its website “www.” to provide information to persons who desire to purchase wedding-related services.
Complainant has contracted to provide specific web pages for a fee, to advertise products such as banquet and reception facilities, bridal attire, catering, flowers, honeymoon accommodations, music, photography, and the like. Complainant also sells its own wedding-related products.
Although it is not registered, UTAHWEDDINGS.COM constitutes a valid common law trademark and service mark under the laws of Utah and the United States.
Respondent may assert that Complainant has no rights in the name UtahW because it is descriptive. Complainant disagrees. Although its mark is a combination of name components that might be descriptive by themselves, together they form a distinctive mark that is identified with Complainant’s business.
Even if Complainant’s mark were found to be descriptive, however, it has acquired a secondary meaning. Descriptive marks have been recognized as valid where secondary meaning is established, particularly where a geographic indicator is only part of a trademark.
Secondary meaning can be established through evidence of advertising and promotional activities and through direct evidence from Complainant’s customers. Complainant has established a secondary meaning in its mark UTAHWEDDINGS.COM as a result of extensive advertising and wide-spread name recognition in Utah. Through its mark UTAHWEDDINGS.COM, Complainant is recognized as the premier wedding website in Utah. Complainant has spent US$371,300 in advertising from 2002 through 2004, to promote its “www.” website, primarily through billboard advertising, television, radio, movie sponsorship, and various print media.
Complainant’s billboards have created substantial goodwill and name recognition. Complainant’s billboards created 40,420,151 gross impressions during the 2004 advertising campaign (Annex F).
Complainant’s television advertising has reached a substantial percentage of Utah residents during its four-year campaign.
As a result of this widespread recognition, in 2003, Complainant received 445,245 total visits to its website from 132,581 unique IP addresses.
As further evidence of secondary meaning, Complainant has provided the declarations of a number of Complainant’s vendor customers, each of whom attests to Complainant’s name recognition as the premier wedding website in Utah (Annex I).
Respondent is in direct competition with Complainant. Like Complainant, Respondent offers services related to the planning of events with a focus on weddings.
The disputed domain name was first registered on June 19, 2001, by Andrea Heid, the owner of at the time. Heid was fully aware of when she registered the disputed domain name in 2001. Respondent purchased the UtahB business during the spring of 2003, which included the rights in the domain name .
Persons who access the “www.” website are automatically redirected or “pointed” to the website after a few moments.
Respondent’s domain name is virtually identical to Complainant’s mark UTAHWEDDINGS.COM, the only difference being the letter “s” in Complainant’s mark. The difference between the marks in question - the single letter “s” - is not sufficient to defeat a finding of confusing similarity, particularly given the identical nature of the services marketed by the two companies.
Recognizing that typing errors are typical and that Internet users commonly make errors by eliminating characters when searching on the Internet, panels have uniformly found confusing similarity where the only difference between the complainant’s mark and the respondent’s domain name is a single character.
Complainant is aware of actual confusion that has resulted from the close similarity between its mark and Respondent’s domain name.
Paragraph 4(c) of the Policy describes circumstances that would demonstrate Respondent’s rights to or legitimate interests in the domain name for purposes of the Policy, paragraph 4(a)(ii). Respondent satisfies none of these circumstances. Given the nearly identical similarity between the two URL addresses, it seems clear that Respondent has no other purpose for the website than to divert Complainant’s actual or potential customers to Respondent’s website.
Panels have found bad faith under the Policy where a Respondent takes advantage of Internet users who mistype a Complainant’s URL address and are redirected to a Respondent’s website.
When Respondent’s predecessor, Andrea Heid, registered the disputed domain name, she knew of Complainant’s existence since the two companies were direct competitors. Heid’s registration with knowledge of Complainant’s mark supports a finding of bad faith registration.
Not only do the courts generally recognize that a disclaimer may not prevent a finding of likely confusion, but panels have found confusing similarity and bad faith in spite of such disclaimers.
If a potential customer sees an ad for Complainant’s website , but mistakenly mistypes the URL address and is taken to , she will learn from that site of the existence of and may choose to visit that website then or later. In that event, the customer will have learned of Complainant’s competitor as a direct result of Complainant’s advertising. The disclaimer cannot undo this kind of harm, for the customer is now aware of Respondent’s website and may patronize that site out of convenience because the customer has been automatically taken there.
Paragraph 4(b)(i) of the Policy also applies in this case. Respondent’s stated intention not to sell the domain name for anything less than an unstated “fair market value” is evidence of bad faith.
B. Respondent
Complainant has no rights to the domain name at issue, , because that domain name merely describes the parties’ goods and services, namely, goods and services related to weddings in Utah. Well-established principles of trademark law hold that a business can not claim a monopoly on such generic, descriptive words, which must be available to all merchants to accurately describe their goods.
Respondent, together with its predecessor, has conducted business as UtahB since 1997, and operates a website located at that Utah Business magazine has ranked as the number one on-line wedding planner for the past two years.
While Respondent also distributes a dvd featuring its vendors and produces a weekly television program on KJZZ, Respondent’s focus has always been on the promotion and development of its award-winning website.
To promote its website and generate traffic, Respondent has registered a number of domain names that describe its goods and services, including: , , , , and . Users interested in planning a wedding in Utah who reach one of these domain names are redirected to Respondent’s website at . When became available for registration on June 19, 2001, Respondent registered the domain name to use as part of this marketing strategy.
Respondent did not register the domain name in order to divert users trying to reach Complainant’s website located at . Prior to 2001, Complainant did not have an on-line focus. Rather, Complainant published a hard-copy wedding resource book under the name “Celebrations”. Sometime during the year 2001, Complainant changed its business name and the title of its book from “Celebrations” to “Utah Weddings”.
Because Utah Weddings is descriptive of the parties’ goods and services, however, according to well-established principles of trademark law, Complainant has rights if, and only if, Complainant successfully demonstrates the existence of secondary meaning associating the mark with Complainant at the time that the alleged infringing junior use began, namely on June 19, 2001. Complainant has submitted no evidence that demonstrates the existence of secondary meaning at that time.
The evidence submitted by Complainant relates to its advertising and promotion of Utah Weddings in the years 2002, 2003, and 2004. Such evidence is irrelevant. The evidence that Complainant has submitted, moreover, is fundamentally defective for multiple reasons. Numerous courts have held, for example, that secondary meaning can be proven only by properly conducted consumer surveys. Complainant’s evidence consists of its own self-serving statements and those of its business partners. Because Complainant has submitted no evidence from which this panel may conclude that consumers associated Utah Weddings with Complainant on June 19, 2001, Complainant’s claim to the domain name fails.
The terms Utah and Weddings are purely descriptive of the goods and services offered by Complainant and Respondent, as well as many other businesses, namely goods and services related to weddings in Utah. Such descriptive words are not entitled to trademark protection for two reasons, both of which are relevant here. First, such words accurately describe the goods and services of many merchants and thus, in the absence of secondary meaning, do not serve to distinguish goods and services as emanating from any particular seller. The second derives from the strong public policy against impoverishing the general vocabulary by allowing one seller to monopolize terms that fairly and accurately describe the products of many merchants.
Complainant’s mark is not registered—undoubtedly because Complainant is fully aware that Utah Weddings could never satisfy that standard. Nor is Utah Weddings inventive or bizarre as applied to goods and services related to weddings in Utah. As applied to weddings in Utah, the mark Utah Weddings is obviously descriptive.
The principle that a combined mark should be considered in its entirety does not apply where, as here, a domain name is a concatenation of a geographically descriptive term and another term. In such cases, the “geographic qualifier” is to be considered separately from the remainder of the domain name because that is the way the mark will be understood by readers. See AT&T Corp. v. WorldclassM, WIPO Case No. D2000-0553 (July 28, 2000).
The first use of UTAH WEDDINGS made by Complainant occurred when Complainant changed the name of its wedding resource book from “Celebrations” to “Utah Weddings” in 2001. Complainant has offered no evidence to substantiate its burden to prove that secondary meaning associating Utah Weddings with Complainant had developed prior to the date that Respondent registered on June�19, 2001.
Complainant’s evidence of advertising expenditures and media exposure relates to the years 2002 through 2004. Evidence of secondary meaning established after the junior use first appeared, however, is simply irrelevant.
Use of a domain name that appropriately describes the nature or target of a respondent’s services is clearly a legitimate use. In fact, it is hard to imagine a use of that would be more legitimate than use of the domain name to resolve to a website that offers goods and services related to planning a wedding in Utah.
Inclusion of descriptive words in domain names used to channel traffic to a business’ website is legitimate on many fronts, including the fact that inclusion of descriptive words in domain names positively affects the ranking of such domain names by website search engines.
While Complainant correctly notes that panels have found bad faith when a respondent has used a domain name to redirect visitors to a competitor’s website, Complainant omits to mention that such a finding is possible only when the complainant demonstrates that it has acquired exclusive rights in the mark at issue because of the fame or renown of the mark at issue. Complainant does not have exclusive rights in the words “Utah” or “Wedding” and has made no such showing.
Nor has Complainant provided any evidence that, in directing visitors to its website located at , Respondent intends to divert users seeking Complainant’s website to its own. Respondent registered a number of domain names that are descriptive of its business in order to advance its ranking on search engines in response to queries involving the terms Utah, Bride and Wedding and as a mechanism to reach users seeking information about planning a wedding in Utah. This does not demonstrate bad faith, but savvy marketing.
An inference of bad faith based on the respondent’s prior knowledge of the complainant’s mark is warranted only with respect to “a select group of internationally famous marks.” Ford Motor Company and Land Rover Ltd. v. Kevin Knuhtsen, WIPO Case No. DBIZ2002-00183 (July 15, 2002).
Nor does the fact that Respondent has refused Complainant’s offers to purchase for any amount less than its fair market value “show that its purpose in using the mark is primarily focused on obtaining consideration in excess of its out-of-pocket costs” (Complaint, at p. 19). Numerous panels have recognized that such a stance is equally indicative of a legitimate right to the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant’s first task under the Policy is to show that the disputed domain name, is “identical or confusingly similar” to the Complainant’s claimed trade or service mark, UTAHWEDDINGS.COM. The Complainant argues that the disputed domain name, even though it lacks the “s” of the Complainant’s claimed trademark, nonetheless is confusingly similar. The Complainant has documented this point using prior Policy decisions. The Complainant cites, inter alia, Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (September 5, 2000) where the panel found that deleting an “s” did not avoid a finding of confusing similarity. There was an identical situation in Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services (Hersheychocolateworld-Com-Dom), WIPO Case No. D2003-0841 (December�1,�2003).
The Panel agrees with the Complainant and its ample sampling of Policy decisions that the lack of an “s” in the disputed domain name does not save it from being nearly identical, and certainly confusingly similar, to the Complainant’s business known as UtahW. The Respondent does not dispute this point.
Whether the Complainant Has Trademark Rights in the Disputed Domain Name
The Complainant acknowledges that it does not have a registered trademark for UtahW. However, the Complainant asserts that it has been using the disputed domain name since 2001, to conduct its business of offering advertising for various wedding services companies such as florists and photographers, and for offering its own other, unspecified services. Based on this use of several years, along with alleged use by the previous domain name owner of from 1997,ntil the domain name was sold to the Complainant at the end of 1999, the Complainant claims to have acquired common law trademark rights.
The Complainant initially attempts to argue that its putative trademark, UTAHWEDDINGS.COM, is distinctive if one considers the whole of the mark as opposed to its component parts, which are admittedly geographic and descriptive. However, the Panel agrees with the Respondent: whether treated as a whole or as separate words, the Complainant’s mark is descriptive and ineluctably means weddings in Utah arranged via the Internet.
Complainant secondarily acknowledges that its mark UTAHWEDDINGS.COM, used to offer wedding services in the State of Utah via the Internet, may be found to be descriptive. However, the Complainant endeavors to show in some detail that it has advertised on billboards and on television, and that its website is visited hundreds of thousands of times per year. The Complainant also claims, but does not attempt to prove, radio advertising (Complaint Exhibits F-H).
The Complainant has also exhibited some 20 affidavits (Complaint Exhibits I-O) purporting to show that the Complainant’s business customers such as florists and photographers believe the mark UTAHWEDDINGS.COM has acquired good will with the public. Thus, the Complainant argues, even if the mark UTAHWEDDINGS.COM is descriptive, it has achieved secondary meaning with the public and now denotes the Complainant’s wedding services company. This should equate to common law trademark rights. (Among the many cases the Complainant cites in this regard are: Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No. D2000-1435 (December 11, 2000); North Shore Towers Apartments, Inc. v. Erik Kroll, NAF Case No. 109030 (July 2, 2002); and Salem Five Cents Savings Bank v. Direct Federal Credit Union, NAF Case No. FA103058 (February 15, 2002).
The Respondent counters by arguing that the disputed domain name, , is descriptive if not generic, just like the Complainant’s mark UTAHWEDDINGS.COM used for its wedding services business in the State of Utah. The name of the State of Utah is used in its geographic sense and can not be a protected part of the trademark. Moreover, according to the Respondent, even if it is conceded that UTAHWEDDINGS.COM is descriptive and not generic, the Complainant still has not been using it long enough – end of 2001, through the present – to endow the mark with secondary meaning. The fact that the Complainant has not yet applied for a registered trademark in the United States indicates the Complainant is well aware it has not acquired common law trademark rights in UTAHWEDDINGS.COM. Like the Complainant, the Respondent has submitted some affidavits from local Salt Lake City wedding services providers that contest the secondary meaning of the Complainant’s mark (Response Exhibits E-H).
The Respondent even goes so far as to insist that the latest appropriate date for judging whether the mark UTAHWEDDINGS.COM had acquired secondary meaning is the date the disputed domain name was registered, i.e., June 19, 2001. This automatically would lead to a finding that the mark had not acquired secondary meaning because the Complainant apparently did not begin using it until around that time or even the end of 2001. The Complainant’s predecessor apparently made no use of the mark between 1997 and the end of 1999. However, the Panel does not agree with the Respondent’s argument on this point, and notes that Policy paragraph 3(a)(iii) does not say the Complainant’s trademark rights have to be acquired at a specific point in time before the Complaint is filed. (See, for example, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, (September 23, 2001); and also Madrid 2012, S.A. v. Scott Martin-MadriMan Websites, WIPO Case No. D2003-0598, (October�8,�2003)).
As to whether the Complainant had acquired common law trademark rights in the disputed domain name by the time the Complaint was filed, the Panel finds the Complainant’s proof is insufficient. The main problem is that the mark UTAHWEDDINGS.COM used to sell wedding services in the State of Utah via the Internet is utterly descriptive. The Panel has difficulty imagining how the public would come to identify this mark with just the Complainant in the relevant market since the end of 2001 because, as the Respondent tellingly points out, numerous other websites with highly similar or nearly identical names are contemporaneously offering similar wedding services in the State of Utah. (Response Exhibit B lists , , and many others).
Aside from the pertinent records of billboards, television advertising and Internet hits, the Complainant has offered some 19 affidavits from its business clients. They are, of course, interested parties-- as are the affiants of the Respondent-- who state that they place advertising on the Complainant’s website at “www.” and that the site brings them good business. However, in the Panel’s view, this is not enough to show that the public has come to associate the Complainant and its services with the mark UTAHWEDDINGS.COM in the relatively short amount of time the Complainant has been using this mark. Even though the Complainant claims that it acquired an ongoing business with the name UtahW at the end of 1999, and that the seller had been using the name in the Complainant’s line of business since 1997, the Complainant has produced no proof about business use of the putative mark before late 2001.
The Panel has examined the previous Policy cases the Complainant cited as guidance for the Panel to find the Complainant has endowed UTAHWEDDING.COM with secondary meaning. The Panel does not believe any of these cases conforms to the fact pattern of the case at hand. In both Realmark Cape Harbour L.L.C. and North Shore Towers Apartments, Inc., supra, the names belonged to real estate and were not as abjectly descriptive as the Complainant’s claimed mark here. Also, it is readily apparent how the public would rapidly come to accept the name of a neighborhood of homes or of an apartment complex. As for the Salem Five Cents Savings Bank case, supra, the panel only accepted the principle that it is possible for a Complainant to prove secondary meaning through such exhibits as advertising and consumer surveys. But the Salem panel did not find the Complainant had proved it had acquired rights in the domain name which the panel dubbed “arguably highly descriptive.”
In selecting the quintessentially descriptive name UtahW for its wedding business in the State of Utah, the Complainant apparently was more interested in attracting Internet traffic than in coming up with a distinctive name. Thus, while the Complainant has a descriptive mark that attracts a large volume of casual search engine inquiries, the amount of time and effort it would take to endow this mark with secondary meaning is problematic.
The Panel finds the Complainant has failed to carry its burden of proof under Policy, paragraph 4(a)(i) to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel notes that its decision under paragraph 4(a)(i) is based on the information available in the case file, and that court proceedings can be more appropriate for deciding complex questions of secondary meaning like those raised in this case. Courts are also an appropriate forum to raise issues, such as unfair competition, that are outside the scope of the Policy.
Since the Policy requires that the Complainant prevail under each paragraph of the Policy at 4(a)(i-iii), the Panel does not need to proceed to a discussion of rights or legitimate interests or bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Sole Panelist
Dated: November 17, 2004
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