WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fleming Sales Company, Inc. v. David Marketing Group
Case No.�D2006-1174
1. The Parties
The Complainant is Fleming Sales Company, Inc. of Chicago, Illinois, United�States�of�America, represented by Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd., United�States�of�America.
The Respondent is David Marketing Group of Berea, Ohio, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network�Solutions,�LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on September�12,�2006. On September�13,�2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September�14,�2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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�22,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was October�12,�2006. The Response was filed with the Center on October�3,�2006.
The Center appointed Mr.�Kevin�C.�Trock as the Sole Panelist in this matter on October�23,�2006. 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
The domain name at issue is . Complainant is the owner of U.S. Trademark Registration No.�2,289,163 for the mark PATIO HEARTH, for use with portable fireplaces for burning wood and charcoal.
Respondent is a reseller of Complainant’s PATIO HEARTH brand goods, including portable fireplaces and other related items.
The Complainant seeks transfer of the disputed domain name.
5. Parties’ Contentions
A. Complainant
Complainant alleges that it has used the mark PATIO HEARTH on and in connection with portable fireplaces for burning wood and charcoal since at least as early as November�15,�1996. Complainant claims that it has not authorized Respondent to use Complainant’s registered trademark, either as a name of Respondent’s website or business, or in any related domain name. Complainant alleges that Respondent’s use of Complainant’s trademark began after Respondent started selling Complainant’s PATIO HEARTH brand goods as well as the goods of other competitors of Complainant. Complainant alleges that Respondent has used and continues to use the disputed domain name to sell competing goods side by side with Complainant’s PATIO HEARTH brand goods. Complainant also alleges that Respondent has never posted any disclaimer on its website that would distinguish itself from Complainant.
B. Respondent
Respondent is a reseller of Complainant’s PATIO HEARTH brand goods, including portable fireplaces and other related items. Respondent purchases Complainant’s PATIO HEARTH brand goods from Arctic Products, Inc. Arctic is a licensee and a distributor of Complainant’s products. Respondent alleges that the disputed domain name was purchased to sell patio and hearth goods and accessories. Respondent also alleges that the Complainant’s licensee, Arctic, promoted its website by providing a link to it as an “Authorized Dealer”.
Respondent further claims that the words “patio” and “hearth” are commonly used as descriptive terms or as business names by many retailers in the industry and that various combinations of these terms are quite common. Respondent alleges that the words “patio” and “hearth” are descriptive terms and are therefore not protectable.
6. Discussion and Findings
In order to prevail, the Complainant must prove the following three elements: (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 the domain name; and (iii)�Respondent has registered the domain name and is using it in bad faith. (Policy, paragraph�4(a)).
A. Identical or Confusingly Similar
Complainant is the owner of U.S. trademark registration No.�2,289,163 for the mark PATIO HEARTH, for use with portable fireplaces for burning wood and charcoal, not including gas-burning models. Complainant has used the PATIO HEARTH mark on and in connection with such goods since at least as early as November�15,�1996. Domain names that are identical to a complainant’s registered trademark have been held to be confusingly similar thereto. See Nokia Corp. v. Nokia India private Ltd., WIPO Case No.�D2006-0080 (March�19,�2006); Escher-Grad Tech, Inc. v. Tina Ujevica, WIPO Case No.�D2005-0956 (November�14,�2005)(complainant’s trademark ESCHER GRAD found identical to domain name ).
Respondent however, alleges that the words “patio” and “hearth” are commonly used as descriptive terms or as business names by many retailers in the industry and that various combinations of these terms are quite common. Respondent claims therefore that the words “patio” and “hearth” are descriptive terms and are not protectable.
A registered trademark is presumptive evidence that the Complainant has rights in the relevant trademark. Complainant is the owner of U.S. trademark registration No.�2,289,163 for the mark PATIO HEARTH, for use with portable fireplaces for burning wood and charcoal, not including gas-burning models. While Respondent’s argument that the terms “patio” and “hearth” are descriptive when used with portable fireplaces may have some merit, this is not the forum to answer that question. That issue would be more properly addressed in a cancellation proceeding before the U.S. Patent & Trademark Office.
The disputed domain name wholly incorporates and is identical to the Complainant’s trademark, it being well established that the “.com” particle is disregarded for the purpose of this comparison. Accordingly, the Panel finds that the domain name is identical to the registered trademark PATIO HEARTH in which Complainant has rights.
B. Rights or Legitimate Interests
This case raises the question of a whether reseller of trademarked goods can use the trademark at issue in its domain name. Previous panels have considered the issue of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.�D2001-0903 (November�6,�2001), the Panel surveyed the cases in this area and articulated a standard for determining whether such activities constitute bona fide offering of goods and services.
Paragraph�4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Under the Oki Data test, to be bona fide, the offering must meet the following requirements:
(1) Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No.�D2000-1306 (January�24,�2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
(2) Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No.�D2000-1774 (February�26,�2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No.�0109 (CPR July�25,�2001) (bait and switch is not legitimate).
(3) The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No.�D2001-0211 (April�25,�2001) (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No.�D2000-1201 (November�14,�2000) (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No.�D2001-0344 (June�14,�2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).
(4) The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No.�D2000-1525 (January�29,�2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
There is no dispute that the Respondent is a reseller of Complainants genuine PATIO HEARTH brand goods. But the Respondent also sells the goods of Complainant’s competitors. The record shows that the Respondent is not using the disputed domain name to sell only Complainant’s PATIO HEARH brand portable fireplaces and related goods. Rather, the record shows that the Respondent is using the disputed domain name to sell competing goods through the website in conjunction with Complainant’s PATIO HEARTH brand goods. Moreover, Respondent has never posted any disclaimer that discloses its true relationship with or distinguishes itself from Complainant. Thus, based on the record before the Panel, the Respondent has met element 1 of the Oki Data test, but has not met elements 2 and 3. Accordingly, the Panel finds that the Respondent has not made a bona fide offering of goods and services and that the Respondent has no right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
Respondent is a reseller of the Complaint’s products. Accordingly, the Panel considers it unlikely that the Respondent was unaware of the Complainant’s products and mark when it acquired the disputed domain name. Because the disputed domain name is identical to the Complainant’s registered trademark, the likelihood of confusion between the disputed domain name and the Complainant’s mark should have been evident to the Respondent at the time.
The evidence before the Panel demonstrates that the disputed domain name is being used by the Respondent to sell the Complainant’s products and those of its competitors. The website at the disputed domain name includes a prominent reference to the name of the Respondent, and immediately below that the words “patio” and “hearth” are also prominently displayed. No disclaimer or statement regarding the Respondent’s relationship (or lack thereof) with the Complainant is visible on the site. In the Panel’s view it is disingenuous of the Respondent to argue that the site is being used in a generic sense to sell “patio” and “hearth” related goods and accessories when the Respondent is also using it to sell the PATIO HEARTH branded products of the Complainant and those of its competitors; free riding in effect on the good will of the Complainant’s mark. Such conduct is not consistent with good faith and demonstrates a bad faith intent to trade off the good will of the Complainant’s mark to sell its competitors products.
Under these circumstances, the Panel finds that the use of the domain name to sell the Complainant’s products and those of its competitors constitutes an improper use of Complainant’s mark to attract internet users to the Respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs�4(i) of the Policy and 15�of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Kevin C. Trock
Sole Panelist
Dated: November�8,�2006
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