WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jason Hachkowski v. Lucas Barnes Case No. D2009-1800 1. The Parties
The Complainant is Jason Hachkowski of Selkirk, Manitoba, Canada.
The Respondent is Lucas Barnes of San Diego, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2009, naming Domains by Proxy, Inc. as the respondent.
The Center transmitted its request for registrar verification to the Registrar on January 4, 2010. The Registrar replied on January 6, 2010, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name would expire on August 26, 2011 and would remain locked during this proceeding, and that the registration agreement was in English. The Registrar did not dispute that the registration agreement contained a mutual jurisdiction clause as required by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The Registrar stated that the Domain Name had been registered using a privacy service and provided the full contact details on its WhoIs database which identified the Respondent.
The Center drew the Complainant's attention to the Registrar's identification of the Respondent by email on January 7, 2010, and invited the Complainant to amend the Complaint, while making it clear that this was not a notice of formal deficiency. The Complainant submitted an amended Complaint against the Respondent to the Center on January 7, 2010.
In the meanwhile, the Respondent wrote to the Center on January 5, 2010, complaining of harassment by the Complainant. The Center replied on January 6, 2010 stating that it was verifying whether the Complaint complied with formal requirements and would notify the Respondent once compliance with these requirements had been confirmed. The Respondent wrote again to the Center on January 6, 2010, complaining about the procedure and the removal of the identity shield.
The Center verified that the amended Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 28, 2010. The Response was filed with the Center on January 20, 2010.
The Center appointed Jonathan Turner as the sole panelist in this matter on January 27, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel finds that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is the sole officer, director and shareholder of a corporation which carries on the business of an online pharmacy from Manitoba, Canada. The Complainant registered the domain name, , on June 25, 2004, for use in that business. Through a website at this domain name, the business offers for sale generic medications for the treatment of HIV and provides information resources on HIV and AIDS.
The Domain Name was registered by the Respondent on August 26, 2008, and has been used for a website which provides information resources on HIV and AIDS, and also displays links to other websites including websites for online pharmacies competing with the Complainant's business. 5. Parties' Contentions A. Complainant
The Complainant contends that he has acquired a common law trademark in the phrase “” through his commercial use of and marketing efforts under this domain name. He avers that he has “expended considerable time and resources advertising and promoting the web site” and that “[a]s a result, the business has become success [sic], retaining existing customers and acquiring new customers”. In support of the submission that he has acquired rights in this mark, he points to the passage of more than five years since his registration of the domain name, the uniqueness of the combination and ordering of the words making up the domain name, and the nature of the business being one in which repeat orders are placed by satisfied customers and in which customers wish to safeguard their privacy.
The Complainant further contends that the Domain Name is confusingly similar to his alleged mark, noting that it differs from that mark only in the omission of hyphens.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Complainant, the Respondent has made no special efforts to promote his website at the Domain Name and relies on search engines to index it. The Complainant states that the Respondent had no connection to HIV or AIDS apart from his website at the Domain Name. The Complainant alleges that the chief purpose of the Respondent's website is commercial, namely the display of sponsored links.
The Complainant contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant states that about 4 months after registering the Domain Name, the Respondent wrote to him, making an unsolicited offer to sell the Domain Name for USD 4000. The Complainant acknowledges that this was after he wrote to the Respondent proposing that the Respondent become an affiliate of the Complainant's business. The Complainant further alleges that the Respodent's use of the Domain Name has resulted in confusion with the Complainant's domain name and damage to his business. The Complainant draws attention to other domain names registered by the Respondent and used for a website which redirects visitors to an online pharmacy, including .
The Complainant requests a decision that the Domain Name be transferred to him. B. Respondent
The Respondent notes that the Complainant has not applied to register “” as a trademark and submits that it is not possible to have common law trademark rights in three generic words. With regard to the specific points made by the Complainant, he comments that it is not possible to acquire exclusive rights to a set of generic words no matter how long one uses them; that “aids drugs online” is not a unique combination; and that the fact that customers may return to a reliable vendor and desire privacy makes confusion less likely.
The Respondent draws attention to differences in the content of the parties' websites and submits that they are not confusingly similar.
The Respondent contends that he has rights or legitimate interests in respect of the Domain Name. He states that the Complainant first contacted him four months after his registration of the Domain Name by which time content was being created; that he is well-known as a resource for HIV under the Domain Name; and that he is making legitimate non-commercial or fair use of the Domain Name without intent to divert consumers for commercial gain or to tarnish the Complainant's trademark.
The Respondent says that the whole point of his website is to give users more accurate information about the cheapest available drugs. He states that he has been personally involved in handing out free and low-cost HIV mediation to clinics and patients in his community. He maintains that the chief purpose of his website is not commercial: he points out that it contains hundreds of pages of information, of which maybe two have anything related to commercial activity, and that advertisements are displayed only to recoup costs.
The Respondent denies bad faith. He states that the Complainant was the first to mention any type of sale of his website and that the sale proposals related to the whole content of the website, not just the Domain Name. He explains that although he initially rebuffed the Complainant, he subsequently received an offer of 3000 dollars for the website from a third party and wrote to the Complainant more by way of a good faith notice than in an attempt to sell it to him.
The Respondent points out that the Complainant has not provided any evidence of the confusion which the latter alleges has occurred. He further submits that other domains which he may or may not own are irrelevant.
The Respondent requests that the Complaint be denied. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
It is clear from the terms of the Policy that these are cumulative requirements.
It is well-established that the first requirement can be satisfied by rights which are not registered, such as “common law” rights protected by laws on unfair competition or passing off. However, a person can only obtain such rights in descriptive terms if they have become distinctive of that person's business through its use of them. To put it another way, a person claiming rights in a descriptive term must show that the term has acquired a secondary meaning denoting its business.
The more descriptive the term, the more extensive must normally be the use, if it is to acquire such a secondary meaning and become distinctive of a particular company. Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning, as is illustrated in Canadian and United States law by Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd. [1938] 1 All ER 618 and Kellogg Co. v. National Biscuit Co., 305 U.S. 111.
In this case, the Complainant has not provided any specific evidence as to the extent or nature of its use of the term in which it claims rights, apart from mentioning its website which is located by a domain name consisting of the alleged mark. The Complainant has not stated the value of its sales using the alleged mark or of its expenditure on any advertising or other promotion under the mark. Nor has it disclosed the nature of any advertising or promotion. There is no evidence showing that consumers have been taught to regard or have come to perceive the term as a brand.
In these circumstances, the Panel finds that the Complainant has not proved that it has rights in the alleged mark on which it relies. The Complaint fails at first base and it is unnecessary to consider whether the other requirements of the Policy are satisfied. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner
Sole Panelist
Dated: February 5, 2010
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