16th Jan 2006
NATIONAL ARBITRATION FORUM
Mirama Enterprises Inc, d/b/a Aroma Housewares Company v.
NJDomains, Abuse Contact: firstname.lastname@example.org c/o Gerald Gorman
Claim Number: FA0510000588486
Complainant is Mirama Enterprises Inc, d/b/a Aroma Housewares Company (“Complainant”), represented by Thomas J. Tighe, 6265 Greenwich Drive, Suite 103, San Diego, CA, 92122. Respondent is NJDomains, Abuse Contact: email@example.com c/o Gerald Gorman(“Respondent”), 33 Knightsbridge Road, Piscataway, NJ 08854.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aroma.com>, registered with Register.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 28, 2005.
On October 28, 2005, Register.com confirmed by e-mail to the National Arbitration Forum that the <aroma.com> domain name is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
On December 2, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
An untimely Response was received and determined to be complete on December 19, 2005.
On December 21, 2005, due to exceptional circumstances, the Panel’s decision deadline was extended to January 20, 2006.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Mirama Enterprises Inc., states that this Complaint is based on the following USPTO trademarks:
Reg. 2,679,542 of the word mark “AROMA” for electrical cooking utensils in International Classes 021 and 007;
Reg. 2,731,077 of the word mark “AROMA” in stylized form for electrical cooking utensils in International Classes 011 and 007;
Reg. 1,890,984 (cancelled) for a design plus word mark “AROMA” for electrical cooking appliances for use in cooking, steaming, stewing, warming and stir frying, in International Class 011;
Pending registration (serial no. 76/637,644) for the word mark “AROMA” for electrical cooking appliances for use in cooking, steaming, stewing, warming and stir frying, in International Class 011; and
Pending registration (serial no. 76/637,645) for the design plus word mark “AROMA” for electrical cooking appliances for use in cooking, steaming, stewing, warming and stir frying, in International Class 011.
Except for the “.com” suffix, Respondent’s domain name is identical to Complainant’s U.S. registered word marks, and therefore the subject domain is without question confusingly similar to the marks.
Because the domain name was registered in June 1995, Respondent has not used or made any preparations to use the <aroma.com>domain name. In fact, the subject domain name does not resolve to an active web site. A web site search in the major search sites, e.g. Google, does not find the subject domain name. Respondent does not receive e-mail via the subject domain; Respondent’s listed e-mail server is ATT.NET. Neither “www.aroma.com” nor “aroma.com” can be found on the Web.
Respondent has never used <aroma.com> or any corresponding name in commerce as a trademark or service mark in any geographic area. Furthermore Respondent has never made any demonstrable preparations to use the subject domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Respondent has never been commonly known by the subject domain name.
Based on all the above, Respondent does not have any rights or legitimate interests in the subject domain name.
Complainant has standing herein because it is the exclusive worldwide licensee to the U.S. trademark registrations 2,679,542 and 2,731,077 (as listed above)—both for the AROMA mark. The exclusive license was granted to Complainant by Mr. Peter Chung-Yuan Chang, who is the registrant and current owner of said registrations. Through Mr. Chang there is a continuous chain of title to, and use of, the AROMA mark dating back to 1986. The chain of title includes a U.S. trademark registration of AROMA (Reg. No. 1,890,984) on April 25, 1995, which is two months before Respondent registered the subject domain name.
The chain of title to the AROMA mark begins in November of 1986 when the mark was first used by John Chang Enterprises, Inc. In February 1991, Aroma Manufacturing Company, Inc. entered into an agreement with John Chang Enterprises, Inc. to use the AROMA mark in connection with kitchen electrical products, and to register the mark in the U.S. and elsewhere. Aroma Manufacturing Company, Inc. subsequently applied for U.S. registration of the AROMA mark, and it was registered on April 25, 1995 (Reg. No. 1,890,984). In March1996, the AROMA mark and Registration No. 1,890,984 was assigned by Aroma Manufacturing Company, Inc. to Mr. Peter Chung-Yuan Chang, who thereafter granted an exclusive license to the AROMA mark and all corresponding registrations of the mark to Complainant.
Using the AROMA mark, Complainant has grown to become recognized in the marketplace as a leading provider of small kitchen electrical cooking appliances.
Respondent’s bad faith in registering the subject domain name is shown by several facts. First, Respondent registered the subject domain name in June 1995 notwithstanding the fact that the predecessor (Aroma Manufacturing Company, Inc.) of Complainant’s exclusive licensee had obtained U.S. registration of AROMA on April 25, 1995 (Reg. No. 1,890,984). An ordinary trademark search of the U.S. Patent and Trademark Office’s database would have revealed the 1,890,984 registration. Respondent registered the subject domain name notwithstanding the published and publicly available record of the 1,890,984 registration. Secondly, in the ten years since Respondent’s first Internet registration of the subject domain name, Respondent has done nothing with it.
Prior to filing this Complaint, Respondent was contacted and an inquiry was made as to a price at which Respondent would sell the subject domain name. Respondent responded by stating that the domain was not for sale, but that Respondent was willing to rent the domain for the unreasonable and outrageous amount of $2,000 per month. Because $2,000 per month vastly exceeds the amount of money Respondent has invested in the domain, this is a clear indication of bad faith and an indication that Respondent knowingly acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.
Complainant’s trademark for “aroma” is generic. “Aroma” is a common word in the dictionary, meaning a quality that can be perceived by the olfactory sense. This common word is unsurprising subject to substantial third party use. A Google search for “aroma,” without the words “mirama,” “aromaco.com,” ”steam,” and “cooking” to avoid references to Complainant, yielded over 7 million third party uses of this common word. The third party uses relate to common meaning of the term such as aroma therapy, perfumes, candles, and other fragrances. The Disputed Domain was not registered with Complainant’s trademark in mind, and Complainant had no knowledge of Complainant or its trademark when the Disputed Domain was registered.
The Disputed Domain was not registered with the intent to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website. The Disputed Domain was not registered to prevent Complainant from owning a domain name incorporating its trademark. Except from replying to Complainant’s unsolicited offer to purchase the Disputed Domain, Respondent has never offered the Disputed Domain for sale. Respondent has used the Disputed Domain to post advertisements related to the term “aroma,” since before initiation of this dispute.
In May 2005, Respondent received a cease and desist letter from Complainant. Respondent’s counsel replied to Complainant’s letter in May 2005, denying that it was violating Complainant’s rights and asserting that Complainant was engaged in reverse domain name hijacking.
Respondent registered the disputed domain name on June 21, 1995.
Complainant asserts a number of trademark registrations, these trademarks are as follows:
First Use Date
May 30, 2000
Jan. 28, 2003
May 30, 2000
July 1, 2003
Feb. 24, 1994
Apr. 25, 1995
May 2, 2005
May 2, 2005
The website associated with the disputed domain name provides links for goods and services that relate to the word “aroma,” such as aroma therapy, fragrances, perfumes, and candles.
The Panel finds that Complainant sent a cease and desist letter in May of 2005.
The Panel also finds that, in May of 2005, Respondent replied to Complainant’s cease and desist letter.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The first matter before this Panel is whether to accept Respondent’s late Response. Respondent did not file its Response in a timely manner pursuant to Rule 5. However, the Panel chooses to accept Respondent’s Response. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
Identical or Confusingly Similar
Complainant argues that it is the exclusive licensee of the AROMA mark, but it does not offer any evidence, beyond mere assertions, that demonstrate its relationship with the holder of the AROMA marks. None of the proffered trademark registrations list Complainant as the “Owner” of the trademarks. Therefore, the Panel finds that Complainant has not demonstrated rights in a trademark pursuant to Policy ¶ 4(a)(i). See CMG Worldwide, Inc. v. Humphrey Bogart Club, FA 144631 (Nat. Arb. Forum May 27, 2003) (dismissing the complaint despite the complainant’s authorization to pursue the complaint on behalf of the owner of the trademark rights HUMPHREY BOGART, as the complainant did not own the rights to the mark); NBA Props., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying complaint because the complainant was not the owner of the KNICKS trademarks).
Alternatively, Complainant asserts a number of trademark registrations, but the Panel finds, for the following reasons, that the trademark registrations do not establish rights in the AROMA mark pursuant to Policy ¶ 4(a)(i).
First, the Panel finds that the two live registered marks (Reg. Nos. 2,679,542 and 2,731,077) do not have first use dates that predate the domain name registration. The Panel finds that these marks do not establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); B&V Assocs., Inc. v. Internet Waterway, Inc., FA 147531 (Nat. Arb. Forum Apr. 15, 2003) (“[T]he Policy . . . was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant's rights must predate Respondent's domain name registration . . .”).
Next, the dead design mark (Reg. No. 1,890,984) does not establish rights pursuant to Policy ¶ 4(a)(i).
Finally, the remaining two marks (Serial Nos. 76/637,644 and 76/637,645) have not been registered by the USPTO. Additionally, the latter one is a design mark. The Panel finds that the pending trade and design marks do not demonstrate rights in the AROMA mark pursuant to Policy ¶ 4(a)(i). See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); FRH Freies Rechenzerntrum Heiberufe v. Ingenieurburo FRH Stuttgard, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that the complainant had not proven by a preponderance of the evidence that the <frh.biz> domain name was identical to the complainant’s FRH mark because the complainant’s “registrations are not for ‘FRH’ alone, but . . . for stylized versions of the letters ‘FRH’ accompanied by the [complainant’s] name”).
The Panel finds that Complainant has not established Policy ¶ 4(a)(i).
Rights and Legitimate Interests
Respondent asserts that it has used the disputed domain name to post advertising links to goods and services related to the term “aroma.” The Panel finds that Respondent’s use of the disputed domain name, to link to goods and services related to the term “aroma,” is a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i). See Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (The panel found for the respondent, who was in the business of identifying domain names comprised of generic or descriptive terms, registering those domain names, selling them to interested parties, and developing websites using those domain names for clients. The respondent rebutted the argument that it had no legitimate interest in the domain name <craftwork.com> since the name had not acquired distinctiveness, and instead, was merely generic and descriptive at the time of registration.); Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (“[G]iven the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.”).
The Panel also finds that Respondent’s registration of the <aroma.com> domain name before Complainant’s proven use of the similar mark demonstrates Respondent’s rights or legitimate interests. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the complainant applied for registration of the mark after the respondent registered the domain name and the complainant has not proven any earlier use of the mark); Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).
The Panel finds that Complainant has not established Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel finds that Respondent could not have registered the <aroma.com> domain name in bad faith because the domain name registration pre-dates Complainant’s trademark registration. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”); Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
Respondent also asserts that it is in the business of registering domain names comprised of generic words. The Panel finds that Respondent’s registration and use of the <aroma.com> domain name does not exhibit bad faith pursuant to Policy ¶ 4(a)(iii). See Trump v. olegevtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on the complainant’s famous mark TRUMP, since the complainant does not have the exclusive right to use every form of the word “trump”); Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where the respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith).
Additionally, the Panel finds that Complainant has not demonstrated that Respondent has registered or used the <aroma.com> domain name to target Complainant in any way proscribed by the Policy. See It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb. 15, 2005) ("[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith."); U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”).
Finally, the Panel does not accept that the conversation concerning the lease of the domain name exhibited bad faith. Respondent asserts that its discussions about leasing the domain name were in response to Complainant’s offer to sell the domain name. The Panel accepts Respondent’s assertion and holds that responding to an unsolicited offer to sell a domain name does not exhibit bad faith pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”); Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb. 27, 2002) (finding that the respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to the complainant after the complainant initiated the discussion).
The Panel finds that Complainant has not established Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent asserts that Complainant was fully aware that Respondent had a legitimate right or purpose in using the disputed domain name. It states that it and Complainant had a conversation prior to this proceeding regarding Respondent’s rights in the <aroma.com> domain name. The Panel finds that Complainant commenced this proceeding against Respondent even though it was aware of Respondent’s rights in the<aroma.com> domain name. The Panel finds that Complainant’s actions strongly imply that Complainant has attempted to abuse the administrative process to wrest control of Respondent’s domain name and take over the domain name registration. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on a claim of reverse domain name hijacking, the respondent must show that the complainant brought the claim in bad faith despite the knowledge that the respondent has an unassailable right or legitimate interest in the disputed domain name, or that the respondent lacks the requisite bad faith registration and use of the disputed domain name);Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that when the complainant knows it has no rights in the mark but brings a complaint despite this fact, the complainant has acted in bad faith and attempted Reverse Domain Name Hijacking which constitutes an abuse of the administrative proceeding).
Accordingly, the Panel holds that Complainant has engaged in Reverse Domain Name Hijacking.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
John J. Upchurch, Panelist
Dated: January 16, 2006