20th Apr 2001

DECISION

Diamond Shamrock Refining and Marketing Company v.

CES Marketing Group Inc

Claim Number: FA0102000096766

PARTIES

The Complainant is Diamond Shamrock Refining and Marketing Company, San Antonio, TX, USA (“Complainant”) represented by Jill M. Pietrini, of Manatt, Phelps, & Phillips LLP. The Respondent is CES Marketing Group Inc., Vancouver, BC, CANADA (“Respondent”) represented by Ari Goldberger, of ESQwire Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is “cornerstore.com” registered with Register.com.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge and have no known conflict in serving as panelists in this proceeding.

Ms. Diane Cabell, Mr. Richard Page, and the Honorable Charles K. McCotter, Jr. as Panelists.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 26, 2001; the Forum received a hard copy of the Complaint on February 26, 2001.

On March 2, 2001, Register.com confirmed by e-mail to the Forum that the domain name cornerstore.com is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that the 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 March 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 22, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@cornerstore.com by e-mail.

A timely response was received and determined to be complete on March 22, 2001. An additional submission was submitted by the Complainant on March 29, 2001 and was considered by the Panel.

On April 5, 2001, pursuant to the Respondent’s request to have the dispute decided by a three member Panel, the Forum appointed Ms. Diane Cabell, Mr. Richard Page, and the Honorable Charles K. McCotter, Jr. as Panelists.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. The Complainant

The Complainant, Diamond Shamrock Refining and Marketing Company, contends the Respondent’s domain name, cornerstore.com is identical to the Complainant’s federally registered and common law trademark, CORNER STORE, and was registered by the Respondent in bad faith. The Respondent has made no legitimate use of the domain name and is now holding it in bad faith. The Respondent is a domain name broker in the business of selling domain names for a profit. The Complainant contends that the Respondent is a “cybersquatter”.

    1. The Respondent

The Respondent, CES Marketing Group Inc., contends that the domain name cornerstore.com is comprised of generic terms (meaning small store) to which the Complainant cannot maintain exclusive rights. The Respondent has a legitimate interest in cornerstore.com because it registered it to use for an online specialty food store and is in the business of registering generic words that are suitable for web site development. The Respondent denies it is a “cybersquatter”.

The Respondent also alleges it is a victim of “reverse domain name hijacking” contending that the Complainant’s actions constitute an abuse of the administrative proceeding.

FINDINGS

The Complainant is the owner of the trademark CORNER STORE which it has used in connection with retail gasoline and convenience store services since March of 1986. The Complaint’s business includes over 800 CORNER STORE locations in the United States and Mexico. Complainant’s CORNER STORE (Stylized) trademark was federally registered on January 14, 1998, based on an application filed on July 28, 1995. The Complainant continues to promote and derive substantial revenues from its CORNER STORE retail stores.

The Respondent is the owner of the cornerstore.com domain name. The Respondent is in the business of registering domain names that contain common generic and descriptive words that are suitable for developing into web sites related to those words.

The Respondent registered cornerstore.com in the fall of 1997 with Network Solutions, and transferred it to Register.com in 1998. The Respondent registered cornerstore.com because it is a descriptive term which the Respondent intended to use to develop an online virtual “corner store” to enable online customers to purchase specialty food items. The Respondent says that cornerstore.com has not yet been fully developed and launched. The Respondent plans to launch cornerstore.com in the near future.

The Respondent does not appear to use the domain name except to direct Internet users to its website where they can contact the Respondent to purchase the domain name.

The term “Corner Store” is a term that is commonly used to refer to a small store.

The Respondent’s search on the Internet search engine AltaVista for the term “corner store” yielded over 33,000 third party uses of the term on the Internet. In addition, there are numerous businesses throughout the United States that operate under the name Corner Store, which are not affiliated with the Complainant.

Using an independent consultant, on January 24, 2000, the Complainant contacted the Respondent via e-mail regarding purchasing the cornerstore.com domain name. The Respondent responded by inviting the Complainant’s representative to “make me an offer I cannot refuse.”

DISCUSSION

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

    1. the domain name has been registered and is being used in bad faith.

Because we find that the Complainant has failed to prove registration in bad faith, the Panel finds it unnecessary to discuss the first two elements.

Registration and Use in Bad Faith

The bad faith element is actually two elements, requiring the Complainant to show both bad faith registration and bad faith use. World Wrestling Federation Entertainment, Inc. v. Brosman, Case No. D99-0001 (WIPO Jan. 14, 2000) (“the name must not only be registered in bad faith, but it must also be used in bad faith”). The record in this case fails to establish actual or constructive knowledge of the Complainant’s trademark by the Respondent when registering the domain name. The critical fact is that Complainant’s trademark registration issued after the disputed domain name was registered. Therefore, the element of registration in bad faith is missing.

The Respondent registered the domain name cornerstore.com in the fall of 1997, prior to the issuance of the Complainant’s registered trademark. There is no evidence that the Respondent had any knowledge of the Complainant when it registered the domain name. Moreover, there is no evidence that the Complainant registered cornerstore.com with the intent to sell it to the Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers.

Reverse Domain Name Hijacking

The Respondent contends that this is a case of “reverse domain name hijacking” and, pursuant to Paragraph 15(e) of the Rules, this Panel should declare that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Respondent’s arguments that the Complainant brought this action in bad faith are without merit. The Complainant is the owner of the registered trademark CORNER STORE, and is simply attempting to recover a domain name identical to its mark. Further, the Complainant would have no knowledge of the fact that the Respondent had an earlier domain registration that predated the current one. The publicly accessible Whois database of domain registrations does not include a history of ownership or information about prior transfers. It only records the date that the domain was registered with the current registrar. Therefore, the Complainant had a reasonable, if not accurate, ground for thinking that the domain registration occurred after its trademark was registered.

DECISION

Based upon the above findings and conclusions, the Panel finds in favor of the Respondent. Therefore, the relief requested by the Complainant pursuant to Paragraph 4(i) of the Policy is Denied. The Respondent shall not be required to transfer the domain name “cornerstore.com” to the Complainant.

Charles K. McCotter, Jr., Panelist

Dated: April 20, 2001