3rd Aug 2001
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amana Company, L.P. v. Vanilla Limited
Case No. D2001-0749
1. The Parties
The Complainant is Amana Company, L.P., a Delaware limited partnership with its principal place of business at Amana, Iowa, U.S.A. The Complainant is represented by Shawn Hunter and Ben D. Todor, of Bracewell & Patterson, L.L.P., Houston, Texas, U.S.A.
The Respondent is Vanilla Limited, of Sharjah, United Arab Emirates. The Respondent is represented by Mr. Ari Goldberger of EsqWire.com Law Firm, Cherry Hill, New Jersey, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is <deepfreeze.com>. The domain name is registered with BulkRegister.com of Baltimore, Maryland, U.S.A. (“the Registrar”).
3. Procedural History
The Complaint submitted by Amana Company, L.P. was received on June 1, 2001, (electronic version) and June 6, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center (“WIPO Center”).
On June 21, 2001, a request for verification was transmitted by the WIPO Center to the Registrar, requesting it to:
– Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy (“Supplemental Rules”), paragraph 4(b).
– Confirm that the domain name at issue is registered with it.
– Confirm that the person identified as the Respondent is the current registrant of the domain name.
– Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
– Confirm that the Uniform Domain Dispute Resolution Policy (“UDRP”) was in effect.
– Indicate the current status of the domain name.
By email dated June 22, 2001, the Registrar advised the WIPO Center as follows:
– The Registrar had received a copy of the Complaint from the Complainant.
– It is the Registrar of the domain name registration <deepfreeze.com>.
– The Respondent is shown as the “current registrant” of the domain name.
– The administrative contact is Cecilia Ng and the technical contact is Denise de Bito, both of the same address as the Respondent.
– The UNDRP applies to the domain name.
– The domain name registration <deepfreeze.com> is currently on “Registrar Lock”.
The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) (hereinafter simply the “Policy”).
The advice from the Registrar that the domain name in question is on “Registrar Lock” indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy (“Rules”), the WIPO Center on June 25, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on July 13, 2001 (electronic) and July 13, 2001 (hard copy).
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On July 25, 2001, the WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by August 8, 2001.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a manufacturer and vendor of kitchen appliances, notably refrigerators and freezers. It has owned and used the trademark “DEEPFREEZE” on refrigeration equipment since 1940. The mark has been registered in the United States Trademark Office since September 16, 1941. The Complainant did not allege trademark registrations in any other country. The Complainant did not claim any reputation for the mark outside of the United States.
The Complainant has not given the Respondent any rights in respect of its mark. It forwarded “cease and desist” letters to the Respondent, which have not been answered. The disputed name has not been developed into a website.
5. Parties’ Contentions
The disputed domain name is identical to Complainant’s trademark.
Respondent is not using and has not developed a website.
Respondent has no connection or affiliation with Complainant. Respondent has not received any license or consent to use the marks in a domain name or in any other manner.
Respondent is a well-known cyber-squatter which has engaged in a pattern of bad faith registrations. It has had three decisions rendered against it or associated persons under the UDRP. In each case, Respondent had registered a well-known mark (viz Europay International D2000-0513, Mars D2000-0586 and Aeroturbine N7793674). It has recently been sued successfully in New York by Virgin Enterprises arising out of its registration of 23 domain names incorporating the “Virgin” mark.
The Respondent “warehouses” domain names by the thousands. These domain names are not used to sell any product or service. Its interest is to profit from the sale or lease of warehoused names.
Complainant’s mark is stylized with the letters in cursive format. Therefore it is neither identical nor confusingly similar to the domain name.
“Deep freeze” is a common expression referring to preservative storage, particularly of food.
Respondent registered the name in connection with the development of a website called “Deep Freeze News” relating to the frozen food industry.
There is no evidence of bad faith. Respondent merely registered a descriptive name of two ordinary words in common usage. The Respondent has not offered to sell the name.
The UDRP cases cited by Complainant were undefended by the Respondent: in none of them was there evidence of any attempt to sell the name.
Whilst Respondent has registered thousands of domain names, there registrations are of common words or city names registered in connection with one or more sites which are part of Respondent’s associated company, World News Inc., this company has a network of news and information sites located at <worldnews.com>.
<worldnews.com> includes 600 different sites which receive 2 million unique visitors per month and 5 million visitor sessions per month. <worldnews.com> has been recognized internationally as providing quality news and information, according to various reports from various prestigious journals as annexed to the Response.
Respondent intended to develop a website, prior to receiving notification of the dispute but has been prevented from doing so because the Registrar has placed the site on “lock”. Respondent has made demonstrable preparation to use the name in connection with the bona fide offering of services prior to the dispute. Complainant has offered no evidence to establish fame or a strong secondary meaning in its mark such as would make consumers associate the words “Deep Freeze” only with the Complainant.
The registration of common word domain names – no matter how many – does not constitute bad faith under the Policy (see Allocation Network GmbH v Gregory WIPO D2000-0016).
Respondent’s contentions were supported by a declaration from Charlotte Gomez, a director of Serenade Limited, which has acquired the assets of the Respondent. She is also a director of World News Inc. Serenade Limited owns thousands of generic and geographic domain names worldwide, which it uses to develop websites for World News Inc. She declared that the disputed domain name was registered for a news site covering the frozen food industry.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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”.
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
– That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
– That the Respondent has no legitimate rights or interests in respect of the domain name; and
– The domain name has been registered and used in bad faith.
In the view of the Panel the disputed domain name is identical to the Complainant’s mark “Deep Freeze”. It does not matter that the Complainant’s mark is stylized with letters in cursive format. It is the words that count. The fact of registration in any jurisdiction is enough, even though in some jurisdictions the registration of a mark consisting solely of two words in common parlance might have been difficult to achieve.
With regard to the second criterion in paragraph 4(a) of the Policy, the Complainant has given no rights to the Respondent. However the Respondent seeks to come within one of the exceptions under paragraph 4(c) by claiming demonstrable preparations to establish a legitimate business before receiving notice of the dispute.
The Respondent claims that the name was to be used for a site which would dispense information about frozen foods and that this was an aspect of the legitimate business of World News Inc. Vanilla Limited was acquired by Serenade Limited, which is connected with World News Inc. The Panel, however, notes that Ms. Gomez’s declaration does not say:
(a) When Vanilla Limited had been acquired by Serenade Limited;
(b) When the alleged demonstrable preparations to use the domain name in a legitimate business began.
(c) What exactly were the demonstrable preparations.
The Panel notes that the Registrar’s advice that its record of the registration commenced on July 15, 1997. This fact leaves unanswered what was in the minds of those running Vanilla Limited at that date. Accordingly, the Respondent has not proved that it comes under one of the exceptions in paragraph 4(c) of the Policy.
A Complainant has to prove bad faith both at the time of registration and continuing bad faith after knowledge of the Complainant’s mark. It is hard to say that the words “Deep Freeze” as an expression for freezing food was not known to the Respondent at the time of registration. However, because the Complainant has made no claim about the worldwide fame of its mark, one cannot infer that a registrant in the United Arab Emirates could be assumed to know about the Complainant’s mark at the date of registration. The notional registrant would know of the expression “deep freeze” which has become a noun in common use (e.g. “I shall take a meal out of the deep freeze”) or a verb (e.g. “I shall deep freeze that fish”). No strong secondary meaning has been established.
Because it is not a made-up word, “Deep Freeze” does not impinge as a distinctive mark on the average person in the same way as a made-up brand name (e.g. Coca-Cola) or a personal name (e.g. McDonalds).
Accordingly, the Panel considers that bad faith registration has not been proved. It is unnecessary to consider whether there has been bad faith use.
For the foregoing reasons, the Panel determines that the Complaint be denied.
Hon. Sir Ian Barker QC
Dated: August 3, 2001