16th Feb 2010
National Arbitration Forum
National Gardening Association, Inc. v. CK Ventures Inc.
Claim Number: FA0911001294457
Complainant is National Gardening Association, Inc. (“Complainant”), represented by Shapleigh Smith, of Dinse, Knapp & McAndrew, P.C., Vermont, USA. Respondent is CK Ventures Inc. (“Respondent”), represented by Ari Goldberger, of Esqwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gardeningwithkids.com>, which is registered with Nameview, Inc. (“Nameview”).
The undersigned, David H Tatham, Carolyn M Johnson, and Diane T Cabell, certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 13, 2009; the Forum received a hard copy of the Complaint on November 16, 2009.
On November 26, 2009, Nameview confirmed by e-mail to the Forum that the <gardeningwithkids.com> domain name (“disputed domain name”) was registered with it and that the Respondent is the current registrant of the name. Nameview has verified that Respondent is bound by its 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 December 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of December 24, 2009 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on January 12, 2010.
An additional Submission was received from Complainant on January 19, 2010, and it was deemed by the Forum to have been received in a timely manner according to the Forum’s Supplemental Rule 7.
Respondent submitted an Additional Submission on January 26, 2010, which was after the deadline for submissions. The Forum has indicated to the Panel that it does not consider the submission to be in compliance with its Supplemental Rule 7.
On February 8, 2010, Respondent filed a document entitled “Respondent’s Correction of Error in Response” in which it sought to correct the fact that in its Response it had been incorrectly identified as “Vertical Axis, Inc.”
On January 27, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed David H Tatham, Carolyn M Johnson, and Diane T Cabell as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant describes itself as a national association serving as a clearing house for gardening information.
Complainant is the owner of two trade mark registrations. Both of them consist of the words ‘gardening with kids’ and a flower head device. The words ‘gardening’ and ‘kids’ are printed boldly, the word ‘with’ is in rather smaller type, and the earlier mark of the two, No. 2987062, also contains the words ‘Tools to Help Young Minds Grow’ in tiny type under the letters ARDE of the word ‘gardening’. The details of the marks are a follows –
Registration No: 2987082. Goods: “Catalogs in the field of gardening”. Filed: June 22, 2004. Registered: August 23, 2005. First use: January 2000 (“the 2005 Registration”).
Registration No: 3238700. Goods: “Catalogs in the field of gardening”. Filed: June 30, 2006. Registered: May 8, 2007. First use: January 2005 (“the 2007 registration”).
Complainant contends that both of these marks are identical to the disputed domain name <gardeningwithkids.com>, apart from the addition of ‘.com’ which, it contends, should not be considered.
Complainant also contends that Respondent has no rights or legitimate interest in the disputed domain name because:
· Respondent has no relationship with Complainant and has no authorization to use its trademarks;
· Respondent is not commonly known by the disputed domain name; and
· Respondent had not used or made demonstrable preparations to us the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute because the website at the disputed domain name merely contains hyperlinks to other pages which, in turn, contain hyperlinks to various websites, including those of Complainant’s competitors, and Respondent earns click-through fees or other remuneration as a result.
Complainant contends that Respondent’s bad faith is evidenced:
· by the above-mentioned hyperlinks;
· by the fact that Respondent is likely to receive financial compensation for such links;
· by the use of Complainant’s trademarks – or the dominant portion of one of them –
in the disputed domain name without justification; and
· by the fact that initially Respondent used Nameview’s Identity Shield to conceal its identity which is an indication that it was seeking to hide its activity in proceedings under the Policy.
Finally, Complainant notes that it sent a cease and desist letter to Respondent care of its Identity Shield in November 2007, which it was able to prove had been received and signed for. Two further letters were sent on May 28, 2009 only one of which received and signed for. No reply was received to any of these letters.
In a lengthy and somewhat rambling Response, Respondent contends as follows –
· The disputed domain name was only registered because it was a descriptive term, and it was registered in May 2005 when the original registration of it had expired, been deleted, and had therefore became available.
· It is folly to suggest that Complainant’s composite trademark GARDENING WITH KIDS TOOLS TO HELP YOUNG MINDS GROW is identical or confusingly similar to the disputed domain name. Nor is the trademark GARDENING WITH KIDS standing alone similar, as the design element which it contains distinguishes it from the disputed domain name.
· Although Complainant claims use of its trademark GARDENING WITH KIDS standing alone since January 2005, this mark was not applied for until June 2006. Meanwhile, the disputed domain name had been registered in May 2005 at a time when Complainant did not possess a registered trademark, so Respondent was not under constructive notice of this mark when it registered the disputed domain name.
· The phrase ‘gardening with kids’ is a wholly descriptive term that is the subject of over 200,000 third party results in a Google search.
· The disputed domain name has been used in connection with a bona fide offering of goods and services, namely Yahoo auto-generated pay-per-click advertisements relating to gardening or gardening with children.
· There is no evidence that when Respondent registered the disputed domain name it had Complainant, or its trademark, in mind. It had never heard of either.
· Respondent has registered over 90 other domain names which incorporate the words ‘garden’, ‘gardening’, or ‘kids’.
· Complainant has waited over 4 years before initiating the Complaint.
Respondent then proceeds to expand on the above facts and to back them up with reference to various Decisions made under the Policy.
C. Additional Submissions
In its Additional Submission, Complainant dismisses Respondent’s claims that its trademarks are generic or descriptive, or that they are design-plus-word marks and so cannot be used to prevent others from using them, or that the design aspects of the marks are such that there can be no finding of confusing similarity.
Complainant also repeats its claim – with reference to various previous Decisions made under the Policy – that the content on Respondent’s website do not constitute a bona fide offering of goods and services.
Complainant contends that Respondent must have signed an Agreement with Nameview, the company who registered the disputed domain name, under which it agreed that the domain name did not “infringe the legal rights of a third party”.
Complainant points out that it has used one of its trademarks since at least as early as January 2000, and that it filed an application register it on June 22, 2004 which was almost a year before the disputed domain name was registered.
With regard to the question of bad faith, Complainant again refers to the Agreement which Respondent signed with Nameview and points out that Respondent files domain names in large numbers and therefore has an obligation to ensure that they do not infringe someone else’s rights. The confusing similarity between the disputed domain name and Complainant’s trademarks make it likely that users attracted to the website at the disputed domain name, will be confused into thinking that it is sponsored by Complainant.
Complainant denies Respondent’s apparent claim of laches, stating that its efforts to obtain redress were hampered by Respondent’s attempts to hide behind Nameview’s Identity Shield.
Respondent also filed a short Additional Submission but it was deemed by the Forum to be out of time and not in accordance with its Supplemental Rules. It has therefore not been considered by the Panel.
The disputed domain name is identical to at least one of the trademarks in which Complainant has rights;
Respondent has no rights or legitimate interest in respect of the disputed domain name, but this name is not being used by Respondent in bad faith.
1. Who is the true Respondent?
When the Complaint was filed, Complainant was not aware of the true name of the owner of the disputed domain name so the Respondent was named as “Gardeningwithkids.com c/o Nameview Inc. WHOIS Identity Shield”. The Forum informed Complainant of the true owner of the domain name and so a revised Complaint was filed identifying Respondent – correctly – as CK Ventures Inc. However notwithstanding that, the Response was filed on behalf of a company called “Vertical Axis , Inc.” attached to which was an unsworn Declaration from a Mr. Kamante Forde-Miller who declared, inter alia, that he was “a manager of Vertical Axis, Inc.”
The Forum has not drawn attention to this discrepancy and Complainant, in a footnote to its Additional Submission – perhaps surprisingly – declines from addressing the relationship between the two companies.
However, in Respondent’s “Correction of Error in Response” document, filed on February 8, 2010 (which was actually after the Panel had finalized its Decision) Respondent seeks to correct this error, and filed a further Declaration from Mr. Kamante Forde-Miller in which he states that he is a manager of both the actual Respondent – C K Ventures, inc. – as well as Vertical Axis, Inc. He further declares that the list of domain names identified as containing the words “gardening” or “kids” which was attached to the Response and referred to therein in several places, in truth belong to Vertical Axis, Inc and so should be disregarded.
The Panel had noted the discrepancy, but has at all times worked on the assumption that the actual Respondent in this case is C K Ventures, Inc.
Respondent claims Complainant did not initiate the current proceedings until four years after Respondent’s registration of the disputed domain name, and that such a long delay in taking action provides questions as to Complainant’s confidence in the success of its challenge, as well as that Complainant’s delay could lead to the inference that Complainant did not believe the disputed domain name was registered in bad faith. However it was held in Hebrew University of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO October 7, 2002) that “The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application”; while in Drown Corporastion v. Premier Wine & Spirits, FA 616805 (NAF February 13, 2006) it was said that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value.
The Panel therefore dismisses the laches argument.
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.
Each of these elements will now be discussed separately.
Identical and/or Confusingly Similar
Complainant has established, to the satisfaction of the Panel that it has rights in two trademarks registered with the USPTO. Each of them contains the words “gardening with kids” in lower case lettering and a sunflower device. One of the marks (the 2005 registration) also contains the words “tools to help young minds grow” in very small lettering. The other mark (the 2007 registration) does not contain these words.
Respondent has made much of the additional wording in the 2005 registration, always printing it as if it was of equal size to the other words. However this is not so. It is minute in comparison and almost needs a magnifying glass to be read. Respondent also lays considerable emphasis on the design element in both marks i.e. the sunflower head device. However this does not obscure any of the wording, and it is clear that anyone encountering both marks for the first time would read them as GARDENING WITH KIDS. In all, the marks would be perceived by consumers as being confusingly similar to the disputed domain name as it is customary to disregard a gTLD suffix such as ‘.com’ when comparing a trademark with a domain name under the Policy.
The Panel has therefore concluded that paragraph 4(a)(i) has been proved.
Rights or Legitimate Interests
It is well established that a Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Products., Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006) and AOL LLC v. Gerberg, FA 780200 (NAF September 25, 2006)
In this instance, the Panel has concluded that, although Complainant’s case is not strong, a prima facie case has been made out.
Complainant has alleged that there is no evidence to suggest either that Respondent is commonly known by the disputed domain name and is therefore not authorized to use the phrase GARDENING WITH KIDS, or that it is sponsored by or associated with itself in any way.
In Braun Corporation v. Loney, FA 699652 (NAF July 7, 2006) it was concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark.
In this instance the WHOIS information identifies the domain name registrant as “CK Ventures Inc.,” and it is clear therefore to the Panel that Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.
Complainant also alleges that Respondent uses the disputed domain name to operate a parked website that contains hyperlinks and advertisements which resolve to third-party websites some of which are operated by competitors of Complainant in the gardening information and related products business. It is almost certainly the case that the hyperlinks and advertisements on Respondent’s website result in the receipt, by Respondent, of click-through fees and this has not been denied.
Respondent answers this charge by saying that it is in the business of registering domain names consisting of generic terms.
It was said in Vance International, Inc. v. Abend, FA 970871 (NAF June 8, 2007) that “It has long been held that when a domain name is confusingly similar to a complainant’s trademark, to use it in this manner is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to paragraph 4(c) of the Policy, whether or not respondent directly receives click-through referral revenue” and this Decision also referred to the cases of State Farm Mutual Automobile Insurance co. v. Haan FA 948470 (NAF May 9, 2007); Charles Letts & Co Limited v. Citipublications FA692150 (NAF July 17, 2006) and Auralog s.a. v. Innovedo FA 945049 (NAF May 14, 2007).
The Panel is aware that there have been other cases where there was a similar finding, regardless of whether or not the links resolve to competing or unrelated websites, or if the respondent is itself commercially profiting from the click-through fees, but that this view is not shared by all Panelists. For example, in McMullen Argus Publishing Inc. v. Moniker Privacy Services., D2007-0676 (WIPO July 24, 2007) it was said that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); while in INVESTools Inc v. KingWeb Inc., FA 598845 (NAF January 9, 2006) it was held that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of paragraph 4(c)(i)) of the Policy. The Panel is also aware of a very recent Decision in which the same Respondent was involved where a similar finding was made by a majority of the Panel – eDreams, Inc. v. CK Ventures, Inc. D2009-1508 (WIPO January 8, 2010).
Complainant claims that only two of the ninety hyperlinks which Respondent provided relate to the phrase “gardening with kids.” Complainant further alleges that its use of both of its trademarks has provided meaning to the words even if the Panel finds the terms to be generic. Complainant points out that its trademark registrations with the USPTO do not contain any limitation on the terms therein. Complainant also contends that it has operated online through its <gardeningwithkids.org> domain name since 2006.
The Panel has concluded that the arguments in connection with this element of the Policy are not strong. However a majority has concluded, on balance, that Complainant has been able to establish rights in the phrase “gardening with kids”; and that although the disputed domain name is made up of common and descriptive terms; Respondent does not have any legitimate rights or interest in it, so paragraph 4(a)(ii) is proved.
Registration and Use in Bad Faith
It has been held that mere assertions of bad faith are insufficient for a complainant to establish bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (NAF March 9); and that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which a panel may conclude that the respondent acted in bad faith. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (NAF January 16, 2003).
It has also been held in Société des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG D2001-0916 (WIPO October 12, 2001) that where a respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain, then lack of bona fide use on its own (i.e. all the features set out in paragraph 4(b) of the Policy), is not sufficient to establish bad faith. The Panel has concluded that this is the case here.
Complainant may have two trademark registrations containing the words GARDENING WITH KIDS but that does not mean that these are not common words. In its own right this phrase is descriptive and it seems probable that the USPTO only found the marks to be distinctive enough to be registrable because of the stylized manner in which they were presented as well as the additional embellishment of the sunflower device. The disputed domain name was registered on May 4, 2005 but at that time, Complainant’s earliest trademark was still pending and indeed was only advertised for opposition purposes some 3 weeks later on May 31, 2005. Admittedly it was on file and had apparently been used since January of that year, but it seems difficult to attribute bad faith to Respondent when it could hardly have been aware of Complainant’s (only marginally) earlier rights.
The disputed domain name <gardeningwithkids.com> domain name is comprised entirely of common terms that have many meanings apart from their use by Complainant in its trademarks. The Panel believes that a respondent is free to register a domain name consisting of common terms, so long as they are used descriptively. It was held, for example, in Zero International Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) that “Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”.
In conclusion, the Panel has decided that Complainant has failed to show bad faith in this case and that paragraph 4(a)(iii) has not been proved.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David H Tatham, Panelist
Dated: February 16, 2010
National Arbitration Forum