15th Feb 2006

WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TEMO, Inc. v. Mrs. Jello, LLC

Case No. D2005-1292

 

1. The Parties

Complainant is TEMO, Inc., a corporation with offices in Clinton Township, Michigan, United States of America. Complainant is represented by Dobrusin & Thennisch PC, United States of America.

Respondent is Mrs. Jello, LLC, a limited liability company with an address in Livingston, New Jersey, United States of America. Respondent is represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <temo.com> is registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on December 13, 2005. On December 14, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date, eNom transmitted by email to the Center its verification, confirming that Respondent is listed as the registrant of the domain name, indicating that it had “locked” the domain name, confirming several details of its registration agreement, and providing the Center with contact information for the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with paragraph  2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced December 29, 2005. In accordance with paragraph  5(a) of the Rules, the Response was due January 18, 2006. The Response was filed with the Center on January 18, 2006.

The Center appointed Debra J. Stanek, M. Scott Donahey, and David E. Sorkin as panelists in this matter on February 2, 2006. The Panel finds that it was properly constituted. Each member of 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.

 

4. Factual Background

Complainant owns two United States federal trademark registrations for the marks: TEMO SUNROOOMS “EVERY DAY IS A VACATION!” and TEMO SUNROOMS “AMERICA’S FAVORITE ENVIRONMENT” for residential sunrooms and related services. The earliest of the two registrations issued in 2000. Complainant currently operates a website at “www.temosunrooms.com” and at one time operated a website under the disputed domain name, <temo.com>, until it inadvertently allowed the registration to lapse in 1999.

Respondent registered and began using the <temo.com> domain name in 2003. The website has been used to generate revenue through various affiliate programs. At times the site has featured explicit sexual content, at others the focus has been on other topics, such as dating and credit and credit card-related issues. The website advertises the <temo.com> domain name as being for sale and in response to an inquiry from Complainant, Respondent offered to sell the domain name to Complainant for first $11,000 and then $10,000.

 

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

The disputed domain name, <temo.com>, is confusingly similar to Complainant’s registered trademarks and its corporate name, which it has operated under since the 1970s.

Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized Respondent to use the domain name and Complainant’s use of its marks, including Complainant’s prior ownership of the <temo.com> domain name, predates Respondent’s registration and use by several years. Respondent is not commonly known by the domain name. Finally, Respondent’s use of the domain name to redirect visitors to other websites is neither a bona fide offering of goods or services nor a noncommercial fair use.

Respondent registered and is using the domain name in bad faith. Respondent has offered to sell the domain name to Complainant. The frequently changing content of Respondent’s website and the lack of any relationship between the content and the term “temo” shows that Respondent is simply using Complainant’s mark to attract visitors to the “www.temo.com” site for Respondent’s commercial gain.

B. Respondent

Respondent makes the following contentions:

The disputed domain name, <temo.com>, is not confusingly similar to Complainant’s registered marks, which are five and seven-word phrases beginning with “temo”. Complainant does not claim rights in a mark consisting of TEMO, standing alone, and cannot claim exclusive rights in the word “temo” because: (1) it is a common Spanish word meaning “I fear” and (2) it is subject to extensive third party use, as a surname, company name, and trademark.

Respondent has rights or legitimate interests in the domain name because it is an ordinary Spanish word as well as a surname. Therefore, the mere registration of a domain name comprised of such a term establishes Respondent’s right and legitimate interest in the domain name.

Respondent had no knowledge of Complainant or Complainant’s marks at the time it registered the domain name, consistent with Respondent’s belief that “temo” is a common word and name. Respondent has no intention of confusing consumers who are seeking Complainant and has never promoted sunrooms or related goods or services using the <temo.com> domain name. Where a domain name consists of a common term, a complainant must show that a respondent specifically intended to confuse visitors who were seeking the complainant.

Because Respondent was unaware of Complainant’s marks when it registered the domain name, its offer to sell the domain name to Complainant cannot constitute bad faith. Further, Complainant’s having earlier permitted its own domain name registration to lapse suggests that Complainant was abandoning any claim it may have had to the domain name.

 

6. Discussion and Findings

In order to prevail, Complainant must prove:

(i) The <temo.com> domain name is identical or confusingly similar to Complainant’s marks;

(ii) Respondent has no rights or legitimate interests in respect of the <temo.com> domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Policy, paragraph 4(a). The Policy sets out four sets of circumstances that may evidence a Respondent’s bad faith registration and use under Paragraph 4(a)(iii), see Policy, paragraph 4(b), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c).

A. Identical or Confusingly Similar

Complainant must establish that the disputed domain name is either identical or confusingly similar to one or more of its marks. The Complaint refers generally to Complainant’s “TEMO mark” as well as to two U.S. federal trademark registrations.

The Complaint contains general assertions that Complainant has used the “TEMO mark” and corporate name since the 1970s. However, Complainant has not provided any trademark registrations for a mark consisting of “temo” alone or in combination with “sunrooms”. Nor has Complainant provided any other evidence, such as length and amount of sales, the nature and extent of its advertising, consumers surveys, and media recognition, that would show its use of a TEMO or TEMO SUNROOMS mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7. The printout of the archived version of Complainant’s “temo.com” website does not show trademark use, but instead reflects only use of “Temo” as Complainant’s name. Therefore, the Complaint does not establish that the disputed domain name is identical to a mark in which Complainant has rights.

The Complaint does include evidence of trademark registrations for: TEMO SUNROOOMS “EVERY DAY IS A VACATION!” and TEMO SUNROOMS “AMERICA’S FAVORITE ENVIRONMENT”. As a general matter, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name does not incorporate either mark in its entirety. Further, the domain name cannot be said to be a variation of either of the marks. The domain name does use the initial, admittedly somewhat distinctive, term “temo”, however it does not include any of the other words in those marks, which are relatively lengthy. Under these circumstances, the Panel concludes that the disputed domain name is not confusingly similar to Complainant’s marks.

B. Rights or Legitimate Interests

As noted above, a complainant must establish each of the three elements outlined in paragraph 4(a) of the Policy in order to prevail. In light of the conclusion that Complainant has not established the first element, it is not necessary to address the issue of Respondent’s claim to have right or legitimate interests in the disputed domain name. However, in the interests of completeness, the Panel states that this issue presented a somewhat close question. Respondent, through an affidavit of its managing partner attests that he was aware that “temo” was a Spanish word and a “common name” at the time Respondent registered the domain name. This testimony rings somewhat hollow in light of the fact that there seems to be no relationship between Respondent or Respondent’s website and the term “temo” — in Spanish, for its English meaning, or as a common name. Nonetheless, regardless of whether Complainant had established that Respondent lacked any rights or legitimate interests in the domain name, the Panel has concluded that it has not met its burden of establishing the first element of its claim (as discussed above) or the third element of its claim (as discussed below).

C. Registered and Used in Bad Faith

Complainant must also establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, Paragraph 4(b)(i)-(iv):

(i) registering the domain name primarily to sell it to complainant for more than documented out-of-pocket costs;

(ii) registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct;

(iii) registering the domain name primarily to disrupt the business of a competitor; or

(iv) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement.

Here, Complainant has provided no evidence that Respondent’s conduct falls within any of these circumstances. Respondent’s offer to sell the domain name to Complainant does not establish that Respondent’s “primary purpose” in registering the domain name was to sell it to Complainant. The Complaint does not allege that Respondent has engaged in a pattern of cybersquatting The Complainant and Respondent do not compete, therefore it does not appear that Respondent registered the name to disrupt a competitor’s business. There is no evidence that Respondent is using <temo.com> to attract potential sunroom purchasers to the site.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Debra J. Stanek
Presiding Panelist

M. Scott Donahey
Panelist

David E. Sorkin
Panelist

Date: February 15, 2006