12th Jul 2012
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barilla Alimentare S.p.A. v. DNS Research, Inc.
Case No. DBIZ2002-00091
1. The Parties
The Complainant is Barilla Alimentare S.p.A., Via Mantova 166, Parma 43100, Italy, represented by Ms. Barbara Ferrari of Botti & Ferrari S.r.l., Milan, Italy (“Complainant”).
The Respondent is DNS Research, Inc., Domain Admin, P.O. Box 17240, San Diego, CA 92177, United States of America, represented by Mr. Ari Goldberger of ESQwire.com Law Firm, Cherry Hill, NJ, United States of America. (“Respondent”).
2. The Domain Name and Registrar
The dispute concerns the domain name <togo.biz>.
The Registrar is DomainDiscover, San Diego, CA, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (“the Center”) received the Complainant’s STOP Complaint in electronic form on April 26, 2002, and in hard copy on April 30, 2002.
The Center verified that the Complaint was filed in accordance with the requirements of the Start-up Trademark Opposition Policy for .biz (“the STOP Policy”), the Rules for Start-up Trademark Opposition Policy (“the STOP Rules”), and the WIPO Supplemental Rules for the Start-up Trademark Opposition Policy for .biz (“the WIPO Supplemental STOP Rules”).
On May 3, 2002, the Center transmitted the Notification of STOP Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent. The Center advised that (1) the Respondent’s STOP Response was due by May 23, 2002, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondent’s default as it considers appropriate.
The Respondent filed the Response via e-mail on May 24, 2002. A hardcopy of the Response was received by the Center on May 27, 2002.
On June 6, 2002, the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.
Having received Mr. Rindforth’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on June 7, 2002, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the Sole Panelist. The Projected Decision Date was June 21, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the STOP Rules.
The Administrative Panel shall issue its Decision based on the STOP Complaint, the STOP Response, the STOP Policy, the STOP Rules, and the WIPO Supplemental STOP Rules.
4. Factual Background
The Complainant claims to be the owner of the trademark “TOGO” which is registered in respect of goods in International Class 30 in Italy (No 693 162 and 740 164), Norway (No 201 973), Internationally (No 694 402, designating Austria, Germany, Spain, France, Monaco, Portugal and Benelux, and No 742 250, designating Albania, Bulgaria, Switzerland, China, Cuba, Algeria, Egypt, Hungary, Liechtenstein, Morocco, Monaco, Mongolia, Poland, Romania, Yugoslavia, Latvia, Russian Federation, Croatia, Slovenia, Ukraine, Czech Republic, Slovak Republic, Kazakhstan; Armenia, Azerbaijan, Belarus, Macedonia, Uzbekistan; Bosnia-Herzegovina; Tajikistan, Moldova, Kyrgyztan).
The Complainant further claims to be the owner of the following pending applications for “TOGO”:
No. 101464100 in Canada, filed on May 5, 1999 (Class 30), No. 75754711 filed in the US on July 19, 1999 (Class 30), and Community Trademark No. 1125921 filed on April 1, 1999 (Classes 29 and 30)
The Respondent registered the Domain Name on March 27, 2002 (Annex 1 of the Complaint).
Respondent is a web site developer incorporated in the State of California and has been in business for over two years. Respondent registers domain names that incorporate only generic and descriptive terms for the purpose of developing them into businesses that relate to the meaning of the common words and terms. An affidavit by Mr. Roy Lopez, president of DNS Research, Inc., confirming the nature of the business is provided as Annex 1 of the Response.
5. Parties’ Contentions
It is doubtless that the Domain Name is identical to the trademark “TOGO” owned by the Complainant.
The Respondent is a U.S. company specialized in advanced domain name research and there is not any commercial material showing that the Respondent has been doing business or is known or can be associated with the mark “TOGO”, neither has the Respondent any trademark rights to the word “TOGO”.
The Complainant therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant underlines the typical commercial nature of the Respondent whose main business is to register, rent and resell domain names and, accordingly, the Domain Name should be considered as having been registered in bad faith.
According to a search carried out through Saegis databank (Compu-Mark), the Respondent is the holder of at least 154 domain names and a number of Whois-reports regarding these domain names is provided as Annex 4 of the Complaint, such as: <lasagne.net>, <burialservice.com>, <vitalstatistics.net>, <surfcamp.net>, <graceperiod.com>, <zoogeography.com>,<inauguraladdress.com>, <cyclopropane.com>, <commentallezvous.com>, <changeofheart.net>, <polysynthetic.com>, <standardofliving.net>, <targetrifle.com>, <selfdestructive.com>, driedmilk.com, <spermcenter.com>, <travelingagent.com>, <skyteltv.com>, <kidspage.net>, <holliwoodcircle.com>, <fingermassager.com>, <atlasworld.com>, <strimgorchestra.com>, <pyrotechnician.com>. The Complainant states that these domain names are “so general that they seem to have been registered in order to meet any kind of commercial need and be easily sold”.
The Respondent has also been quoted in an article entitled “Why the best names become available at 6:30 a.m.” of Brian Livingston published on <Infoworld.com> on April 21, 2002 (Annex 5 of the Complaint). According to the article, “many short names are now being given up by speculators who registered them one year ago at the height of the high-tech bubble. A quirk in the master registry of Web addresses reveals a few days in advance which expiring names are becoming available”…”Several companies scour the registry…to predict when expiring names will ‘drop’”. Among such companies the Respondent is quoted as one of the best values sites which offers a daily e-mail listing for about 50 US $ per year, which is confirmed by the commercial notice made on the web site of the Respondent (Annex 6 of the Complaint).
The Complainant requests, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
In the rather extensive Response, the Respondent contests all allegations of the Complaint and requests the Administrative Panel to deny the remedies requested by Complainant.
The Respondent confirms that, leaving off the .biz TLD, the Complainant’s trademark and the Domain Name are identical. However, the Respondent states that the trademark is for the word “TOGO”, whereas the use of the Domain Name refers to the two-word term To Go.
According to the Respondent, the term “to go” means: “to be taken out, as restaurant food or drink” (<Dictionary.com> definition provided as Annex 3 of the Response), and the Domain Name was registered to be used for an online food ordering business that “will enable users to utilize a single web site and toll-free phone number to order food for delivery nationwide and in Canada”. A printout from the initial web page design for this service is provided as Annex 2 of the Response. The Respondent therefore claim to have a legitimate interest in the Domain Name.
Anyone is entitled to register a domain name incorporating a common term, particularly when they have a plan for legitimate use of the same.
The Respondent argues that there is no evidence that he had any knowledge of the Italian based Complainant, that the Complainant has only a pending trademark application in the US and that the said application is based on “intent to use” indicating that the trademark is not yet known on the US market. As shown by Annex 7 of the Response (a copy from the USPTOs TESS database), the application is subject to an Opposition proceeding. The Respondent suggests that the Complainant, by withholding this fact from the Panel, has abused this administrative proceeding and engaged in reverse domain name hijacking.
Respondent’s business idea for the Domain Name is to “solicit national and local fast food providers, standard eat-in and take-out restaurants, pizza outlets, chinese restaurants, sandwich shops, and caterers in each major US and Canadian metropolitan area to sign up for membership in the To-Go food delivery service. Menus will be available online, and users will be able to call a single toll-free phone number or go to the ToGo web site to have any type of food delivered at any time to their home, office, work site, party or hotel, etc.” (Annex 1).
The extremely common term “to go” is used to refer to any products or services for sale that are immediately available for pick-up or delivery, and is subject to substantial third party use unaffiliated with the Complainant.
A search on the Internet search engine Google.com for the exact phrase “to go,” yielded over 4.9 million web pages containing the term (Annex 4 of the Response). A search for the word “togo” yielded over 1.7 million web pages, mostly related to the Republic of Togo in Africa, and none that appear affiliated with the Complainant (Annex 4).
The Respondent also states that there are 901 pending and active trademark registrations which incorporate “to go” in the US (Annex 5), and that all but one are unaffiliated with Complainant, as well as over 2 000 domain names (Annex 6).
The Complainant has alleged that Respondent has no trademark rights for “TOGO”, however, ownership of a trademark by a respondent is not a prerequisite for having rights or a legitimate interest.
The Respondent claims to clearly have a legitimate interest in the Domain Name and states that it is well established that the intent to use a descriptive domain name for a related web site constitutes use in connection with a bona fide offering of goods or services. The burden on Respondent is very small, and all that is required is a plausible explanation. The fact that Respondent’s “To Go” web site is not yet fully developed does not diminish its rights in the domain name. Further, the registration of a domain name incorporating merely a common word or term to use for a business establishes Respondent’s legitimate interest.
The Domain Name was not acquired primarily for the purpose of selling, renting or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name; or to disrupt Complainant’s business or attract customer’s seeking to purchase its products, nor has the Complainant filed any evidence to prove the contrary.
It should also be noted that the Complainant has chosen for its trademark the name of a country in Africa, namely the Republic of Togo. Accordingly, the Complainant has no right to claim exclusive rights to its trademark as a singular word, because no party can claim exclusive rights to a geographic term.
The Complainant has alleged that Respondent’s registration of numerous .com and .net domain names, somehow supports a finding of bad faith. To the contrary, the domain names cited by the Complainant demonstrate that the Respondent registers only descriptive common word domain names to use for businesses, and it is well established that the registration of common word domain names – even solely for the purpose of resale – establishes the Respondent’s legitimate interest.
Reverse Domain Name Hijacking
Finally, the Respondent states that the case was filed in bad faith as the Complainant i) failed to disclose to the Panel relevant material information concerning its purported trademark rights in the United States, where Respondent is domiciled, and ii) must know it cannot have exclusive rights to either the common term or country name. The Respondent therefore asks the Panel to make a finding of reverse domain name hijacking.
The Respondent has supported all arguments with references to no less than 35 previous UDRP and STOP decisions.
6. Discussion and Findings
According to Paragraph 4(a) of the STOP Policy, the Complainant must prove each of the following:
(i) that the Respondent’s Domain Name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered or is being used in bad faith.
1. Identical Trademark?
The Complainant claims to be the owner of the registered trademark “TOGO” in a number of countries, as well as the owner of some pending applications for “TOGO”, but has not provided any copies of Certificates of the alleged registrations or applications. In fact, the only documentation provided in this respect, is the copy of the US application No 75754711 from Annex 7 of the Response.
Nevertheless, considering both parties’ contentions, this Panel finds no reason to doubt that the Complainant does have trademark rights in the word “TOGO”.
Further, it is an undisputable fact that the “togo” part of the Domain Name <togo.biz> is identical to the Complainant’s trademark “TOGO”.
2. No Rights or Legitimate Interest?
Paragraph 4(c) of the STOP Policy sets out certain circumstances that, in particular but without limitation, demonstrates Respondent’s rights or legitimate interest in the Domain Name:
(i) that the Respondent is the owner or beneficiary of a trade or service mark that is identical to the Domain Name; or
(ii) before any notice to him of the dispute, have used or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(iii) that the Respondent, as an individual, business or other organization, have been commonly known by the Domain Name, even if the Respondent has not acquired any trademark or service mark rights.
The Respondent has not claimed to be the owner/beneficiary of any trademark identical to the Domain Name, nor has he claimed to be commonly known by the Domain Name.
The Domain Name is not yet in use. As shown by Annex 2 of the Response, the web site (or planned web site) for <togo.biz> is still under construction, stating “Coming Soon!”
However, the Respondent has provided an Affidavit (Annex 1) by Mr. Roy Lopez, president of DNS Research, Inc., presenting a plausible explanation of the Respondents business plans for the Domain Name (see above under “Parties’ Contentions; Respondent). The Respondent contests that he plans to use the Domain Name in the context “to go”, rather than as the word or trademark “TOGO”.
There are technical limitations on how to create domain names consisting of more than one word. The two only options provided are to write the words with a hyphen (to-go) or as one word (togo). As to the best knowledge of this Panel, the first natural choice for the average Internet user is to seek for a specific domain name without the hyphen, even if he is aware that this one word may in fact consist of two or several words.
As shown in the WIPO Case No D2000-0807, Sudnif S.A. v. Tulle, the well established trademark “FINDUS” (for frozen food products) could well, under certain circumstances and in a domain name, be regarded as the generic phrase “find us” (for a search engine).
The Panel has here also taken note of the fact that a number of trademarks and domain names, not related to the parties, contains “togo” or “to go” in a context where it is obvious that the word or words mean “to be taken out” (see Annexes 3, 5 and 6 of the Response), such as:
Party to go, Postage to go, Towels to go, Gifts to go, <1800partytogo.com>, <1800sushitogo.com>, <1stpizzatogo.com>, <1videotogo.com>, etc.
The Panel therefore concludes that the Respondent may well have a legitimate interest in the Domain Name, and that the Complainant has at least not been able to prove the contrary.
3. Registered or Used in Bad Faith?
It is an undisputable fact that the Respondent has registered a great number of domain names. Apart from the <togo.biz>, none of these domain names seems to contain any protected trademarks. Both parties have pointed out the fact that said names are general and generic, however different conclusions have been drawn.
The Complainant points out “the typical commercial nature of the Respondent whose main business is to register, rent and resell domain names” and concludes that this should constitute the Domain Name as having been registered in bad faith.
The Respondent state that “it is well established that the registration of common word domain names – even solely for the purpose of resale – establishes the Respondent’s legitimate interest”.
The Complainant refers to an article regarding the business idea of offering customers an e-mail listing of dropped and desired domain names, quoting the Respondent as “one of the best values sites which offers a daily e-mail listing for about 50 US $ per year”. The Panel concludes, however, that this refers to another service of the Respondent, which has nothing to do with the disputed Domain Name. The Complainant’s reference to a “commercial notice” refers to Respondent’s web site under the domain name <dnsresearch.com> (Annex 6 of the Complaint) and not to the disputed Domain Name.
Trading in generic domain names is not of itself unlawful. Further, nothing in this case indicates that the Respondent registered (or has used) the Domain Name primarily for the purpose of selling, renting or otherwise transferring the same to the Complainant or to a competitor, for a valuable consideration in excess of his documented out-of-pocket costs directly related to the Domain Name, to prevent the Complainant from reflecting the mark “TOGO” in a corresponding domain name, to disrupt the business of a competitor or to intentionally attempt to attract Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark (Paragraph 4 (b) of the STOP Policy).
The Panel concludes that the Respondent has not registered or used the Domain Name in bad faith.
Reverse Domain Name Hijacking
The Respondent suggests that the Complainant is guilty of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in Paragraph 1 of the STOP Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
As circumstantial evidence for such bad faith on behalf of the Complainant, the Respondent mention that the Complainant failed to disclose to the Panel relevant material information concerning its trademark rights in the United States, where Respondent is domiciled, and that the Complainant must know that it cannot have exclusive rights to either the common term or country name (as in the Republic of Togo).
Although the Complainant has failed to provide certain documentation to prove its trademark rights, the Panel has accepted – as a fact – that the Complainant do have registered trademark rights to “TOGO” in a number of countries.
According to Paragraph 10 (b) of the STOP Rules, the Panel shall, in all cases “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”. Therefore, even a Party with a registered trademark that may, in certain context on the Internet, be regarded as a generic term or the name of a country, must have the right to present its case and have it evaluated before an independent Panel.
The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.
The Panel concludes (a) that the Domain Name <togo.biz> is identical to the Complainant’s trademark “TOGO”, (b) that the Respondent may well have legitimate interest in the Domain Name, and (c) that the Respondent has not registered or used the Domain Name in bad faith.
Therefore, the Complaint is dismissed.
P-E Petter Rindforth
Dated: July 12, 2002