31st Jul 2001
ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
John L. McCune
Contested Domain Name:
Jessica Litman (Lead Panelist)
1. Parties and Contested Domain Name
The Complainant is John McCune, who manufactures and markets Vidalia Onion products under the ONION BROS. trademark. The Respondent is BuyDomains.com, a domain name registrar and broker. The contested domain name is Vidalia.net.
2. Procedural history
The electronic version of the Complaint form was filed on-line through eResolution’s Website on June 13, 2001. The hardcopy of the Complaint Form and annexes were received on June 20, 2001. Payment was received on June 13, 2001.
Upon receiving all the required information, eResolution’s clerk confirmed the identity of the Registrar for the contested Domain Name, verified that the Registrar’s Whois Database contained all the essential contact information for Respondent, determined that the contested Domain Name resolved to an active Web page and verfiied that the Complaint was administratively compliant. The Clerk’s Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on June 14, 2001.
On July 3, 2001, the Respondent submitted, via eResolution Internet site, his response.The signed version of the response was received on July 3, 2001, 2001. The Respondent decided to submit the dispute to a three-member panel and paid the applicable fees on July 9, 2001.
On July 18, 2001, the Clerk’s Office contacted Jessica Litman, and requested that she act as lead panelist in this case. On the same day, the Clerk’s Office contacted Thomas Arden and David Sorkin and requested that they act as co-panelists. On July 19, 2001, the parties were notified that Jessica Litman, Thomas Arden and David Sorkin had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 2, 2001.
3. Factual Backgrounds
Complainant alleges that he registered the domain names vidalia.net, vidaliaonions.com, vidalia.org, vidaliasweetonions.com, vidaliaonions.net, vidaliasweetoinions.net, Vidalia-sweet-onions.com and onionbros.com, for use in his business. Complainant submitted samples of advertisements for his products that included identification of his business’s “online address” or “URL” as www.vidalia.net. Complainant’s registration of vidalia.net lapsed. Respondent registered the domain when it became available, and currently offers it for sale.
4. Parties’ Contentions
Complainant claims rights in Vidalia.net by reason of his pending application to register it as a trademark on the U.S. federal register, and by his use of the domain in connection with his Onion Bros. business. He submits the serial number of the application but does not attach a copy to his complaint. He further claims that the state of Georgia Department of Agriculture, which owns the U.S. federal certification mark registration for VIDALIA, has licensed complainant to use the VIDALIA mark in connection with his Vidalia onion products. Complainant’s registration of the contested domain lapsed through an error. Respondent registered the domain intending to sell it to the highest bidder. Because Respondent has no relationship to Vidalia onions and no license to use the Vidalia mark, complainant argues that its only reasons for registering the domain name was to take advantage of the notoriety generated by Complainant Onion Bros’ use of the domain.
Respondent claims that complainant has failed to show that it owns trademark rights in VIDALIA or VIDALIA.NET. Neither Georgia’s ownership of a registration for VIDALIA nor complainant’s recently filed application to register VIDALIA.NET give it enforceable trademark rights. Vidalia is a geographic region of Georgia and the generic term for onions grown in Vidalia. Since the word “Vidalia” is generic, respondent argues, complainant has no protectable interest. Respondent also insists that its domain name brokerage gives it a legitimate interest in the contested domain name. Finally, Respondent argues, it has neither registered nor used the domain name in bad faith.
5. Discussions and Findings
Complainant has the burden under section 4 of the UDRP to show that the Respondent’s domain name is identical to or confusingly similar to a mark in which complainant has rights, that Respondent has no rights or legitimate interests in the domain name, and that Respondent has both registered and used the domain name in bad faith.
We conclude that Complainant has failed to show that he owns trademark rights in VIDALIA or VIDALIA.NET. Respondent argues that complainant uses Vidalia in its generic sense, to convey that he sells products made from Vidalia onions, and that no trademark rights can arise in generic words. We need not decide whether Vidalia is generic or merely descriptive. As complainant concedes, he is not the owner of the VIDALIA mark, which both complainant and respondent acknowledge is owned by the Georgia Department of Agriculture. See Ga. Code Ann. §§ 2-14-130 –2-14-136.
Complainant nonetheless relies on his pending application to register VIDALIA.NET on the principal register, and argues that his use of vidalia.net in conjunction with his ONION BROS mark gives him trademark rights in VIDALIA.NET as a mark for Vidalia onion products. VIDALIA.NET is not an inherently distinctive trademark for Vidalia onion products, and may be protected, if at all, only after it has acquired secondary meaning. Complainant has provided no evidence of secondary meaning. More fundamentally, none of the documents submitted by complainant show trademark use of VIDALIA.NET. See Rock & Roll Hall of Fame & Museum v. Gentile Productions, 134 F.3d 749 (6th Cir. 1998); In re Eilberg, 49 U.S.P.Q. 2d 1955 (T.T.A.B. 1998). Instead, complainant has used the URL: www.vidalia.net as an Internet address. The U.S. Patent and Trademark Office’s explanation is instructive :
“If the proposed mark is used in a way that would be perceived as nothing more than an address at which the applicant can be contacted, registration must be refused. Examples of a domain name used only as an Internet address include a domain name used in close proximity to language referring to the domain name as an address, or a domain name displayed merely as part of the information on how to contact the applicant.” United States Patent & Trademark Office, Examination Guide No. 2-99: Marks Composed, in Whole or in Part, of Domain Names (1999).
In this case, complainant’s use of VIDALIA.NET “would be perceived as nothing more than an address at which complainant could be contacted.”
Because complainant has failed to prove that Respondent’s domain name is identical to or confusingly similar to a mark in which complainant has rights, the panel finds it unnecessary to address the other allegations in the complaint.
Thus far, the panel is unanimous. Mr. Arden, however, writes separately to express his thinking on the sufficiency of the supporting documents submitted by the parties to this dispute. His separate statement speaks for itself. Neither of the other panelists agrees with his views.
We find that the Vidalia.net domain name is not identical or confusingly similar to any trademark in which complainant has rights. We therefore find in favor of the respondent and reject the complaint.
(s) Jessica Litman, Presiding Panelist
Ann Arbor, MI
July 31, 2001.
(s) David Sorkin, Panelist
July 31, 2001.
Thomas Arden, panelist:
I concur in the conclusion that the complainant in this case has failed to prove rights in a confusingly similar mark. I would add, as a threshold matter, that there is insufficient proof to establish the central claims made by complainant concerning this element. The majority, however, disagrees that the complainant’s allegations were insufficient. As noted in the panel’s decision, complainant’s alleged trademark application is insufficient to prove rights in “vidalia.net.” Complainant, however, also has only alleged that it filed a trademark application and has offered no evidence concerning the allegation. For all we know, complainant filed an application to register the mark for toothpaste. Similarly, complainant claims it is licensed to use the mark VIDALIA and that a registration of the mark is owned by the state of Georgia. In addition to the fact that this claim itself shows a lack of rights, neither the claim of a license nor the allegation that there is a registration has any evidentiary support. Finally, there is no proof relating to the great majority of names complainant has listed in response to the complaint form’s request to specify the marks on which the complaint is based and the goods or services with which they are used. Although the respondent does not specifically deny key allegations, there is no requirement that he do so to preserve the burden of proof, as is the case under the pleading rules of the Federal Rules of Civil Procedure. The respondent also asserts facts about complainant’s allegations that vary from those allegations. Although no rules of evidence have been prescribed for use in these proceedings, the complainant is the party attempting to alter the status quo. As such, I believe he needs to submit proof the panel can scrutinize on central issues, rather than simply make allegations of central facts the panel would need to investigate on its own in a reliable manner in order to scrutinize. Ownership of rights is a critical element to the claim. I can give little credence to the allegations of complainant in this case concerning why he has rights in the mark without even the submission of any proof concerning those allegations. In short, I do not believe it is up to the panel to investigate the murky factual allegations presented in this proceeding.
(s) Thomas Arden
July 31, 2001.