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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Royal Crown Company, Inc. v. Bishop Marketing

Case No. D2000-0094

 

1. The Parties

The Complainant is Royal Crown Company, Inc., a Delaware (U.S.A.) corporation located at 709 Westchester Avenue, White Plains, New York 10604, U.S.A. The Respondent is listed as Donald and Ruby Bishop, Bishop Marketing, located at 101 Falcon Cove, Georgetown, Texas 78628, U.S.A.

 

2. The Domain Name and Registrar

The domain name is DIET-RITE.COM. The Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.

 

3. Procedural History

On February 24, 2000, Complainant submitted a Complaint to the WIPO Arbitration and Mediation Center (the "Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint and exhibits were received by the Center on February 25, 2000. The Center acknowledged receipt of the Complaint by facsimile, sent to the Complainant on February 25, 2000. In its Acknowledgment of Receipt (Complaint), the Center notified Complainant that it had not elected a proper Mutual Jurisdiction under Par. 3(b)(xiii) of the UDRP Rules. Also on February 25, 2000, the Center sent an e-mail and facsimile to the Registrar, Network Solutions, Inc., ("NSI"), requesting that NSI confirm that it received a copy of the Complaint from the Complainant; confirm that NSI registered the domain name at issue; and confirm that the Respondent, Bishop Marketing, is the current Registrant of the domain name.

That same day, NSI verified that it received the Complaint; that it is the Registrar of the domain name at issue, and that Bishop Marketing is the current Registrant of the domain name DIET-RITE.COM.

In a facsimile of February 28, 2000, Complainant amended Par. XIII of its Complaint, consenting to jurisdiction of the Courts of the Commonwealth of Virginia, United States District Court for the Eastern District of Virginia, Alexandria Division, where Registrar NSI is located. Complainant also amended Par. X of the Complaint to read:

A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on February 24, 2000 via overnight carrier to Bishop Marketing, 101 Falcon Cove, Georgetown, Texas 78628. A copy of this Complaint has been sent or transmitted to the concerned Registrar on February 24, 2000 by e-mail.

On February 29, 2000, the Center forwarded a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by e-mail, air courier and facsimile. The Center required Respondent to submit its response to the Complaint by no later than March 19, 2000.

No response having been received from the Respondent, the Center issued a Notification of Respondent Default on March 20, 2000. This Notification was forwarded to Respondent by e-mail, facsimile and courier, and to Complainant by facsimile.

On March 24, 2000, the Center issued to this Panel a Request for Declaration of Impartiality and Independence. This Panel provided its Declaration of Impartiality and Independence to the Center on March 28, 2000. The Center issued a Notification of Panel Appointment on March 29, 2000, which it forwarded to Complainant by facsimile, and to Respondent by facsimile, e-mail and courier. The Center transmitted the case file to this Panel on March 29, 2000, by e-mail and courier.

 

4. Factual Background

Complainant is the owner of U.S. Trademark Registration No. 600,085 for the mark DIET-RITE, in connection with dietetic soft drinks and concentrates for making the same. The mark was registered on December 28, 1954, and claims first use of the mark in December, 1953. The registration is in its second renewal term, for a period of ten (10) years from December 28, 1994.

Complainant is also the owner of U.S. Trademark Registration No. 1,302,990 for the mark DIET RITE, in connection with soft drinks and syrup used in the preparation thereof. This mark was registered on October 30, 1984, and claims first use of the mark commencing in December, 1953. This mark was registered for a term of twenty (20) years commencing on October 30, 1984.

Complainant asserts that on February 26, 1999, it mailed a letter to Respondent advising that Respondent’s use of the DIET-RITE mark as a domain name was unauthorized, and an infringement of Complainant’s rights to its DIET RITE trademark. This letter was dated March 10, 1999, due to an alleged error, the nature of which is unspecified by Complainant. A copy of this letter was annexed to the Complaint as Exhibit C.

Respondent responded to Complainant’s letter, in its own letter of March 3, 1999. This letter was also annexed to the Complaint. In its letter, Respondent stated:

We are a small home business involved in selling herbal diet products and "Diet-Rite" seemed like a good choice for us. We inquired about it’s use by anyone else on the internet and found the name was open for use. We had unfortunately never heard of your product and purchased this name not knowing that there was actually a company called "Diet-Rite".

After we purchased the name from the Internic, we went about setting up two web pages using the name "Diet-Rite". After receiving your letter we have stopped using this name, stopped our webmaster from production of one website that was ready to launch and have removed the web page that had already been launched to the Internet. These websites will be reinstated without the name "Diet-Rite."

You have requested that we stop using the name and also turn that name over to you for your use. We have accomplished the first, but regrettably have misgivings about the second. We have suffered some financial losses by making these changes due to your request and feel that Royal Crown should compensate us for those losses. In accordance with our telcon of this date we are hereby making a claim for $4,000 and upon payment will be happy to formally turn over the name "Diet-Rite" for your use on the Internet.

On March 15, 1999, Complainant responded to Respondent’s letter. Respondent rejected Complainant’s request for a $4,000 payment, but counter-offered a payment of $200, "which should more than cover your initial registration filing fee and the name or ownership transfer fee." No response was received to this letter of March 15, 1999.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that "Respondent has no rights or legitimate interest in respect to the domain name that is the subject of this Complaint. Respondent is not a licensee of Complainant nor otherwise authorized to use Complainant’s marks." Complaint, Par. V. Complainant asserts that Complainant and its predecessors have been using the marks DIET-RITE and DIET RITE on soft drinks for over forty-five years, and that:

Complainant has spent millions of dollars over a period of decades in advertising and promoting its goods under its DIET-RITE mark, and has accumulated hundreds of millions of dollars from the goods sold under this mark. As a result, the mark DIET RITE is among the most famous, widely- recognized and highly respected marks in the United States and the trade and general public have come to know, recognize and identify goods with the DIET RITE mark.

Id.

Complainant asserts that Respondent registered and used the domain name in bad faith. Complainant states that in Respondent’s letter of March 3, 1999, Respondent asserted it set up two web pages using the name "Diet-Rite", stopped using the domain name after receiving Complainant’s letter, but then demanded $4,000 compensation from Complainant to transfer the domain name. Complainant asserts that "Respondent provided no evidence of the costs to cease using Complainant’s trademark." Id. Complainant asserts that because it offered Respondent $200 to cover the domain name registration fee, and did not receive a reply to that letter, that "Respondent’s demand is in excess of any reasonable costs related to ceasing such use and that the Respondents used the domain name in bad faith as defined in the Policy." Id.

B. Respondent

[Summarize the factual and legal contentions made by the parties]

Respondent has not filed a Response to the Complaint.

 

6. Discussion and Findings

[State the Panel’s findings with reference to the parties’ contentions, the Uniform Domain Name Dispute Resolution Policy, Rules, Supplement Rules and applicable substantive law]

A. Applicable Policy Provisions

The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:

1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. That Respondent has no rights or legitimate interests in respect of the domain name; and

3. That the domain name has been registered and is being used in bad faith.

UDRP Policy, Section 4.a.

As has been pointed out by previous Panels, it is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson, Dispute No. D00-0001.

However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name...

UDRP Policy, Section 4(b)(i).

These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

B. Opinion of the Panel

Respondent has defaulted in this proceeding, and therefore, this Panel shall decide the dispute based upon the Complaint. UDRP Rules, Section 5(e). This Panel shall draw such inferences from the default as are appropriate.

This Panel finds the Complainant is entitled to the relief it seeks. First, the Complainant has proved that it has rights in a trademark identical to the domain name in dispute. Respondent has failed to dispute the assertion that Complainant is the owner of the trademark DIET-RITE, which has been registered since 1954 in connection with dietetic soft drinks and concentrates. Since the top-level domain ".com" has no source-indicating significance, the domain name is essentially identical to Complainant’s registered trademark.

This Panel also finds that Respondent has no rights or legitimate interests in respect of the domain name. The domain name DIET-RITE.COM does not correspond to a company name or product of the Respondent. The phrase DIET-RITE does not describe or refer to the goods Respondent asserted it intends to sell.

Finally, this Panel is satisfied that the domain name has been registered and is being used in bad faith. While there has been no proof that the domain name was acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant, this Panel does not find satisfactory Respondent’s explanation in its letter that "Diet-Rite" was "a good choice" for the sales of herbal diet products. First, the misspelling of the word "right" corresponds to Complainant’s trademark, and not to any term referring to herbal diet products. Second, Respondent’s efforts to register as a domain name, a well-known forty-five-year-old trademark with this misspelling cannot be attributed to chance. Third, Respondent submitted no proof that it in fact sold or intended to sell any dietary supplements in connection with the domain name. Indeed, this Panel sought to locate the Respondent’s web page promoting the asserted dietary supplements, which Respondent’s letter asserted was reinstated without the name "Diet-Rite." This Panel was unable to locate this site under the name of Respondent, despite using two different search engines.

Finally, Respondent’s efforts to obtain a payment of $4000 for registration of the domain name is further evidence of Respondent’s bad faith. In this respect, Respondent made no effort to document any out-of-pocket costs in developing of the domain name or in registering the same. Because of the default, this Panel must assume that Respondent is unable to document any costs above its registration charges.

The exchange of correspondence between the parties took place back in February and March of 1999, more than one year ago; yet in all the intervening time, Respondent apparently has not redirected or launched its supposed website for herbal diet products. From this fact, and drawing inferences against the Respondent as are proper because of the default, this Panel concludes that Respondent had no intent to use the domain name DIET-RITE.COM for the purpose of selling any products or services on a corresponding website.

This Panel finds the aggregate of these facts sufficient evidence to conclude that Respondent had no intent to use the domain name in connection with the bona fide offering of goods or services, but rather intended only to sell its domain name to the Complainant or a third party. As such, the Respondent has registered and is using the domain name in bad faith.

 

7. Decision

For the reasons set forth above, this Panel finds that the domain name DIET-RITE.COM is identical to the Complainant’s trademark DIET-RITE; that the Respondent has no rights or legitimate interest in respect of the domain name; and that the domain name has been registered and is being used in bad faith. Therefore, this Panel orders that the domain name be transferred to the Complainant.

 

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Jordan S. Weinstein
Presiding Panelist

Dated: April 10, 2000