DECISION

The Fresh Market, Inc. v. Modern Limited-Cayman Web Development a/k/a Cayman Trademark Trust

Claim Number: FA0310000203205

PARTIES

Complainant is The Fresh Market, Inc., Greensboro, NC (“Complainant”) represented by Eric A. Adamson, 802 Green Valley Road, Greensboro, NC 27401.  Respondent is Modern Limited-Cayman Web Development a/k/a Cayman Trademark Trust, George Town, Grand Cayman (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <thefreshmarket.com> (“the Domain Name”), registered with Bulkregister, LLC.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Dawn Osborne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 16, 2003; the Forum received a hard copy of the Complaint on October 16, 2003.

On October 16, 2003, Bulkregister, LLC. confirmed by e-mail to the Forum that the domain name <thefreshmarket.com> is registered with Bulkregister, LLC. and that the Respondent is the current registrant of the name.  Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC. 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 October 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 11, 2003 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 postmaster@thefreshmarket.com by e-mail.

A timely Response was received and determined to be complete on November 11, 2003.

Complainant submitted a timely additional submission on November 17, 2003, pursuant to Forum Supplemental Rule 7.

On November 20, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant’s assertions can be summarized as follows:

It is the owner of a US federally registered trade mark (Reg. No. 1,283,775) for THE FRESH MARKET (“the Trade Mark”) , the name under which it operates 38 gourmet grocery stores in 8 different US States. It commenced use of the Trade Mark in 1981 and it has been in continuous use since this date.  It has a website at <thefreshmarket.net> used to promote its good and services.

The Domain Name is identical and/or confusingly similar to the Complainant’s trade mark. The addition of “.com” is not sufficient to distinguish the Domain Name from the Trade Mark.

The Respondent has no rights to or legitimate interests in the Trade Mark contained within the Domain Name. Respondent is not commonly known by the Trade Mark. The Domain Name is only used at the top of the site connected to the Domain Name by the Respondent and <thefreshmarket.com> is not a description of the Respondent’s business of diverting Internet traffic to a website that offers links to commercial websites, banner advertisements and pop up advertisements covering a variety of fields of commercial endeavour. The Respondent has registered other domain names such as <toshibalaptop.com>; <yamahadirtbike.com>; <yamahadirtbikes.com> and <nelson-mandela.com>, which point to virtually identical web pages, the only difference being that each one has the relevant domain name appearing twice at the top of the web site where thefreshmarket.com appears on the site connected to the Domain Name. Clicking on the contact link for <thefreshmarket.com> leads to no legitimate contact information or method of contacting anyone and results in a “This page cannot be found” default page showing no legitimate interest in the Domain Name. Such use is not a bona fide offering of goods and services as contemplated under the Policy.

The Respondent has registered and is using the Domain Name in bad faith.   The Respondent’s use of the Domain Name shows that the Respondent has intentionally attempted to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site.

Respondent registered and is using the Domain Name with the intent to profit from the goodwill attributable to the Trade Mark. In the case of Georgia Boot LLC v. Modern Limited – Cayman Web Development, FA149173 (Nat. Arb. Forum Apr. 21, 2003), it was found that the Respondent had registered over 2,200 domain names, that the Respondent is in the business of acquiring and selling domain name registrations, that many of the domain names registered to the Respondent are identical or confusingly similar to valuable, registered and famous trade marks and that the Respondent hopes to profit from the resale of its infringing domain name registrations to the owners of the trade marks.      

 B. Respondent

The Respondent’s assertions can be summarized as follows:

The Complaint must be dismissed because the Trade Mark is a generic or descriptive term for “gourmet grocery stores.” Generic and descriptive terms provide no enforceable trade mark rights under the Policy even where the Complainant has a registered trade mark. To provide such rights under the Policy essentially grants trademark owners a monopoly on a generic or descriptive term which exceeds the limited rights to use a mark for only a specific class of goods and services. Absent enforceable trade mark rights, the complaint must fail.

Respondent has rights and a legitimate interest in the Domain Name because it incorporates the common term “the fresh market”.  Anyone is entitled to register a  domain name incorporating a common descriptive term and the first to register such domain has a legitimate interest in it. Respondent uses the Domain Name in connection with an affiliate advertising program which constitutes the bona fide offering of goods and services.

The Respondent has not used the Domain Name in bad faith. The Complainant must prove that the Domain Name was registered to sell to the Complainant or that the value of the Domain Name derives exclusively from the fame of the Complainant’s mark. Respondent had no knowledge of the Complainant when it registered the Domain Name. Respondent registered it because it was a common descriptive term which was deleted when it expired due to non payment. A registrant is entitled to presume that no party claims trade mark rights to a name that has been deleted. Respondent did not register the Domain name for the purpose of selling to the Complainant. Respondent did not register the Domain Name with the intent to disrupt the Complainant’s business or to confuse customers seeking to find the Complainant’s web site. Respondent did not register the Domain Name to prevent the Complainant from incorporating its alleged trade mark in a domain name. The decisions against the Respondent cited in the Complaint, involve only registered domain names that expired and became available for anyone to register.     

The fact that the Respondent’s contact link is not working is merely a technical error.

The Respondent did not file a Response in any of the proceedings decided adversely against it and thus the decisions were decided solely on complainant’s allegations. The Panel is requested to decide this proceeding based solely on facts and arguments presented here.

The Trade Mark merely describes the business the Complainant was in, operating stores (i.e. markets) that sell, among other things, perishable foods. The terms “freshmarket” and “the fresh market” are common terms used in the food products industry to describe fresh food products.      

Respondent is located in the Cayman Islands , while the Complainant is a supermarket chain operating local stores only in limited US States (Alabama, Kentucky, Virginia, Goergia, South Carolina, North Carolina, Florida and Tennessee). Complainant does not operate in the Cayman Islands and is not known there, so Respondent would not have heard of Complainant or its mark. Respondent had no actual or constructive knowledge of Complainant’s US trade mark and business.        

C. Additional Submissions

Additional submissions of the Complainant can be summarized as follows:

The Respondent’s physical location does not insulate it from UDRP claims and the claim that it had no actual or constructive knowledge of the Trade Mark is not credible.

The Respondent routinely registers and uses domain names incorporating trade marks, trade names and other names used in the US and identifying US entities or their products and services, including marks and names used in the Complainant’s geographical area. For example, the Respondent has registered the domain names <bluebayouwaterpark.com> (an amusement park in Louisiana), <browardcountyschool.com> (in Florida), <dekalbcountyschools.com> (in Georgia), <memphiscityschool.com> (reference to Memphis Tennessee), and <georgiaboots.com> (confusingly similar to the US Federal mark GEORGIA BOOT, which is in use by a Tennessee company since 1968).

The Respondent has also registered one other US grocery store related domain name in bad faith, mainly <Albertsoncreditunion.com>. The Complainant was an Idaho grocery store in Albertson’s Inc. and Albertsons Employees Federal Credit Union v. Modern Limited – Cayman Web Development, FA178222. That case and another against the Respondent, Boehringer Ingelheim International GmbH v Modern Limited – Cayman Web Development, FA133625, undermines the Respondent’s claim that it did not respond in prior UDRP proceedings. In both cases, the Respondent filed a submission offering to transfer the disputed domain names to the Complainant, thereby admitting it had no rights in those domain names and each panel took the respondent’s submission into account in its decision.

The Respondent’s claim that it had no actual or constructive knowledge of the Complainant is undermined by the fact that a simple online search via the WHOIS database, a search engine, or trade mark databases would have quickly revealed that the Complainant was using, and owns the Trade Mark. Such a search is a reasonable expectation for a company whose name is Cayman Trade Mark Trust and whose business appears to exist solely on the Internet. The record of UDRP decisions against the Respondent clearly demonstrates that it has knowledge of trade marks registered in numerous geographic locales far from the Cayman Islands including the marks, THE PEOPLE’S PHARMACY in North Carolina, THE SPORTSMAN’S GUIDE in Minnesota, MOONLIGHT BUNNY RANCH in Nevada, BOEHRINGER INGELHEIM in Germany, GEORGIA BOOT in Tennessee and SERVIER which had been registered by a French company in the Cayman Islands, Germany, Argentina, Lebanon, Myanmar, Romania and Uruguay.

A prior registration of the domain name <thefreshmarket.com> is not a matter of record in this case.

The Respondent has failed to offer any explanation for, or defense to, its long established history of registering and using trade mark related names in bad faith. It does not allege it had the permission of any relevant trade mark owner.

The Respondent has alleged that the Complainant’s mark is generic, however, it has itself explicitly identified the trade mark THE FRESH MARKET on its web site by using the script TM. The Respondent also used the TM symbol in relation to the marks GEORGIA BOOTS and PEOPLE’S PHARMACY, when it used these marks on its similar web sites connected to these domain names.

The Trade Mark has been used continuously for 22 years, it is a registered trade mark, and is not descriptive or generic. The Trade Mark does not refer to food and in any event the Complainant sells more than perishable items and food.  “Market” is in no way limited to grocery stores.   Complainant’s annual advertising expenditures exceed $500,000. While most is focused on the southeastern US, the Complainant is mentioned in national media (e.g., Complainant was recently contacted by NBC news to comment on thanksgiving turkeys). A substantial number of customers have been exposed to the Trade Mark and associate it with the Complainant and its goods and services. The Policy does not require that the use of the Trade Mark be exclusive or enforceable within certain geographic areas.

The Respondent does not explain how <thefreshmarket.com> is descriptive of its business or indeed how the other domain names it has registered such as <toshibalaptop.com>, <yamahadirtbike.com>, and <nelson-mandela.com> could be descriptive of the exact same set of third party advertising links. The evidence shows a history of registration of trade mark terms by the Respondent as domain names to divert Internet traffic for commercial gain. It does not show that the Respondent’s business model is based on the registration of generic/descriptive domain names which could be said to describe the Respondent’s business.                       

FINDINGS

(1) The panelist finds that 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.

 

DISCUSSION

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.

Identical and/or Confusingly Similar

The Complainant owns the registered trademark, THE FRESH MARKET, in the United States and has used it in the US continuously for 22 years. Clearly, the US Trade Mark Registry does not regard the Trade Mark to be generic for the Complainant’s business as contended by the Respondent. The Panel finds that the disputed domain name is confusingly similar to Complainant’s THE FRESH MARKET trademark.  The use of the generic designation “.com” in the Domain Name does not change this.

Rights or Legitimate Interests

The Respondent has not shown that it is commonly known by the Domain Name. The term <thefreshmarket.com> is not a generic term that is descriptive of the Respondent’s business and the name simply seems to have been linked along with a lot of other domain names containing the trade marks of third parties by the Respondent to the same web site designed to forward internet traffic to third party commercial sites. The Respondent has used the TM symbol in relation to its use of the term <thefreshmarket.com>, which would suggest it does not consider the term to be a common descriptive term free for usage by anyone as it contends. It has not adequately explained its adoption of the name for its business. The business, <thefreshmarket.com>, does not appear to exist except as a link to the Respondent’s same web site that it has linked to other domain names containing the trade marks of third parties. The Panelist agrees with the Complainant that the Respondent has not shown bona fide use of the domain name to offer goods and services, such as to demonstrate rights or legitimate interests in the Domain Name for the purposes of the Policy.     

Registration and Use in Bad Faith

Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:

(i) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

The Respondent is engaged in the practice of registering domain names containing the trade marks of entities around the world including the US and linking those domain names to a commercial website designed to forward internet traffic to many other commercial web sites of various kinds.  The Panelist agrees with the Complainant that the Respondent has not provided a sufficient explanation to show that its activities are in good faith. The history of the Respondent does not show the registration of generic domain names which can be said to describe the business that the Respondent is in, but appears to indicate domain name speculation and exploitation for commercial gain on a grand scale. Accordingly, it is clear that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating confusion as to the source, sponsorship, affiliation or endorsement of its products or services. I, therefore, find that bad faith has been demonstrated under Paragraph 4(b)(iv) of the Policy. 

DECISION

In light of the foregoing, the Panelist decides that the Domain Name is confusingly similar to the Complainant’s trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.

Accordingly, in light of the above, the Panelist requires that the registration of the Domain Name, <thefreshmarket.com>, be TRANSFERRED to the Complainant.

Dawn Osborne, Panelist
Dated: December 4, 2003

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