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Generic Top Level Domain Name (gTLD) Decisions |
Nestle Waters North America Inc. v. JAT
a/k/a Jer Ter
Claim Number: FA0312000220027
PARTIES
Complainant is Nestle Waters North America Inc. (“Complainant”) represented by Michael S. Haratz of Orloff, Lowenbach, Stifelman & Siegel, P.A., 101 Eisenhower Parkway, Roseland, NJ
07068. Respondent is JAT a/k/a Jer Ter, 43 W. 69th Street,
Apt. 2A, New York, NY 10023 (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <truthaboutpolandsprings.com>
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Judge
Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 16, 2003; the Forum received
a hard copy of the
Complaint on December 16, 2003.
On
December 16, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <truthaboutpolandsprings.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has
verified that Respondent is
bound by the Go Daddy Software, Inc. 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
December 26, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 15, 2004 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@truthaboutpolandsprings.com by e-mail.
A
timely Response was received and determined to be complete on January 9, 2004.
Complainant
submitted a timely and complete Additional Submission on January 13, 2004.
On January 15, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant
is the sole authorized user of numerous marks containing the “Poland Spring”
name used in connection with its bottled
water products. Since January 15, 1982, Complainant and its
predecessor-in-interest have used the distinctive “Poland Spring” name and
marks in commerce
in connection with bottled water products. In addition, Complainant maintains numerous
Poland Spring marks to designate its bottled water products and related
services.
2. Complainant
operates various websites using the Poland Spring marks, including: <polandspring.com> and
<truthaboutpolandspring.com>.
3. Complainant
has used the <truthaboutpolandspring.com> domain name since approximately
May or June 2003, when it began operating
a website with the domain name. Accordingly, Complainant has common law
rights and has established a mark in the <truthaboutpolandspring.com>
domain name.
4. On
or about September 19, 2003, more than twenty years after Complainant’s
adoption and first use of the Poland Spring mark, and after
the adoption and
use of the truthaboutpolandspring mark, Respondent registered the disputed
domain name.
5. Respondent
has no connection or affiliation with Complainant, and has received no license
or consent, express or implied, to use the
trademarks in a domain name or in
any other manner.
6. Respondent
has no trademark or other rights in the names “Poland Spring” or “truthaboutpolandspring”.
7. The
disputed domain name is confusingly similar to Complainant’s registered Poland
Spring mark.
8. The
disputed domain name is also confusingly similar to Complainant’s common law
truthaboutpolandspring mark, which has been used
in commerce in relation to
Complainant’s bottled water products since approximately May or June 2003, by
maintaining a website with
the domain name <truthaboutpolandspring.com>.
9. By
virtue of Complainant’s first use in commerce of the truthaboutpolandspring
mark, it is entitled to protection of that mark.
10. The
disputed domain name is comprised of the famous Poland Spring® and
truthaboutpolandspring marks with negligible differences.
11. The
disputed domain name is confusingly similar to Complainant’s famous Poland
Spring and truthaboutpolandspring marks because consumers
associate those marks
with Complainant’s bottled water products.
The insignificant differences in the Poland Spring domain name do not cure
the confusion caused by Respondent’s misuse of a domain
name that is virtually
identical to the famous Poland Spring and truthaboutpolandspring marks.
12. It
repeatedly has been held that a domain name that merely makes a generic
addition to a Complainant’s famous mark is confusingly
similar.
13. Respondent
has no rights or legitimate interest in the disputed domain name.
14. Respondent
is not a licensee of Complainant, nor is it otherwise authorized to use
Complainant’s mark.
15. Respondent
has no legitimate interests in the disputed domain name and has not used the
mark lawfully to offer goods or services.
16. Respondent
can present no fair use or appropriate noncommercial use of the disputed domain
name.
17. Respondent’s
choice of confusingly similar variations of Complainant’s famous and
unmistakable marks supports a finding of a lack
of rights or legitimate
interests.
18. Respondent
knew of Complainant’s famous marks when it registered the disputed domain name
(which is precisely why it registered the
disputed domain name). Therefore, Respondent acted in bad faith in
registering a domain name that is confusingly similar to the famous Poland
Spring and
truthaboutpolandspring marks.
19. Respondent
has engaged in typo-piracy, which has been held to be evidence of bad
faith. Specifically, Respondent has
registered a domain name that contains a common misspelling of the
truthaboutpolandspring mark in an
effort to divert consumers to the infringing
domain.
B.
Respondent
1. The
first element that Complainant must prove, according to Paragraph 4(a)(i) of
the Policy is 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.” Respondent does not contest
that Complainant has rights to the federally registered trademark “Poland
Spring” as well as the other
trademarks that belong to Complainant. However, Complainant also claims rights to
the phrase truthaboutpolandspring, which is not a federally registered
trademark.
2. Accordingly,
the focus of the Complaint should be on Complainant’s federally registered
trademarks. Common sense and a reading
of the plain language of the Policy support that a domain name combining a
trademark with other language
clearly indicates that the domain name is not
affiliated with the trademark owner.
3. Any
confusion is further abated when the domain includes a disclaimer and is not
used for commercial purposes. This is
the case for Respondent’s domain: there
is a disclaimer and there is no element in any manner of commercial activity.
4. The
second element that Complainant must prove, according to Paragraph 4(a)(ii) of
the Policy, is that “the Respondent has no rights
or legitimate interests in
respect of the domain name.”
5. As
a Poland Spring retail and home delivery customer, Respondent has a legitimate
interest and right to discuss the water that Respondent
purchases and drinks.
6. Respondent
wanted to learn more (and share that information) as a consumer and unbiased
party. Some of the questions Respondent
sought to answer were along the lines of the following: Is the water I am purchasing and consuming
truly spring water? Am I getting value
from this purchase or should I just consume tap water or filtered tap
water? Therefore, Respondent sought to
solicit opinions and generate discussion with other consumers. The intent of the site was to find out the
“Truth About Poland Spring’s” water.
This was the name Respondent registered for the domain.
7. Thus,
Respondent has legitimate First Amendment free speech interests and rights in
the disputed domain name. Additionally,
Respondent is not using the site on any commercial level. There are no advertisements and no
e-commerce.
8. Respondent
has a legitimate noncommercial use of the disputed domain name without intent
for commercial gain to misleadingly divert
consumers or to tarnish
Complainant’s marks.
9. The
third element that Complainant must prove, according to Paragraph 4(a)(iii) of
the Policy, is that “the domain name has been registered
and is being used in
bad faith.”
10. The
disputed domain name is not being used in bad faith. It is a fair, reasonable, and honest discussion about a
product. Respondent has never tried to
hijack or sell the disputed domain name to Complainant (or to anyone for that
matter) nor has Respondent
ever been in contact with Complainant until
Complainant contacted Respondent with regard to this Complaint.
11. Respondent
has no intention to disrepute Complainant’s business or to gain commercially
from the disputed domain name. The sole
objective Respondent has with the domain is to produce accurate, unbiased
information.
C.
Complainant’s Additional Submission
1. The
content of Respondent’s website does not cure its misuse of Complainant’s
marks. It has been repeatedly held that
the infringing nature and confusing similarity of a domain name must be
determined without regard
to the content of the site with which it is
connected. This is because, once an
Internet user is misled into using the infringing domain name link, the fact
that that initial confusion
may subsequently be eliminated by the page content
is insufficient to remedy the harm brought by misuse of a famous mark. The harm is done once the Internet user has
been misled and diverted.
2. Accordingly,
despite Respondent’s purported “free speech interests” in the content of the
site, there is no legitimate right to misuse
Complainant’s famous marks in the
domain name with which that site is affiliated.
3. Complainant’s
rights in the common law mark truthaboutpolandspring arise from first use.
4. Respondent
does not deny that Complainant made first use of the truthaboutpolandspring
mark. Respondent admits that it included a
link “to the Complainant’s web site”
– referring to <truthaboutpolandspring.com> – on the page that is
connected to the disputed
domain name.
Therefore, Respondent had actual knowledge of Complainant’s prior use of
the truthaboutpolandspring mark.
5. The
disputed domain name is confusingly similar to Complainant’s Poland Spring and
truthaboutpolandspring marks. The
addition of an “s” to the truthaboutpolandspring mark does not cure that
confusion. Indeed, it is the very
source of the confusion. Viewed in
relation to Complainant’s famous Poland Spring mark, the addition of the
generic terms “truth” and “about” does not cure
the confusion brought by
Respondent’s misuse of that famous mark.
6. Respondent
has no legitimate rights or interest in the disputed domain name.
7. Respondent
is not a licensee of Complainant, is not otherwise authorized to use
Complainant’s famous marks, and has no legitimate
interest in the disputed
domain name. Respondent’s choice of a
confusingly similar variation of Complainant’s famous marks supports a finding
of a lack of rights or legitimate
interests. As Respondent admits, it was aware
of Complainant’s truthaboutpolandspring mark when it created the website
associated
with the disputed domain name, and it included a link to
<truthaboutpolandspring.com> therein.
8. Respondent’s
admitted prior knowledge of Complainant’s truthaboutpolandspring and Poland
Spring marks is additional evidence of bad
faith.
9. The
fact that Respondent has engaged in typo-piracy, i.e., registering a site consisting of a common misspelling of
Complainant’s famous mark in hopes of luring Internet users to its site,
is
even stronger evidence of Respondent’s bad faith.
FINDINGS AND DETERMINATIONS
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.
Preliminarily,
it is to be noted that the Policy is broad. As noted by Professor McCarthy in his Treatise (McCarthy, Trademarks and Unfair Competition,
Section 25:74.2 (4th ed. 2002),
“. . . (1) it does not require that the
challenged domain name be identical
to a registered trademark owned by the complainant; it requires only that the
domain name be identical or confusingly
similar to the challenger’s trademark; (2) the reference to a trademark or
service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required – unregistered
or common law trademark or service mark rights will suffice.” [Emphasis in original.]
Although
a relatively short period has elapsed since Complainant used its purported
common law mark in commerce, the Panelist does
find that Complainant’s evidence
is sufficient to establish its common law rights in the truthaboutpolandspring
mark pursuant to
Policy Paragraph 4(a)(i).
With
this determination, it becomes abundantly clear that the disputed domain name
and Complainant’s common law mark are confusingly
similar.[1]
Even
if we were to consider only Complainant’s registered mark, the disputed domain
name would be confusingly similar to it.
The addition of descriptive or generic words does not dispel the
confusion.[2]
The
first required prong of the Policy has been met by Complainant.
To
the Panelist, the pivotal issue in this matter is whether the constitutional
right of free speech is applicable.
If
this were a trademark infringement case, Respondent might be able to assert a
valid First Amendment defense.
Professor McCarthy teaches us in his Treatise
(supra) at section 31:148:
“In terms of traditional free speech
policy, use of a mark in a purely communicative, non-trademark setting should
be permitted or
else trademark law could be used as a vehicle to stifle
unwelcome discussions. For example, a
newsmagazine article which criticizes a firm’s policies should be permitted to
use the firm’s logo as a familiar symbol
of that firm. A political cartoonist
should be allowed some room to use a caricature of a character or design mark
in order to make
a social point about the firm that owns the mark. If the trademark is ‘tarnished’ in such
commentary, it is the result of the content of the ideas conveyed. The main remedy of the trademark owner is
not an injunction to suppress the message, but a rebuttal to the message. As Justice Brandeis long ago stated, ‘If
there be time to expose through discussion the falsehood and fallacies, to
avert the evil
by the process of education, the remedy to be applied is more
speech, not enforced silence.’”
[Footnote omitted.]
But
Professor McCarthy goes on to caution us with respect to free speech on the
Internet, as follows (Treatise, supra,
section 31:148.1):
“The concern for accommodating free
speech has been extended to the use of the mark of a company that is the target
of a critical
web site in the domain name or in the metatag of the web site.”
“But domain names are different. Most cases have held that regardless of free
speech principles, a web site containing criticism of a company or an
organization cannot
be identified by a domain name confusingly similar to the
name or trademark of the target group.
The right to disseminate criticism on the Internet cannot trump the public’s
right not to be deceived by a confusingly similar domain
name. And the critic has no free speech ‘right’ to
confuse web users into thinking that they are entering a web site of the target
in order
to expose them to the defendant’s message of criticism of the
target.” [Emphasis supplied; footnotes
omitted.]
Pertinent
authorities are cited by the Professor in his footnote 2, to section 31:148.1,
as follows:
“See
e.g. Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d
1430, 1997 WL 133313 (S.D. N.Y. 1997), aff’d without opinion, 152 F.3d 920 (2d
Cir. 1998) (the Lanham Act was triggered and court issued a preliminary
injunction against use of the domain name <plannedparenthood.com>
as used
on a web site by an anti-abortion religious activist critical of plaintiff’s
policies); Jews For Jesus v. Brodsky, 993 F.Supp. 282, 46 U.S.P.Q.2d 1652
(D.N.J. 1998), judgment aff’d, 159 F.3d 1351 (3d Cir. 1998) (court issued a
preliminary injunction against the
domain name <jewsforjesus.org> on a
web site opposed to plaintiff’s religious teachings); OBH, Inc. v. Spotlight
Magazine,
Inc., 86 F.Supp.2d 176, 197, 54 U.S.P.Q.2d 1383, 1400 (W.D. N.Y.
2000) (defendant’s web site at <thebuffalonews.com> contained disparaging
comments
about the plaintiff The Buffalo News and hyperlinks to other sites
containing negative opinions about plaintiff.
Defendant was found to be an infringer.); People for Ethical Treatment
of Animals, Inc. v. Doughney, 113 F.Supp.2d 915 (E.D. Va. 2000), aff’d, [2001] USCA4 201; 263
F.3d 359, 60 U.S.P.Q.2d 1109 (4th Circ. 2001) (infringement was found by a critic of the animal rights group
PETA (People for the Ethical Treatment of Animals), who registered the domain
name <peta.org>
and used it on a web site called “People Eating Tasty
Animals: which was critical of PETA’s policies.). See § 25:69.”
“Contra: Northland Ins. Companies v. Blaylock, 1165
F.Supp.2d 1108, 56 U.S.P.Q.2d 1662 (D. Minn. 2000) (disgruntled client of
plaintiff Northland
Insurance used <northlandinsurance.com> as the domain
name of a web site highly critical of plaintiff. Preliminary injunction denied, distinguishing Planned Parenthood case. ‘In this case, defendant does not appear to
be situated to benefit financially or commercially from the existence of this
web site,
which appears to be solely intended to capture the attention of
insurance consumers to share defendant’s commercial commentary and
criticism.’). See § 27:109.1.”
This
is the crucial flaw in Respondent’s defense.
Respondent has cited authorities contending that they are in support of
its position, i.e., Talk Radio Network, Inc. v. Fotuar, FA
155181 (Nat. Arb. Forum June 24, 2003); Lockheed
Martin v. Parasi, WIPO D2000-1015 (Jan. 31, 2001); and Taubman Co. v. Webfeats, [2003] USCA6 49; 319 F.3d 770 (6th Cir. 2003). Each of the cases, however, involve the
addition of the term “sucks” to the famous marks in issue and, thus, are not
helpful here. As the Taubman Court noted, the disputed domain
name, <taubmansucks.com>, is “critical commentary” and “there is no
confusion as to source”
because the plaintiff obviously would not disparage
itself. Id. at 778. The disparaging
commentary contained in the domain name itself obviously “remove[d] any
confusion as to source.” Id. By contrast, the disputed domain name here
consists of Complainant’s famous marks with negligible differences (the
addition of an
“s” to <truthaboutpolandspring.com>, and does not have
such protected commentary.
The
Panelist finds and determines, accordingly, based on the authorities cited,
that Respondent has no rights or a legitimate interest
in the disputed domain
name. Prong two has been satisfied by
Complainant.
It
is clear that Respondent necessarily had actual or constructive knowledge of
Complainant’s rights in its marks.
Thus, Respondent’s registration of a domain name identical or
confusingly similar to Complainant’s marks, despite actual or constructive
knowledge of Complainant’s rights, demonstrates Respondent’s registration and
use of the disputed domain name in bad faith.
See Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given
the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith); see also Entrepreneur Media, Inc.
v. Smith, [2002] USCA9 115; 279 F.3d 1135 (1148 (9th Cir. 2002) (“Where an alleged infringer
chooses a mark he knows to be similar to another, one can infer an intent to
confuse.”).[3]
It
is further found and determined that Respondent’s use of a disclaimer does not
absolve Respondent’s bad faith registration and
use of the disputed domain name
because of the initial interest attraction of the consumer.
Accordingly,
it is found and determined that Complainant has established the required third
prong of the Policy.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truthaboutpolandsprings.com>
domain name be TRANSFERRED from Respondent to Complainant.
Judge Irving H.
Perluss (Retired), Panelist
Dated:
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