National Arbitration Forum

DECISION

Eggland's Best, Inc. v. None c/o Irwin Tucker

Claim Number: FA0410000338544

PARTIES

Complainant is Eggland's Best, Inc. (“Complainant”), represented by Matthew Scott, of Morgan, Lewis & Bockius LLP, 101 Park Avenue, New York, NY 10178.  Respondent is None c/o Irwin Tucker (“Respondent”), 141 Beach 128 St. Rockaway Park, NY 11694.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <egglandsbest.com>, registered with Tucows 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.

Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 4, 2004.

On October 4, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <egglandsbest.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 October 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 1, 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@egglandsbest.com by e-mail.

A timely Response was received and determined to be complete on November 1, 2004.

On November 9, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

In bringing this proceeding, Complainant relies on its federal registration for the trademark EGG.LAND’S BEST (Registration No. 1,850,387) for eggs, egg substitutes and egg derivative products; namely, liquid, frozen eggs, eggs with citric acid and scrambled egg blend, in Class 29.

Complainant, a Pennsylvania corporation, was established in 1988.  Today, Complainant is a leading producer and marketer in the United States of specialty eggs.  Each year, Complainant sells more than 600,000,000 branded eggs in the United States under the EGG.LAND’S BEST trademark.  Complainant’s EGG.LAND’S BEST eggs are produced and distributed nationally through a network of licensed egg producers.  Producers obtain Complainant’s proprietary feed supplement and packaging from approved suppliers, produce eggs in accordance with strict quality standards, and market and distribute the products to retailers in their territories.  Complainant provides national and local advertising and promotion, quality assurance, and research and development in support of and to further improve the brands.  Each year, Complainant spends approximately $8,000,000 to advertise its products in all major media, including television advertising on popular shows such as Jeopardy and Wheel of Fortune and in popular print publications such as Reader’s Digest, Health & Fitness, and TV Guide.

Complainant’s corporate name – EGG.LAND’S BEST – is a registered trademark in International Class 29 on the Principal Register of the United States Patent and Trademark Office.  The registration issued on August 16, 1994.  The EGG.LAND’S BEST trademark registration has become incontestable pursuant to Section 15 of the Lanham Trademark Act, 15 U.S.C. §1065.  Under federal law, Complainant's ownership of an incontestable registration represents conclusive evidence of the validity of the EGG.LAND’S BEST trademark, Complainant's ownership and registration of the mark, and of Complainant's exclusive right to use the EGG.LAND’S BEST trademark in interstate commerce.  15 U.S.C. §1115(b). 

The domain name <egglandsbest.com> points to Respondent’s website.  Respondent claims that its web site is a repository for “lousy jokes.”  The website is an unadorned white page with bolded and regular text.  The web site states “In the good old days a lousy joke was known as ‘Laying An Egg!!’  This website has the ‘Best’ ‘Laid’ ‘Eggs’ in the land.  So… the best lousy jokes are at ‘EggLandsBest!’”  From the time that Complainant became aware of Respondent’s web site on or about April 21, 2004, until Complainant filed this Complaint, Complainant is aware of only two jokes that have appeared on Respondent’s web site, both of which are off color and likely offensive to many readers.

<egglandsbest.com> undeniably is confusingly similar to Complainant’s well known and distinctive federally registered trademark and corporate name, EGG.LAND’S BEST.  Respondent’s domain name is an exact, letter for letter, reproduction of Complainant’s trademark.  Complainant is aware of at least four instances of actual confusion resulting from the similarity between the domain name and Complainant’s trademark.

Respondent does not have any right to or legitimate interest in the Domain Name.  To Complainant’s knowledge, Respondent has never used or made preparations to use the domain name “in connection with a bona fide offering of goods or services.” ICANN Policy, ¶ 4(c)(i).  Indeed, Respondent indicates on his website that the Domain Name is used in connection with posting jokes, and Respondent’s May 21, 2004 letter states that it is a “non-commercial site to be used for [my] entertainment.”   Nor is there any evidence that Respondent has ever been commonly known as Eggland’s Best.  ICANN Policy, ¶ 4(c)(ii).  Neither the registration for the domain name nor the associated website identify Respondent as Eggland’s Best.  In its May 21st letter, Respondent admits that it has no right or legitimate interest in the domain name and that it “landed” on the domain name by “coincidence.”

As noted above, Complainant has been using the EGG.LAND’S BEST trademark extensively for over twelve years.  As a result, the EGG.LAND’S BEST mark and company name are immediately recognized throughout the world as referring to Complainant and its products.  Complainant has not licensed or otherwise authorized Respondent to use the EGG.LAND’S BEST trademark as a domain name or otherwise.  Any use of the Domain Name by Respondent necessarily will infringe upon and dilute Complainant’s rights in its mark and name and mislead consumers to believe that Respondent and its web site are affiliated with or sponsored by Respondent.

There can be no doubt but that Respondent acted in bad faith in registering and using the Domain Name.  ICANN Rules, ¶ 3(b)(ix)(3).  On April 14, 2003, Respondent sent an email to Alice Taylor, a customer service representative employed by Complainant, indicating that Respondent owned the Domain Name and inquiring whether Complainant would be interested in acquiring it.  These circumstances present a classic example of “bad faith” as described in Paragraph 4(b)(i) of the Policy (bad faith present where Respondent registered the domain name primarily for the purpose of selling to the Complainant who is the owner of the trademark…).  Despite having approached Complainant in April 2003 about acquiring the Domain Name, Respondent asserted in its May 2004 letter to Complainant’s counsel that it was unaware of Complainant’s products and its status.  Moreover, after receiving a letter from Complainant’s counsel, Respondent amended its web site to discuss the matter, stating “Apparently there is a company by the name of Eggland that deals in, guess what, eggs!!”  Respondent has known of Complainant’s existence since at least as early as April 2003.  His offer to allow Complainant to acquire the Domain Name is uncontrovertible evidence of this fact.  Respondent’s bad faith is only more apparent for his attempts to conceal it despite the evidence.

B. Respondent

On or about December 13, 2002, I registered the domain name <egglandsbest.com> as a noncommercial (I am retired) entertainment-only website for the benefit of myself and a group of like-aged, like-minded friends and retirees as a forum for which to share and post jokes.  In my day (I am 69 years-old) a “bad” joke was known as “laying an egg.”  In an effort to post the best of the worst jokes in the land, I entered many word combinations into the search engine of a website that registers domain names.  Ultimately, and, in this instance, ironically, it was the search engine of that website that suggested <egglandsbest.com> as an available site.  I purchased the said name, which cost me approximately $10.00.

As a non-egg eating, non-supermarket going individual, I had not a clue as to the existence of a company known as EGG.LAND’S BEST.

Once purchased, I put out word, via e-mail, to all of my old buddies, that I had purchased the site, naming same, and that they should e-mail me jokes for posting.  Very soon thereafter, a friend of mine advised me that there is a company, known as and by EGG.LAND’S BEST.

At that point, I looked the company up in “Google” and found their website <eggland.com>.  Surprised at the “oversight” on their part – imagine, in this day in age, a company of this magnitude leaving its own name available for purchase on the internet – I decided that the responsible thing to do, was to contact the company and advise them of the situation and offer them their name, which I did.

My original email to the company, sent April 14, 2003, is annexed to Complainant’s Complaint as Exhibit “10”.  The email reads as follows:

“Hi, www.egglandsbest.com is a website that I retain.  Would you be interested in acquiring it?  Please contact me if you have an interest in obtaining the domain name.  Sincerely, Irwin Tucker.”

Now, the inference that the above communication is tantamount to a shakedown is unsupported by any evidence, is probably a projection (in psychology terms) and is thoroughly offensive to me.  I did not, and do not, need or want their money.

What Complainant is simply not considering is the following:  the site was never “for sale,” and it is not “for sale” today.  However, at the time of my initial communication, certainly I had an absolute right to be reimbursed my $10 (purchase price of site).  As well, any expenses associated with the transfer should be born by the company, and not by me.

I waited for a response to my email, and waited, and waited, and waited and obviously was thoroughly ignored.  As Complainant has provided a copy of the said email, they cannot now deny receipt thereof.

I gave the company more than a full year to demonstrate a scintilla of interest in the name before posting anything on the site.  They did nothing.  It was only after a great deal of time had passed that I felt free to use the site for my noncommercial form of entertainment.

My second email was directed to Complainant’s counsel and it explained how I found the name by “coincidence,” had not posted links to the site from any other site (don’t understand the accusation, actually) and that I would keep the jokes clean, as I understood and appreciated the company’s concern that no one should be offended.  I also made it clear that I considered the site my property, now that I have put time and thought into it.  Never did I offer the site for sale.  It is not!

It is my respectful position that EGG.LAND’S BEST has waived any right that it might have otherwise had (and none is conceded).  My original offer of transfer went ignored and absolutely no excuse or reasonable explanation is provided for that behavior.  They should now, by their very omission, be estopped from claiming any right to the name at this point.

Now, clearly, my use of the domain name, as stated earlier, is a legitimate, noncommercial use from which I intend no financial gain.  As well, there was never any intent to divert customers (I don’t sell eggs) or to tarnish their service mark (I removed all off-color” content).  As well, it is obvious that the concerns of Complainant are thoroughly insincere as 1. they failed to purchase the domain name for the last 10 or so years and, 2. they failed to respond to my initial communication.

Complainant’s behavior is a clear waiver of any interest, legitimate, or otherwise, that it may have had.  Additionally, and in light of their dilatory behavior, they now fail to make out a case for transfer.

It is based upon the foregoing that I respectfully request that ownership of the domain name at issue not be disturbed.

 

 

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

FINDINGS

Identical or Confusingly Similar:  Policy ¶ 4(a)(i).

Complainant, a Pennsylvania corporation established in 1988, asserts that it has established rights in the EGG.LAND’S BEST mark through registration with the United States Patent and Trademark Office (e.g., Reg. No. 1,850,387, issued August 16, 1994) for eggs, egg substitutes and egg derivative products namely, liquid, frozen eggs, eggs with citric acid and scrambled egg blend.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption). 

Complainant contends that Respondent’s <egglandsbest.com> domain name is confusingly similar to Complainant’s EGG.LAND’S BEST mark because the domain name incorporates Complainant’s mark with the exception of the omission of punctuation marks such as the period between the words “egg” and “land” and the apostrophe after the word “land.”  See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

 

The Panel finds that the addition of the generic top-level domain “.com” is irrelevant in determining whether the <egglandsbest.com> domain name is confusingly similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

 

            Rights and Legitimate Interests:  Policy ¶ 4(a)(ii).

The Panel finds that the domain name is confusingly similar to Complainant’s mark and it is used for commercial benefit. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name.  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was clearly well-known at the time of Respondent’s registration of the domain name it can be inferred that Respondent is attempting to capitalize on the confusion created by the domain name’s similarity to the mark); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

Moreover, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the <egglandsbest.com> domain name.  Thus, the Panel finds Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Registration and Use in Bad Faith   Policy ¶4(a)(iii).

Complainant contends that Respondent sent an e-mail to a customer service representative employed by Complainant, and inquired whether Complainant would be interested in acquiring the domain name.  The Panel finds Respondent’s solicitation of the <egglandsbest.com> domain name registration evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).

Complainant asserts that Respondent had actual or constructive knowledge of Complainant’s mark and therefore Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  The Panel finds that registration of a domain name confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

Complainant argues that Respondent’s <egglandsbest.com> domain name causes Internet users to mistakenly believe that the disputed domain name is affiliated with Complainant.  Complainant has produced evidence revealing that on or about April 21, 2004, Complainant received a complaint from an angry consumer who was offended by the content posted by Respondent at the disputed domain name, which the consumer believed was Complainant’s site.  Complainant contends that the initial consumer confusion the domain name causes is evidence that Respondent registered and used the domain name in bad faith.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

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 <egglandsbest.com> domain name be TRANSFERRED from Respondent to Complainant.

___________________________________________________

Honorable Richard B. Wickersham, Judge (Ret.), Panelist
Dated: November 22, 2004

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