DECISION

Quadrant II, Inc. d/b/a Hammocks.com v. Domains Holdings Southwest Corporation

Claim Number: FA0405000268026

PARTIES

Complainant is Quadrant II, Inc. d/b/a Hammocks.com (“Complainant”), represented by Michael K. Bydalek, of Kutak Rock LLP, 1650 Farnam Street, Omaha, NE 68102-2186.  Respondent is Domains Holdings Southwest Corporation (“Respondent”), represented by Michael L. Gannon, of Fish & Richardson P.C., 3300 Dain Rauscher Plaza, 60 South Sixth Street, Minneapolis, MN 55402.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hammock-hammocks.com>, registered with Go Daddy Software, Inc.

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.

Mark McCormick as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 4, 2004; the Forum received a hard copy of the Complaint on May 5, 2004.

On May 5, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <hammock-hammocks.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 May 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 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@hammock-hammocks.com by e-mail.

A timely Response was received and determined to be complete on May 28, 2004.

On June 8, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Quadrant has long established, strong federal and common law rights in its HAMMOCKS.COM mark.  Quadrant established these rights through six (6) years of continuous use of the HAMMOCKS.COM mark as the primary source identifier for its offerings over the Internet.  Respondent’s <hammock-hammocks.com> domain name is confusingly similar to Quadrant’s mark.  Respondent’s domain name wholly incorporates Quadrant’s entire HAMMOCKS.COM mark.  The fact that Respondent’s domain name incorporates Quadrant’s registered HAMMOCKS.COM mark and merely adds the generic term “hammock” preceding Quadrant’s mark is sufficient to establish identical or confusing similarity for purposes of the ICANN Policy.  Likewise, Respondent’s domain name is confusingly similar to Quadrant’s mark under Policy ¶ 4(a)(i).  Not only does Respondent’s domain name include Quadrant’s HAMMOCKS.COM mark in its entirety, Respondent also added the term “hammock”, which describes Quadrant’s products.  Respondent registered <hammock-hammocks.com> on April 21, 2003, and the Registrar as of the date of the filing of this Complaint is Godaddy.com.  Thus, Quadrant’s enforceable federal and common law rights in its service mark precede, and are superior to, any rights Respondent may claim in its domain name.  Pursuant to Policy ¶ 4(c)(i), using a domain name confusingly similar to Complainant’s mark in order to sell products and services that compete with the Complainant’s products or services is not a bona fide offering of goods or services.  In this case, Respondent is using the disputed domain name, which is confusingly similar to Quadrant’s HAMMOCKS.COM mark, to host an Internet site that sells products that compete with Quadrant’s goods and services.  Thus, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).  Simply stated, Respondent uses the <hammock-hammocks.com> domain name to intentionally misdirect Internet users to its web site to the detriment of Quadrant, who has taken all steps to properly register its mark with the Patent and Trademark Office and build its HAMMOCKS.COM brand.  Quadrant has in no way authorized Respondent to use the HAMMOCKS.COM mark in any manner.  Respondent has no connection to Quadrant or its mark.  Furthermore, Respondent is not commonly known by the <hammock-hammocks.com> domain name.  Instead, it appears that Respondent’s only purpose in registering the name is to misdirect Quadrant’s customers to a competing site and to play on the market that Quadrant has worked so hard to build.  Quadrant’s HAMMOCKS.COM mark is its primary and most valuable asset.  Quadrant has developed substantial goodwill in, and associated with, its HAMMOCKS.COM mark.  Quadrant has protected its mark, as stated earlier, by registering the HAMMOCKS.COM mark on the Principal Register of the United States Patent and Trademark Office and this registration predated Respondent’s registration of its confusingly similar domain name by years.  It is reasonable to infer that Respondent knew or should have known of Quadrant’s rights and interests in the HAMMOCKS.COM mark when Respondent registered the domain name.  Therefore, Respondent’s registration of the domain name, despite knowledge of Quadrant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). 

The facts clearly show that Respondent’s <hammock-hammocks.com> domain name was registered, and is currently being used, to intentionally misdirect consumers wishing to visit Quadrant’s website to Respondent’s website.  At the time Quadrant discovered Respondent had begun to use the illegitimate domain name, Quadrant attempted to find an address or other contact information at Respondent’s site in order to contact Respondent and raise its concerns.  To Quadrant’s disappointment, Respondent made no effort to distinguish itself from Quadrant at its website and failed to post an address or other contact information to show that it was not affiliated with Quadrant’s HAMMOCKS.COM site.  Quadrant does not believe that this was simply an oversight by Respondent.  Instead, based on the facts known to Quadrant at this time, Respondent’s actions show its bad faith.

Quadrant subsequently sent Respondent a cease and desist letter.  Respondent through counsel stated it would not cease using the domain name in part because it has proved “commercially successful.”  Based on all of these facts, Respondent’s use of the HAMMOCKS.COM service mark, its diversion tactics and its use of the disputed domain name constitute trademark infringement, false designation of origin, dilution, unfair competition and violation of GoDaddy.com’s “Registration Agreement.” 

B. Respondent

Complainant cannot prevail in this proceeding because it failed to establish that Respondent (i) registered a domain name identical or confusingly similar to a trademark or service mark in which Complainant has rights, (ii) does not have any rights or legitimate interests in respect of the domain name, and (iii) registered and is using the domain name in bad faith.  Complainant bears the burden of proof on each of these elements.

“Hammock” is a generic term.  As defined in Webster’s New World Dictionary, “hammock” is a noun meaning “a length of netting, canvas, etc. swung from ropes at both ends and used as a bed or couch.”  Likewise, .COM is a generic top-level domain name devoid of any source-identifying significance.  “Hammocks” by itself has no trademark significance when used in connection with hammocks.  As such, HAMMOCKS.COM has no trademark significance when used in connection with hammocks.  Consequently, Complainant has no rights in the generic term “hammocks” or in the HAMMOCKS.COM domain name.  Complainant purports to own trademark rights in the generic designation HAMMOCKS.COM by virtue of its ownership of United States Service Mark Reg. No. 2,718,948 in connection with “retail store services and computerized online retail services in the field of outdoor and indoor furniture and accessories, namely, hammocks, swings, rockers, stands, storage bags, pillows, hammock covers, hammock stand wheel kits, blankets, tables, chairs, hammock caddies, hammock pads, tree straps, canopies, mosquito netting, water fountains, wind chimes, and chimenea.”  This registration covers only the design element of the Design Mark. 

In Reg. No. 2,718,948, Complainant expressly disclaims the exclusive right to use the term HAMMOCKS.COM apart from the mark as shown on the certificate of registration. 

Complainant also applied to register HAMMOCKS.COM in plain text, without any design element, in connection with “computerized online retail services in the field of outdoor and indoor furniture and accessories, namely, hammocks, swings, rockers, stands, storage bags, pillows, hammock covers, hammock stand wheel kits, blankets, tables, chairs, hammock caddies, hammock pads, tree straps, canopies, mosquito netting, water fountains, wind chimes, and chimenea.”  The USPTO refused to register HAMMOCKS.COM.

A number of parties other than Respondent and unrelated to Complainant have registered and are using domain names containing the generic term “hammock” in connection with selling hammocks. 

Complainant does not own a federal registration establishing exclusive rights in the literal term HAMMOCKS.COM, and, as such, Complainant is not afforded a presumption of valid service mark rights.  Moreover, Complainant has not, and simply cannot, establish common law rights in the generic terms “hammock,” “hammocks” or HAMMOCKS.COM.

Complainant has utterly failed to show that it possesses trademark or service mark rights in the generic term “hammocks” or the generic HAMMOCKS.COM domain name. Complainant does not own a trademark registration giving it any exclusive rights to the literal term HAMMOCKS.COM and Complainant has not, and cannot, establish common law rights in the generic terms “hammocks” and HAMMOCKS.COM.  Complainant has not satisfied the requirements of Policy ¶ 4(a)(i).  Therefore, Complainant’s request to transfer the domain name must be denied.

Respondent may demonstrate rights in the <hammock-hammocks.com> domain name by establishing that, prior to notice of this dispute, Respondent was using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  Respondent’s activities instituted well prior to notice of this dispute clearly establish its legitimate interests in the <hammock-hammocks.com> domain name. 

Respondent is in the business of selling hammocks.  In preparation for selling hammocks over the Internet, Respondent registered the <hammock-hammocks.com> domain name on April 21, 2003.  Respondent chose to register a domain name containing the generic term “hammocks” because Respondent sells hammocks.  In addition, Respondent chose a domain name containing both the singular and plural words for the product it sells – that is, “hammock” and “hammocks” – to increase the probability of obtaining a top position when consumers conduct searches for either “hammock” or “hammocks” on Internet search engines such as Google and Yahoo.

Complainant did not contact Respondent regarding the domain name until April 13, 2004, nearly a year after Respondent registered the domain name.  As such, long before being contacted by Complaint, Respondent was using the <hammock-hammocks.com> domain name to sell hammocks.  Therefore, Respondent has a legitimate interest in the domain name pursuant to Policy ¶ 4(c)(i).

According to Complainant, Respondent is not entitled to use a domain name containing “hammocks” in connection with a website on which Respondent sells hammocks because doing so competes with Complainant, who also sells hammocks.  Complainant’s position is preposterous. 

Based on Respondent’s bona fide use of the domain name in connection with selling hammocks and the fact that Respondent has the right to use the generic name of the product it sells in a domain name, Respondent does have rights and a legitimate interest in the <hammock-hammocks.com> domain name.  Complainant’s request to transfer the domain name, therefore, must be denied pursuant to Policy ¶ 4(a)(ii).

Registering a domain name comprised solely of generic terms cannot be bad faith.  Complainant’s allegations of bad faith are all based on the false premise that Complainant owns service mark rights in the generic term HAMMOCKS.COM.  First, Complainant asserts that Respondent knew or should have known of Complainant’s rights in HAMMOCKS.COM. 

HAMMOCKS.COM is generic.  Complainant does not own a federal registration for the term HAMMOCKS.COM and it has not and cannot establish common law rights in the term.  In the very federal registration Complainant asserts against Respondent, Complainant has disclaimed the exclusive right to use HAMMOCKS.COM.  Each of Complainant’s assertions of bad faith is premised on Complainant’s ownership of service mark rights in HAMMOCKS.COM.  Since Complainant has no such rights, Complainant has failed to establish that Respondent registered and is using the domain name in bad faith.

On the other hand, Respondent registered a domain name containing the singular and the plural words of the very product it is selling.  Respondent began using this domain name containing two generic terms in connection with the bona fide offering of the goods identified by those generic terms well before notice of this dispute.  Bad faith cannot be found based on registration and use of a domain name solely comprised of generic terms for a website offering those very goods for sale. 

DISCUSSION AND FINDINGS

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 or confusingly similar:  Policy ¶ 4(a)(i).

Respondent asserts that Complainant has only registered the HAMMOCKS.COM word and design mark because the United States Patent and Trademark Office rejected the registration of just the word mark.  The HAMMOCKS.COM mark is merely a descriptive term—a generic term meaning a length of some material swung from ropes at both ends.  Complainant may not exclude others from use of the terms over a merely descriptive mark.  See Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (stating that “[b]ald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name” in holding that Complainant had not established common-law rights in the YAO MING mark); see also Weatherford Int’l., Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (stating that “[a]lthough Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [a]lthough Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)  (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself).

Complainant has failed to provide evidence of Internet confusion.  In the Response, Respondent has attached examples of other companies using the term “hammocks” in their domain names.  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001), (holding that Complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS).

The <hammock-hammocks.com> domain name is not confusingly similar to the HAMMOCKS.COM mark because the domain name contains the generic words “hammock” and “hammocks.”  See Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights).

Complainant has failed to establish that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

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

Respondent asserts that it has rights in the domain name because Complainant’s mark is generic.  The words “hammocks” and “hammock” are generic terms and the Respondent’s domain name incorporates these generic terms.  Respondent has rights to and legitimate interests in a domain name that consists of generic terms.  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business).

Respondent contends that it has rights and legitimate interests in the domain name because the domain name describes Respondent’s business.  Respondent’s business is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that Respondent was making a bona fide offering of goods or services with the disputed domain name.).

Complainant has failed to establish that Respondent has no rights or legitimate interests in the disputed domain name. 

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

Complainant has failed to meet its burden in proving bad faith registration and use because Complainant has failed to point to particular facts and circumstances supporting its allegations.  See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from Complainant or for any other purpose prohibited by UDRP Rules); see also Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125, "[b]ad faith intent … shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful."; see also 15 U.S.C. §1125(d)(1)(B)(ii).

Because Respondent’s domain name is generic, Respondent has not registered or used the <hammock-hammocks.com> domain name in bad faith.  See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that Respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”); see also Lumena s-ka zo.o. v. Express Ventures Ltd, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).

Also, because Respondent has rights or legitimate interests in the domain name, Respondent did not register or use the disputed domain name in bad faith.  See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute); see also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created). 

Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith. 

DECISION

For the reasons stated, the Panel denies the relief requested in the Complaint.

Mark McCormick, Panelist
Dated:  June 21, 2004

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