DECISION

River West Brands LLC v. Bravo Foods International Corp.

Claim Number: FA0405000269307

PARTIES

Complainant is River West Brands LLC 20 N. Wacker Drive, Suite 2720, Chicago, IL, 60606 (“Complainant”). Respondent is Bravo Foods International Corp.  (“Respondent”), represented by Donna Greenspan, One North Clematis Street, Suite #400, Palm Beach, FL, 33401.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <metrecarb.com>, registered with Network Solutions, 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 7, 2004; the Forum received a hard copy of the Complaint on May 12, 2004.

On May 17, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <metrecarb.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 7, 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@metrecarb.com by e-mail.

A timely electronically filed Response was received prior to the Response deadline. However, the hard copy of the Response required by UDRP Rule #5(b) was not received until June 8, 2004, and the Response is therefore deficient.  This Panel will consider the Response on the basis that to rule a Response inadmissible because of formal deficiencies would be an extreme remedy that may not be consistent with the basic principles of due process. See Strum v. Nordic Net Exch. AF, (Nat. Arb. Forum Feb. 21, 2002).

Complainant filed a timely Additional Submission on June 11, 2004.

Respondent filed a timely Additional Submission on June 14, 2004.

On June 21, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

            On October 3, 2003, Complainant’s President called Respondent’s CEO about whether Respondent would be interested in a license to METRECAL.  After interest was expressed, Complainant sent a letter and overview of METRACAL to Respondent.

            The parties had subsequent phone conversations regarding the matter.

            On December 9, 2003, Respondent registered the domain name <metrecarb.com>.

            Respondent has never used the name Metrecarb in any of its businesses and is not making any legitimate noncommercial fair use of the <metrecarb.com> domain name.

            The domain name in question is confusingly similar to Complainant’s METRECAL brand that it intends to use via U.S. Trademark Applications Nos. 78/117,689 and 78/345,789.

            Respondent only came up with the “idea” for Metrecarb after access to Complainant’s materials on METRECAL.  Metrecarb is specifically derived from METRECAL.

            Respondent’s bad faith registration is shown by two facts:  (1). Complainant believes the only reason Respondent registered  <metrecarb.com> was as a negotiation tactic designed to reach a better deal for Respondent in the contemplated license of METRECAL from Complainant; and (2).  After the licensing talks broke down, Respondent refused to transfer the <metrecarb.com> domain name to Complainant to intentionally interfere with Complainant’s business.

           

B. Respondent

            Respondent is the maker of Slim Slammers Fortified Low Fat Milk.  Respondent is currently developing a lactose-free version of Slim Slammers.

            On December 12. 2003, the chief executive officers of Complainant and Respondent conducted a meeting.  At the time Respondent was considering adding meal-replacement products to its line and was interested in licensing the METRECAL trademark for that purpose.  On January 16, 2004, Respondent signed a “Metrecal License, Letter of Intent.”  The letter contemplated a 4% royalty based on wholesale sales of products bearing the METRECAL name, and buy-out formulae based upon certain levels of royalties resulting from anticipated METRECAL sales.

            Respondent filed an application with the United States Patent and Trademark Office to use the trademark Metrecarb to identify its low carbohydrate lactose-free version of Slim Slammers.  The application is currently pending.  On December 9, 2003, Respondent registered the domain name <metrecarb.com>.

            The meal replacement goods and the lactose-free version of Slim Slammers are two completely different products.

            When Respondent disclosed to Complainant that it intended to market its own Metrecarb product in conjunction with the METRECAL meal-replacement products, Complainant demanded a royalty on the Metrecarb product equivalent to the over-inflated royalty/ buy- out structure proposed for the METRECAL product.  The parties could not resolve the differences, and on February 24, 2004, Respondent advised Complainant that it had decided not to pursue the METRECAL license.

            The domain name and the METRECAL mark are not confusingly similar.  “Cal” clearly stands for calorie, while “carb” stands for carbohydrate.  There is obviously a distinction between low-carb and low-cal products. 

            Respondent did not attempt to change the pricing structure that was set forth in the letter.  It was Complainant who insisted on an additional royalty on Respondent’s own Metrecarb products.  That is what broke the deal.

            It is not bad faith for Respondent to refuse to transfer its <metrecarb.com> domain name, but is in fact an attempt by Complainant at Reverse Domain Name Hijacking in order to appropriate Respondent’s trademark for its own profit.

           

C. Additional Submissions

Complainant’s Additional Submission Under Forum Supplemental Rule 7.

            Complainant objects to Respondent’s failure to file a timely response and contends that it should not be considered.  Complainant further contends that the dates referred to by Respondent was not 2003 but was 2004.  Complainant contends that Respondent’s assertion that it has a Metrecarb trademark is false since there is no evidence of Respondent’s showing any use of the Metrecarb name, which is a precondition towards establishing trademark rights.  Respondent makes no statement that it derived the Metrecarb name independent of METRECAL.  Any such contention would be ludicrous.

Respondent’s Response to Complainant’s Additional Submission.

            Complainant showed no intent to use the METRECAL name in conjunction with dairy-based low-carbohydrate product until Respondent disclosed its marketing intentions.  Complainant’s focus on the timing of Respondent’s registration of the Metrecarb trademark application on February 17, 2004, is a red herring.  Respondent registered <metrecarb.com> as a domain name on December 9, 2003—(1) month before Respondent signed the Letter of Intent and two (2) months before the meeting between the parties to finalize the METRECAL licensing agreement.

FINDINGS

1. Complainant does not state its business purpose in the Complaint but the Exhibits to the Complaint state that Complainant acquires, redevelops, and licenses trademarks and other brand-related intellectual property.  Complainant identifies strong dormant brands with significant potential in the marketplace, acquires intellectual property rights to those dormant brands and attempts to license the brands to interested parties.

2. The original owner of METRECAL was Mead-Johnson (subsequently acquired by Bristol-Myers).  METRECAL was marketed for approximately 30 years until sales were discontinued in the early 1990s because of intense competitive pressure and Mead-Johnson’s decision to focus on other offerings.  Thereafter, the owner permitted the trademark to become dormant.

3. Complainant alleges in the Complaint that it intends to use the trademark METRECAL as result of United States Trademark Registrations.  Complainant does not supply copies of any registrations nor does it allege the dates upon which any such registrations were filed.  Complainant represented to Respondent in the proposed Trademark License Agreement presented by Complainant to Respondent in Schedule A that Complainant had filed an “Intent-to-Use Application with the United States Patent and Trademark Office on March 26, 2002:  Notice of Allowance issued December 27, 2002.”

4. Complainant identified Respondent, a maker and seller of low fat milk, as a possible licensee of the trademark, METRECAL.  Complainant wrote a letter to Respondent on October 3, 2003 proposing an arrangement between Complainant and Respondent for the use of the tradename METRECAL. This letter suggested that Respondent might use “the METRECAL name in a number of ways.”  After some discussion of the matter Complainant prepared and mailed to Respondent a Trademark License Agreement to entitle Respondent to market products with the METRECAL tradename for the “purpose of selling flavored dairy-based products, meal replacement bars, and associated products.” The License Agreement was dated February 17, 2004.

5. On December 9, 2003, Respondent registered the domain name <metrecarb.com>.

6. On February 17, 2004, Respondent filed with the United States Patent and Trademark Office an application for a trademark for Metrecarb for low carbohydrate lactose free milk drink.

7. In negotiation of the February 17, 2004, License Agreement, Respondent proposed that it sell its Metrecarb milk product in conjunction with meal replacement products under the METRECAL mark.  Complainant and Respondent could not come to agreement on the matter.  Complainant demanded a royalty on Metrecarb sales.  Respondent refused to pay royalty on Metrecarb products and withdrew from the proposed License Agreement negotiations.

8. Complainant insisted that <metrecarb.com> be transferred from Respondent to Complainant.  Respondent refused the demand.

9. Complainant failed to prove that it had rights in the trademark, METRECAL, as required by the provisions of  Policy, Paragraph 4(a)(i).

10. The relief demanded in the Complaint must be denied.

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 requirements of this section are in two parts. Complainant must prove (1) that the domain name is identical or confusingly similar to a trademark or service mark, and (2) that Complainant has rights in the trademark or service mark.  The first element to be proved by Complainant is that it has rights in the trademark, METRECAL.  The evidence presented by Complainant reveals that the owner of the mark used METRECAL as a trademark for a number of years but then the owner discontinued sale of the product and the trademark became dormant.

 Complainant alleges as follows:  “The domain name in question, metrecarb.com is confusingly similar to the Complainant’s METRECAL brand that it intends to use via U.S. Trademark Applications Nos. 78/117,689 and 78/345,789.”  This is the sole allegation contained in the Complaint regarding Complainant’s rights in the trademark, METRECAL. 

Complainant fails to comply with the Rules for Uniform Domain Name Dispute Resolution Policy, Rule 3(b)(xv) which requires Complainant to “Annex”(to the Complaint) “…any trademark or service mark registration upon which the complaint relies…”

Panels have interpreted this requirement along with the other requirements of the Policy and Rules to mean that both Complainant and Respondent must prove by concrete evidence their respective burdens of proof in order to prevail.  “Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the panel require that a respondent come forward with concrete evidence that the assertions made in the response are true.”  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).

Complainant’s failure to address this issue in the pleadings is troubling under the factual context of this dispute.  The Panel is left to speculate upon what rights Complainant may have in the trademark, METRECAL, and how any such rights were acquired.  The Panel might infer from the evidence that Complainant found the METRECAL name dormant and abandoned by the original owner, and thus not protected by an active trademark registration, and filed to acquire METRECAL for itself thus hoping to take advantage of any goodwill developed by the original owner of the trademark. The Panel is not permitted to speculate upon what rights might or might not be acquired by Complainant by such action. The Panel is required to decide a complaint on the basis of the statements and documents presented. See Rules for Uniform Domain Name Dispute Resolution Policy, Rule 15. There is no evidence presented to suggest that any trademark application for METRECAL has been granted or that such event will actually occur.

Even if Complainant had supplied in evidence trademark applications for MERTECAL, that alone would not necessarily prove that Complainant had rights in the METRECAL mark. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001), which held that “the Panel is not aware of any rights conferred by a trademark application either under the Policy or at U.S. law…there being no other evidence of the Complainant’s trademark rights in the disputed domain name, the Panel finds the Complainant has failed to meet its burden of proof under para 4(a)(i) of the Policy.” See also Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) and Razorbox, Inc. v. Torben Skjodt, FA150795 (Nat. Arb. Forum May 9, 2003) finding that Complainant did not establish the requisite trademark or common law rights to grant Complainant the necessary standing for the Panel to find in its favor as Complainant’s pending trademark application did not, in and of itself, demonstrate trademark rights in the mark applied for.

The case of DR. S.A. v. aunomdelarose.com, D2001-0666 (WIPO Aug. 16, 2001) is somewhat similar on the facts to this dispute.  The complainant alleged that he was the owner of trademark in question, registered protected across Europe.  Complainant made the same representation to respondent in a communication dispatched prior to the commencement of the domain name dispute.  The Panel held as follows: “While the Complainant has alleged that it is the owner of the trademark…it did not provide the Panel with any kind of supporting evidence whatsoever to sustain that allegation.  In fact, the only evidence presented to support the said allegation is a copy of a cease and desist letter sent to the Respondent’s administrative contact, in which the complainant…declares that it is the owner of the filed trademark…” Consequently, the Panel cannot and does not regard this document as satisfactory evidence to relieve the Complainant’s burden to support its allegation that it has rights in the trademark…The Complainant has failed to prove its mere allegations that it has rights, whether registered or not, in the trademark…” 

The Rules for Uniform Domain Name Dispute Policy, Rule 3(b)(ix) requires Complainant to “Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular (1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights…” Complainant neglects to set out the “grounds” supporting its alleged rights in the trademark at issue.  Complainant in this dispute fails to show sufficient evidence to support its bare allegation that it has rights in the trademark, METRECAL.

The Policy requires in Paragraph 4(a) that “the complainant must prove” that it has rights in the trademark or service mark at issue.

The Panel finds that Complainant does not present sufficient evidence to prove its rights in the trademark, METRECAL.  Therefore the Complaint must be found to be deficient. Since the Policy requires Complainant to prove all issues to prevail, the failure of proof as found in this section terminates this dispute in favor of Respondent.  It is not necessary to consider the remaining issues set out in Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a).

Reverse Domain Name Hijacking

The Panel is not satisfied that Complainant acted in bad faith in attempting, by this proceeding, to deprive Respondent of the domain name <metrecarb.com>.   The Panel finds that Respondent derived <metrecarb.com> from METRECAL after Respondent had been solicited by Complainant to enter into a contractual arrangement to use the METRECAL name.  The domain name was developed by Respondent as part of a marketing strategy that might have become part of an arrangement between the parties for mutual benefit.  The parties could not agree on the specifics of the contract.  The Panel finds that it is not unreasonable for Complainant to take the position that it has an interest in the domain name at issue that may be recognized in a proper forum.  Complainant’s actions, in pursuing this position, does not represent the kind of bad faith required to find Reverse Domain Name Hijacking, as this issue is understood by the Panel to be applied under the Policy and Rules.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Tyrus R. Atkinson, Jr., Panelist
Dated: July 6, 2004

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