DECISION

MGW Group, Inc. v. Gourmet Cookie Bouquets.com

Claim Number: FA0405000273996

PARTIES

Complainant is MGW Group, Inc. (“Complainant”), represented by Pamela S. Ratliff, of  Baker Botts L.L.P., 2001 Ross Avenue, Suite 600, Dallas, TX 75201.  Respondent is Gourmet Cookie Bouquets.com, which is a trading style used by All About Gifts & Baskets, LLC (“Respondent”), represented by Stephen H. Sturgeon, of Stephen H. Sturgeon & Assoc., 11116 Hurdle Hill Drive, Suite 200, Rockville, MD  20854.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gourmet-cookie-bouquets.com>, registered with Bulkregister, Llc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Robert A. Fashler (Panel Chair), Houston Putnam Lowry, and Mark V.B. Partridge as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 19, 2004; the Forum received a hard copy of the Complaint on May 21, 2004.

On May 25, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain name <gourmet-cookie-bouquets.com> is registered with Bulkregister, Llc. and that 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 May 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 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@gourmet-cookie-bouquets.com by e-mail.

A timely Response was received and determined to be complete on July 6, 2004.

On July 12, 2004, a timely Additional Submission from Complainant was received and determined to be complete.

On July 19, 2004, a timely Response to Additional Submission was received from Respondent and determined to be complete.

On July 19, 2004, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Robert A. Fashler (Panel Chair), Houston Putnam Lowry, and Mark V.B. Partridge as Panelists.

On July 20, 2004, the Panel issued an Order for Extending Time for Rendering a Decision, extending the time period within which the Panel was required to render its decision to August 11, 2004.

On July 26, 2004, a second Additional Submission (Complainant’s Response to Respondent’s Additional Submission) was received after the deadline for submissions.

On July 29, 2004, a Request for Permission to Submit an Additional Response to Respond to Complainant’s Second Additional Response was received from Respondent after the deadline for submissions.

On August 5, 2004, the Panel issued an additional Order for Extending Time for Rendering a Decision, extending the time period within which the Panel was required to render its decision to August 16, 2004.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.             Complainant’s Primary Submissions

Complainant asserts that:

(a) Complainant:

(i) began using the trademark COOKIE BOUQUET (the ‘Trademark”) in connection with its cookie business in 1983,

(ii) is the franchisor for COOKIE BOUQUET and COOKIES BY DESIGN franchise shops, which produce and sell gourmet cookies, decorated cookies and specialty cookie gift arrangements,

(iii) or its franchisees operate nearly 250 shops throughout the United States that advertise and sell cookies in association with the Trademark and logos that include the Trademark,

(iv) sells cookie products over the Internet through websites accessed via the domain names <cookiebouquet.com> and <cookiesbydesign.com>,

(v) holds two incontestable U.S. trademark registrations for the Trademark (one for cookies and the other for retail store and mail order services in the field of cookies), both registered in August 1996 and claiming first use to June 1983,

(vi) secured both of those registrations issued on the basis of acquired distinctiveness (secondary meaning),

(vii) since 1983, has extensively advertised and promoted its products and business and used its COOKIE BOUQUET marks, such that the Trademark is well known and has acquired secondary meaning,

(viii) achieved gross sales in 2002 of approximately US$57,000,000,

(ix) together with its franchisees, spends approximately US$1,750,000-$2,000,000 per year on advertising and public relations,

(x) holds eight additional US trademark registrations for trademarks that include the Trademark, seven of which are incontestable,

(b) in early 2003, Complainant learned that Respondent was operating a competing cookie business over the Internet in association with the Domain Name;

(c) on October 9, 2003, Complainant’s attorney sent a cease and desist letter to Respondent via certified mail but the letter was returned unopened and marked “unclaimed return to sender”;

(d) on November 3, 2003, Complainant’s attorney sent another cease and desist letter to Respondent via Federal Express, but received no response;

(e) on December 15, 2003, Complainant’s attorneys sent a third cease and desist letter to Respondent via email;

(f) Respondent replied to that email on December 16, 2003, stating that the address used in the previous cease and desist letters was an old address and that the email version of the cease and desist letter was the first received by Respondent;

(g) on January 5, 2004, Respondent wrote to Complainant’s attorneys stating that Respondent had removed all references to “Cookie Bouquet(s)” on Respondent’s website, but did not agree to remove the words “Cookie Bouquet” from the Domain Name;

(h) the January 5, 2004, correspondence from Respondent also confirmed that Respondent had added a disclaimer to Respondent’s website clearly indicating that Respondent has no affiliation with Complainant or the Trademark;

(i) the Domain Name is confusingly similar to the Trademark;

(j) Respondent has no rights or legitimate interest in the Domain Name because:

(i) Respondent is not commonly known by the Domain Name,

(ii) Complainant has prior rights in the Trademark, and Respondent has made no prior lawful use of the Trademark, and

(iii) Respondent registered the Domain Name long after Complainant adopted, began using, and registered the Trademark, and after the Trademark acquired secondary meaning and became well known,

(k) Respondent registered and is using the Domain Name in bad faith because:

(i) Complainant’s Trademark and business are well known by the consuming public and by members of the retail cookie business,

(ii) Respondent had actual or constructive knowledge of Complainant’s prior rights in the Trademark and of Complainant’s business,

(iii) Respondent knew or ought to have known that its use of the nearly identical Domain Name in connection with a competing cookie business would cause consumer confusion,

(iv) Respondent registered the Domain Name to benefit from the goodwill associated with Complainant’s Trademark and business,

(v) Respondent selected the confusingly similar Domain Name to draw consumers seeking Complainant’s products and services to Respondent’s competing business for commercial gain by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, and

(vi) Respondent essentially admitted that its use of the Trademark with competing goods is confusing to consumers by adding a disclaimer to its website stating “gourmet-cookie-bouquets.com is not affiliated with the COOKIES BY DESIGN®/COOKIE BOUQUET® franchise shoppes or MGW Group, Inc.” (the “Disclaimer”), but continues to use the Domain Name nonetheless.

B.             Respondent’s Primary Submissions

Respondent asserts that:

(a) Respondent:

(i) started its business in January 2002 in Yorktown, Virginia, and subsequently moved to Leesburg, Virginia in November 2002,

(ii) resells the products of seventeen existing gift companies, including four bakeries,

(iii) divided its nearly 1,000 unique gift items into various departments, and developed separate websites that use different generic domain names for each distinct category of product sold through each website, and

(iv) the Domain Name is part of a network of websites whose names were chosen to describe the products on each of Respondent’s websites, including <holiday-gifts-gift-baskets.com>, <baby-diaper-cakes.com>, and <gourmet-gifts-gift-baskets.com>;

(b) Complainant has not established trademark rights in the Domain Name because:

(i) COOKIE BOUQUET is generic and is merely descriptive of the products that Respondent, Complainant and other retailers sell, such that the consuming public does not associate COOKIE BOUQUET with Complainant, and Respondent submitted various pages printed from the Internet in support of that assertion,

(ii) the United States Patent and Trademark Office (“USPTO”) has declared in the past that COOKIE BOUQUETS is too generic to trademark,

(iii) COOKIE BOUQUET(S) is not inherently distinctive because at least four companies applied to trademark this term up to nine years before Complainant’s trademark application, but those applications were not successful,

(iv) Complainant’s rights in the Trademark are not solid, as Courts or the U.S. Trademark Trial and Appeal Board could determine that COOKIE BOUQUET is generic,

(v) Complainant’s application for the Trademark may have contained fraudulent representations, including a representation by the President of Complainant that “to the best of my knowledge and belief, no other person, firm or corporation has the right to use said mark in commerce, either in the identical form or in such near resemblance hereto as to be likely, when applied to the goods and services of such other person, firm or corporation to cause confusion, or to cause mistake, or to deceive . . .”,

(vi) given the complex trademark issues involved, this matter is outside the Panel’s purview, and

(vii) Complainant’s submissions do not provide sufficient evidence of the existence of Complainant’s registered Trademark;

(c) Respondent has rights and legitimate interests in the Domain Name because:

(i) since at least as early as April 2002, Respondent has had a business relationship with a company in Ohio named Cookie Bouquets, Inc. (“CBI”), which sells cookies through a website accessed via the domain name <cookiebouquets.com>,

(ii) at the time that the Domain Name was registered in August of 2002, Respondent was making a bona fide offering of goods and services at its website accessed via the Domain Name, offering primarily cookies manufactured and supplied by CBI,

(iii) Respondent received permission from CBI to use its company name, product names, descriptions and images on Respondent’s website,

(iv) the owner of CBI was aware of the Domain Name when Respondent began selling CBI’s products under the Domain Name, and had no problem with that activity,

(v) Respondent had no reason to believe it was infringing on the Trademark because of CBI’s activities involving the words “Cookie Bouquets” since 1983,

(vi) Respondent registered the Domain Name before being aware of any claim regarding the Trademark, and Complainant did not make Respondent aware of the Trademark until sixteen months after Respondent registered the Domain Name;

(d) Respondent has not registered and used the Domain Name in bad faith because:

(i) Respondent did not know that Complainant held the Trademark when Respondent registered the Domain Name;

(ii) Complainant does not promote or advertise the name of its business as COOKIE BOUQUET in Virginia;

(iii) Respondent registered the Domain Name in relation to a legitimate business interest and offered goods and services under the Domain Name before Complainant initiated this dispute and before Respondent had knowledge of Complainant and its claims;

(iv) Respondent removed all references to COOKIE BOUQUET from its website and added the Disclaimer immediately upon becoming aware of the Complainant’s claims and the Trademark; and

(v) Respondent did not register the Domain Name in bad faith and did not intend to sell the Domain Name or disrupt Complainant’s business.

C.             Complainant’s Supplemental Submission

Complainant asserts that:

(a) this case is properly before the Panel and does not involve complex trademark issues because Complainant’s incontestable registrations of the Trademark are prima facie evidence that:

(i) Complainant has the exclusive right to use the Trademark in association with cookies and the retail sales of cookies, and Complainant’s exclusive right to prevent others from using an identical or confusingly similar mark,

(ii) the Trademark is not generic, and

(iii) the Trademark has acquired distinctiveness and secondary meaning,

(b) the Panel does not have legal authority to make a legal determination that certain of Complainant’s trademark registrations are invalid, as requested by Respondent;

(c) Complainant has established its rights in the Trademark because:

(i) Complainant’s incontestable trademark registrations are prima facie evidence that the Trademark has acquired secondary meaning,

(ii) Respondent has not presented sufficient or any evidence that the Trademark is generic;

(iii) the Trademark was never generic; rather, the Trademark was originally descriptive, but has acquired secondary meaning through use over time,

(iv) Respondent has not provided evidence, and Complainant has no information and does not believe, that the USPTO has ever denied an application to register COOKIE BOUQUET on the basis of genericness, and

(v) copies of Complainant’s registration certificates are sufficient verification of the existence of its registered trademarks;

(d) the Domain Name is confusingly similar to the Trademark because:

(i) an incontestable trademark registration for a descriptive mark is conclusive evidence that the mark has acquired distinctiveness and secondary meaning,

(ii) Complainant’s rights are and were superior to every unsuccessful third party applicant referred to in the Response,

(iii) Complainant and CBI have entered into a written agreement (the “Co-Existence Agreement”) relating to Complainant’s use of the trademark COOKIE BOUQUET and CBI’s use of the trademark COOKIE BOUQUETS  which includes acknowledgement by CBI of Complainant’s trademark rights (Note: in support of its submissions regarding CBI, Complainant provided an Affidavit of the owner of CBI, Ms. Dinene Clark, in which Ms. Clark attests to certain relevant facts, as discussed in greater detail later in this Decision ),

(iv) the Domain Name incorporates the entire Trademark, and none of Respondent’s other domain names incorporate a third party’s registered trademark or refer to the name of third party suppliers whose products are sold through Respondent’s websites, and

(v) the Disclaimer is evidence that the Domain Name is confusingly similar to the Trademark, as the Disclaimer would not be required if there was no likelihood of confusion;

(e) Respondent has only provided hearsay evidence regarding its alleged affiliation with CBI and its allegation that CBI had given it permission to use the Domain Name, which is contradicted by affidavit evidence of CBI’s owner;

(f) Respondent’s claim that it was not aware of the Trademark when it registered the Domain Name is not plausible because:

(i) Complainant’s trademark registrations are constructive notice of Complainant’s rights in the Trademark,

(ii) Complainant’s franchise system is one of America’s largest and most successful retail cookie chains, and is well known nationwide, and

(iii) Complainant operates several COOKIES BY DESIGN retail stores in Virginia, which actively promote and advertise the Trademark;

(g) Respondent has not provided any plausible, admissible evidence that it registered or is using the Domain Name in good faith;

(h) Respondent is using the Domain Name in bad faith because:

(i) Respondent added the Disclaimer to its website after receiving a cease and desist letter from Complainant’s attorneys, precisely because Respondent knew and agreed that the Domain Name was likely to cause consumers to believe mistakenly that Respondent was affiliated with or sells products of Complainant,

(ii) Respondent did not have CBI’s permission to use COOKIE BOUQUETS in the Domain Name, but chose to use COOKIE BOUQUETS nonetheless, and

(iii) Respondent removed some references to COOKIE BOUQUET(S) from its website after receiving Complainant’s cease and desist letter, but did not change, and continues to use, the Domain Name.

D.            Respondent’s Supplemental Submission

Respondent asserts that:

(a) Complainant does not necessarily have enforceable rights under the UDRP Policy notwithstanding that Complainant has registered the Trademark because the Trademark is generic or descriptive and is commonly used by others;

(b) Complainant’s Trademark registrations are invalid and subject to cancellation because Complainant’s application contained an obviously false and fraudulent affidavit and fraudulent misrepresentations;

(c) a grave injustice would occur if the Panel transferred the Domain Name to Complainant, the Trademark registrations were subsequently cancelled due to actions by Respondent in the Trademark Trial and Appeals Board, and Respondent was consequently unable to recover the Domain Name;

(d) Complainant has not met the burden of proving that Respondent did not have a legitimate interest in the Domain Name;

(e) Respondent does in fact have rights in the Domain Name because:

(i) Respondent has satisfied the requirements of section 4(c)(i) of the UDRP Policy by using the Domain Name in connection with a bona fide offering of goods and services, and

(ii) there is a low threshold for determining whether Respondent has a legitimate right in the Domain Name, and Respondent meets that threshold;

(f) Complainant has failed to prove that Respondent registered and used the Domain Name in bad faith; and

(g) Complainant has failed to prove that Respondent was aware of Complainant’s trademark rights prior to Respondent’s registration of the Domain Name, and Respondent has provided evidence that Respondent did not know of any trademark issues until Complainant first contacted Respondent in December 2003.

E.            Late Submissions

The Panel sees no reason to consider the further supplemental submissions filed by both parties out of time and with no basis under any of the applicable rules, and is not considering those submissions at all.

FINDINGS

Complainant has not proven that the Domain Name was registered or is being used by Respondent in bad faith.

Given the foregoing, it is not necessary to find whether Complainant has proven the Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights or whether Respondent has no rights or legitimate interests in respect of the Domain Name.

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; and

(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.

Identical and/or Confusingly Similar

Complainant holds two registrations in the USPTO for the trademark COOKIE BOUQUET, one for cookies and one for retail store and mail order services in the field of cookies.  Both registrations issued in August of 1996 and are now incontestable.  Both received the benefit of section 2(f) of the Lanham Act (proof of acquired distinctiveness/secondary meaning).

Complainant asserts, and Respondent does not contradict, that Complainant has been carrying on business in association with the Trademark since 1983 and that its business has become very significant over time such that:

(a) Complainant or its franchisees operate approximately 250 retail outlets in the United States and sell cookies at those outlets in association with the Trademark;

(b) Complainant sells cookies directly to customers in association with the Trademark via the Internet;

(c) gross retail sales have grown to US$57,000,000 as of 2002; and

(d) Complainant and its franchisees spend approximately US$1,750,000-$2,000,000 per year on advertising, marketing, and public relations.

Under US law, the two registrations for the Trademark are presumed valid (Section 7(b) of the Lanham Act) and are incontestable (Section 14 of the Lanham Act).  Nonetheless, Respondent asserts that the Trademark is generic and commonly used, and that therefore the two registrations are not valid.  Respondent even goes so far as to accuse Complainant of having made false representations to the USPTO.

Respondent points to a few failed attempts by third parties to register identical or similar trademarks, asserting that this is proof that the Trademark is generic and not registrable.  The Panel does not accept that submission.  There are many plausible reasons why the other applications were abandoned.  The existing evidence does not prove Respondent’s assertion.  Even if Respondent was correct, and those other applications were rejected on the basis of descriptiveness, it was still open to Complainant to establish secondary meaning, which it did to the satisfaction of the USPTO.

The Panel is not inclined to “second guess” the USPTO on this point.  The Panel also notes that Respondent has provided no basis on which it can be inferred that Complainant made false representations to the USPTO.  Even if Complainant had made false representations to the USPTO, that is not a proper matter for consideration by this Panel.  The Panel expressly notes that it considers those allegations to be inappropriate and improper.

Respondent filed various printouts downloaded from particular Internet search engines and websites that are intended to prove common use and adoption of the words “cookie bouquet” in a generic and distinctive manner.  Respondent does not say who downloaded the copies from the Internet and whether the copies are accurate.  Respondent does not provide any additional evidence to substantiate or interpret what the Internet downloads are supposed to prove. For example, there is no way of knowing whether a particular business is actually a franchisee of Complainant.

The Panel is of the view that this type of evidence should be scrutinized very carefully.  Admissibility and weight should be determined cautiously on a case by case basis.  In this regard, we refer to St. Clair v. Johnny’s Oyster & Shrimp, Inc., 76 F. Supp. 2d 773 (1999) where the US District Court for the Southern District of Texas, Galveston Division, stated at pages 774 and 775:

While some look to the Internet as an innovative vehicle for communication, the Court continues to warily and wearily view it largely as one large catalyst for rumor, innuendo, and misinformation.  So as not to mince words, the Court reiterates that this so-called Web provides no way of verifying the authenticity of the alleged contentions that Plaintiff wishes to rely upon in his Response to Defendant’s Motion.  There is no way Plaintiff can overcome the presumption that the information he discovered on the Internet is inherently untrustworthy.  Anyone can put anything on the Internet.  No web-site is monitored for accuracy and nothing contained therein is under oath or even subject to independent verification absent underlying documentation.  Moreover, the Court holds no illusions that hackers can adulterate the content on any web-site from any location at any time.  For these reasons, any evidence procured off the Internet is adequate for almost nothing, even under the most liberal interpretation of the hearsay exception rules found in Fed.R.Civ.P. 807.

The Panel will admit Respondent’s Internet evidence but will afford it only minimal weight tending to suggest that some third parties may possibly be using the words “cookie bouquet” in a generic or descriptive manner.  However, that evidence, in and of itself, is not sufficient to rebut the presumption of validity and acquired distinctiveness represented by the Certificates of Registration for the two US registrations.

The Domain Name is not identical to the Trademark.  The primary difference is the word GOURMET, which appears before the words COOKIE BOUQUETS in the Domain Name.

The Domain Name is not identical to the Trademark. The primary difference is the word “gourmet”, which appears before the words “cookie bouquets” in the Domain Name. The Panel recognizes that the following circumstances may support a finding that the Domain Name is confusingly similar:

(a)            the Domain Name incorporates the entirety of the Trademark (see Oki Data Ams. Inc. v. ASD Inc., D2001-0903 (WIPO NOV. 6, 2001));

(b)            the only significant difference between the Domain Name and the Trademark is the addition of the descriptive word GOURMET (see Brown & Bigelow Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)).

The Panel also recognizes that the addition of descriptive terms to weak, descriptive marks has been found in some UDRP cases to be sufficient to avoid a finding that a domain name is confusingly similar to a complainant’s trademark. See, for example, Grand Bay Mgmt. Co. v. Allegory Invs., D2001-0874 (WIPO Sept. 21,  2000) (casinograndbay.com not confusingly similar to GRAND BAY), and Virgin Enters. Inc. v. Internet Domains, D2001-1008 (WIPO Oct. 16, 2001) (virginmail.com not confusingly similar to VIRGIN).

In fact, the Panelists are not in agreement on whether or not Complainant has met the burden for proving that the Domain Name is confusingly similar to the Trademark. However, given the Panel's findings on bad faith, discussed below, it is not necessary for to decide whether the Trademark is sufficiently weak that confusing similarity is avoided by the addition of “gourmet”.

Registration and Use in Bad Faith

Complainant bears the burden of proving that the Domain Name has been registered and is being used in bad faith.  Complainant has not tendered any evidence proving that Respondent has acted in a manner that would constitute bad faith under Policy 4(b).  Rather, Complainant points to the surrounding circumstances and asks the Panel to infer that Respondent must have been acting in bad faith.  Complainant asserts that a legal presumption of bad faith arises in circumstances where Respondent should have been aware of the Trademark.

One crucial fact emerges from the submissions and evidence tendered by both parties.  Specifically, the objective circumstances in which Respondent registered and began using the Domain Name are such that Respondent and anyone else in Respondent’s position might easily have concluded, in good faith, that Complainant does not have an enforceable monopoly of the words “cookie bouquet” and that those words could be used by anyone.

Moreover, Complainant is, in large part, directly responsible for creating one crucial aspect of these circumstances.  Complainant’s evidence shows that Complainant has entered into the Co-Existence Agreement with CBI (Cookie Bouquets, Inc.) of Columbus, Ohio.  CBI appears to be as much a direct competitor of Complainant as Respondent.  The Affidavit of Dinene Clark, who is the owner of CBI, confirms that Complainant and CBI both use nearly identical trademarks, but CBI and Complainant have established undisclosed terms and conditions that are supposed to avoid confusion between the two trademarks.  Ms. Clark’s Affidavit asserts that the two marks are not confusing with each other, but does not explain why she believes this to be the case.

For all intents and purposes, the trademark used by CBI, namely COOKIE BOUQUETS, is identical to the Trademark used by Complainant, namely COOKIE BOUQUET.  CBI and Complainant both sell cookies in association with their respective trademarks.  They both make sales through the Internet.  They both use domain names that feature the words “cookie” and “bouquet(s)”.  Under the Co-Existence Agreement, Complainant and Respondent agreed to carry on such activities in some manner that is supposed to avoid actual confusion in the marketplace.  Complainant has not provided the Panel with a copy of the Co-Existence Agreement.  However, it is difficult for the Panel to understand how Complainant and CBI can effectively avoid confusion when there is so much overlap in their respective trademarks, domain names, businesses, products and services.

Under the common law, including the laws of the United States, a distinctive trademark performs the core function of identifying the source of particular products and services.  When a trademark owner intentionally creates a situation in which there is more than one user of the same or a confusingly similar trademark for the same type of products or services, that may erode or even destroy the distinctiveness of the subject trademark.  A properly crafted and enforced license agreement will not create such problems in most common-law jurisdictions, including the United States.  However, a co-existence agreement is not the same thing as a license agreement.  In fact, a co-existence agreement can actually undermine trademark rights rather than bolster them (see California Fruit Growers Exch. v. Sunkist Baking Co., 166 F. 2d 971 (7th Cir. 1947)).

As it turns out, Respondent was in a direct business relationship with CBI around the time that it registered the Domain Name.  Respondent purchased and resold cookies made by CBI.  Even if Respondent was aware of Complainant and the Trademark, it is easy to see how it might have formed the view that the words “cookie bouquet” could be used by anyone.  If Complainant does not consider CBI’s trademark, COOKIE BOUQUETS, to be confusing with the Trademark or to infringe the Trademark, it is difficult to see why the Panel should infer or presume that Respondent must have been aware that the Domain Name would cause confusion with the Trademark and that Respondent must have been acting in bad faith when it registered and began using the Domain Name. 

Also, the Trademark lacks inherent distinctiveness.  Registration was achieved only on the basis of acquired distinctiveness (secondary meaning).  Although registration may serve as constructive notice of the mark’s validity (and acquired distinctiveness), the average person rarely appreciates the technicalities of trademark law, which is often counter-intuitive.  When a trademark lacks inherent distinctiveness then, depending on the surrounding circumstances, there may be a greater possibility of it being incorporated in a domain name in good faith.  This is not a trademark infringement case.  It is not enough that the Domain Name be confusingly similar to the Trademark.  The Policy also requires Complainant to prove bad faith.  This is an additional reason why the Panel is reluctant to infer or presume bad faith.

Taking into consideration the Co-Existence Agreement, CBI’s trademark, domain name, business, products and services, CBI’s dealings with Respondent, the Trademark’s lack of inherent distinctiveness, and the weak evidence provided by Respondent suggesting that additional third parties may be using the words “cookie bouquet” in a generic or descriptive manner, the Panel finds that the available evidence is not sufficient to support an inference or presumption that Respondent was acting in bad faith in registering and using the Domain Name.

The Panel finds that Complainant has failed to prove bad faith on the part of Respondent, and, therefore, has failed to meet its burden under Policy 4(a)(iii).

Rights or Legitimate Interests

Given the Panel’s finding on bad faith, it is not necessary for the Panel to consider whether or not Complainant has proven that Respondent lacks rights or legitimate interests.

DECISION

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

Robert A. Fashler (Panel Chair)

Robert A. Fashler, Panel Chair

Houston Putnam Lowry, Panelist

Mark V.B. Partridge, Panelist
Dated: August 16, 2004

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