Dairyking Australia Pty Ltd. v.
TheHoldingCompany.com
Claim Number: FA0310000205707
PARTIES
Complainant
is Dairyking Australia Pty Ltd, 119
Albion St., Kyabram, Vic 3620, Australia (“Complainant”). Respondent is TheHoldingcompany.com, P.O. Box 146, Road Town, Tortola, Virgin
Islands (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <dairyking.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned Daniel B. Banks, Jr., 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 27, 2003; the Forum received a hard copy of the
Complaint on October 27, 2003.
On
October 27, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <dairyking.com>
is registered with Go Daddy Software, Inc. and that the 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
November 4, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 24, 2003 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@dairyking.com by e-mail.
On
November 24, 2003, Respondent requested additional time to respond to the
Complaint and submitted information in support of this request. The National Arbitration Forum found that
extenuating circumstances existed warranting an extension and granted
Respondent an extension until 12/5/2003 to submit the response.
A
timely Response was received and determined to be complete on December 5, 2003.
An
Additional Submission was received from Complainant after the deadline for
submissions, without the required fee, and without being properly served on the
Respondent.
On December 18, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Daniel B. Banks,
Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant:
Dairyking, is a registered trademark, in
both Australia (no.650803) and New Zealand (no.249803), of Dairyking Australia
Pty Ltd as of and from 18 January 1995. Complainant has continually operated
under the Dairyking mark since the aforementioned date, as a
manufacturer of dairy equipment, including milking machines, scraper systems,
feeding systems and computer management solutions. Dairyking maintains a
continual presence on the web at <dairyking.com.au>, which is an integral
aspect of providing customer service and support.
Dairyking, being a registered
trademark of Dairyking Australia, is identical to the domain name <dairyking.com>
currently registered to TheHoldingCompany.com. While many similar trademarks
and names can co-exist within the terrestrial commercial world, the on-line
world is considerably different. Domain names are the means by which navigation
is achieved to a particular Internet website. The closer the domain name is to
the company's brand name/trade mark, the easier it is for potential customers
to locate the site. As a result customers may mistakenly access the <dairyking.com>
website which may prove extremely damaging to Dairyking Australia Ltd., due to
the offensive content of the website in question.
As the domain name, <dairyking.com>,
merely redirects persons to an exceedingly sexually explicit website, it is our
belief that the Respondent does not have any legitimate interests in respect of
the domain name. Also as DAIRYKING is a registered trademark in Australia, the
Respondent fails to possess extensive rights to the domain name, as
registration of a domain name does not in itself give the Respondent any proprietary
rights.
We,
the Complainant, believe that the domain name <dairyking.com> has
been registered and is being used in bad faith as we surmise it is the
Respondent’s intention to divert to a site that harms the trademark owner’s
goodwill, with the intent to tarnish by creating likelihood of confusion as to
source, sponsorship, affiliation, or endorsement of the site.
B.
Respondent
The
domain name was first registered by Respondent in good faith on December 18,
1998, as a very generic name with a multitude of applications and website
development opportunities.
Complainant
asserts it operates under the name Dairyking Australia Pty Ltd., and its
website is located at <dairyking.com.au>. With regard to the identity or
confusingly similarity between the Complainant’s trademark and the conflicting
domain name, Complainant does not prove its point, since the words contained in
the domain name <dairyking.com> are comprised of generic
terms. Respondent has been using and
building the <dairyking.com> website for several years.
Because <dairyking.com> is composed of a common descriptive and
generic term, Respondent was vested with irrevocable rights and legitimate
interest in the disputed domain at the point of registration; therefore, as in
previous ICANN decisions, when a mark is generic, the Complainant does not have
an exclusive global right in and to same in the Internet.
Respondent
has legitimate rights and interest in the domain name. First, Respondent has been in business under
that name for five years.
Second,
Respondent is the owner of an original oil on canvas painting titled
"Dairy King". (A photograph
of the painting is attached in Annex A).
This painting was created in 1988 (10 years before the registration of
domain <dairyking.com>, and Respondent has owned it since then.
Respondent uses the <dairyking.com> domain name to host a website
which displays the painting, makes it available for download as a screensaver,
allows people to recreate the work online (a sort of work-in-progress) and offers
them the possibility of printing high-quality renderings of the painting at no
cost. The original painting can also be
purchased directly from the website.
Third,
Respondent has a legitimate interest in the <dairyking.com> domain
name because the <dairyking.com> domain name was registered on
December 16, 1998 while Complainant’s <dairyking.com.au> domain name was
registered on November 20, 2002 (about 4 years later). In the intervening
years, Complainant did nothing.
Complainant
has not shown that Respondent registered and used the <dairyking.com>
domain name in bad faith, nor can it.
Respondent did not know of Complainant’s alleged rights in the Dairyking
mark when it registered the <dairyking.com> domain name because
the domain name is comprised of generic terms and also because the marks exist
in geographic territories very distant from Registrant's.
Because <dairyking.com> is
composed of a common descriptive and generic term, Respondent was vested with
irrevocable rights and legitimate interest in the disputed domain at the point
of registration; therefore, as in previous ICANN decisions, when a mark is
generic, the Complainant does not have an exclusive global right in and to same
in the Internet.
Respondent registered the domain name <dairyking.com>
unaware of Complainant or of any other entity using dairyking or any mark
similar thereto at the time of its domain name registration. Therefore, there can be no findings of bad
faith registration and use here.
The
Respondent registered the subject domain name for the express purpose of
hosting the "Dairy King" Painting and for no other purpose. The
Complainant was well aware of the domain name's existence at the time it was
registered and did not object to it at that time. The Respondent has never
offered to sell the domain name to the Complainant or anybody else. There is no
commercial gain to the Respondent through use of the domain name. The website
generates no income for the Respondent and Respondent pays a fee to have the
website hosted.
Respondent
did not register or acquire the domain name primarily of the purpose of
selling, renting, or otherwise transferring the domain name registration to the
Complainant, since Respondent was unaware of the existence of Complainant at
the time or registration and since Complainant does not have rights to the mark
<dairyking.com> in the Respondent's geographic territory.
Respondent
did not register the descriptive <dairyking.com> domain name in an
attempt to secure valuable consideration from Complainant in excess of its
out-of-pocket costs directly related to the domain name. Respondent notes that it never initiated,
received or made contact with Complainant and offer to sell, rent, trade or
otherwise transfer the domain name registration to the Complainant or to a
competitor of the Complainant. Respondent did not attempt to sell its domain
name registration to Complainant, and there is no evidence supporting the
proposition Respondent registered the domain name with any bad faith intent.
Respondent
did not register the domain name in order to prevent the owner of the trademark
or service mark from reflecting the mark in a corresponding domain name.
As
noted from comparison of Respondent's activities (described above) and
Complainant's business described in the Complaint, Respondent and Complainant
are not competitors.
Respondent
utilizes the domain name is much different from the types of products for which
Complainant has acquired trademark rights.
Furthermore, as stated previously, Respondent was not aware of
Complainant's existence at the time it registered the domain name. Thus, Respondent could not have registered the mark to
disrupt Complainant's business.
Respondent registered the subject domain name upon
seeing it was available. The Complainant had an equal opportunity to register
the subject domain name.
In
addition, how can the Respondent be preventing the Complainant from identifying
his mark since Complainant is already the registrant of
<dairyking.com.au>? If the Respondent were to intentionally prevent
Complainant from identifying his mark, it would have registered all available
extensions of Complainant’s name.
Complainant
has known the <dairyking.com> page was hosted at the website to
which the subject domain name resolves, yet the issue of the subject domain
name was never raised until October 2003. The claim is barred by laches for the
failure of Complainant to raise it until more than five years had passed since
the registration of the disputed domain name.
C.
Additional Submissions
Complainant’s
Additional submission was received after the deadline for submissions, without
the required fee, and without being properly served on the Respondent. It was not considered.
FINDINGS
1 – The disputed domain name is identical
to Complainant’s mark.
2 – The Respondent has rights and
legitimate interests in respect of the domain name.
3 – The disputed domain name was not
registered in bad faith.
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.
Although the disputed domain name is
identical to the Complainant’s mark, it is not necessary to address this issue
in light of the findings of rights and legitimate interest in the Respondent
and no registration and use in bad faith.
Respondent has
rights and legitimate interests in the disputed domain name because it has been
doing business as “dairyking” for five years.
See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000)
(finding that Respondent has rights and a legitimate interest in the domain
name since the domain name reflects Respondent’s company name); see also
World Publ’ns, Inc. v. World Pen, Seattle Pen, Inc., and Seattle Pen, Inc.
d/b/a World Pen, D2000-0736 (WIPO Sept. 14, 2000) (finding that Respondent
registered the trade name "WORLD PEN" in July 1996 and had been
conducting business under that name since that date, thus, it had rights or
legitimate interests in the disputed domain name).
Additionally,
Respondent has used the domain name for five years to host a website that
displays an original canvas oil painting, which it owns, and allows Internet
users the opportunity to download it as a screensaver, print high-quality
renderings of the painting at no cost, or even purchase the painting directly
from the website. Therefore, the
Panel finds that Respondent uses the
name in connection with a bona fide offering of goods or services, pursuant to
Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use, pursuant to Policy
¶¶ 4(c)(iii). See eg. Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2,
2003) (finding that Respondents operation of a bona fide business of online
prop rentals for over two years was evidence that Respondent had rights or
legitimate interests in the disputed domain names); 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,” evidencing a bona
fide offering of goods or services connected with the disputed domain name.
Complainant
has failed to offer any evidence to support a finding of bad faith registration
and use by the Respondent. The
Complaint makes the assertion that
“We…believe that the domain name …has been registered and is being used
in bad faith as we surmise it is the Respondent’s intention to divert to a site
that harms the trademark owner’s, ie. Diaryking Australia, goodwill – with the
intent to tarnish by creating likelihood of confusion as to source,
sponsorship, affiliation, or endorsement of the site.”
No
evidence is offered to support this assertion and surmise. Moreover, Respondent registered the <dairyking.com>
domain name on December 16, 1998 while Complainant’s <dairyking.com.au>
domain name was registered on November 20, 2002. In the intervening years, Complainant did nothing. Since registration, Respondent has not
offered to sell, rent, trade or otherwise transfer the domain name registration
to Complainant or anyone else for any price.
Additionally,
Respondent refutes Complainant’s assertions that it has registered and uses the
domain name in bad faith because the name is comprised of a combination of a
descriptive and generic term, and notice of Complainant’s mark was unreasonable
and impractical because Complainant uses the mark in a distant geographical
region. See Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284
(eResolution Sept. 9, 2000) (finding no bad faith where Respondent was using
the descriptive domain name <thelowestfare.com> to lead consumers to a
source of lowest fares in good faith); see also Canned Foods Inc. v. Ult.
Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where
the domain name is a generic term, it is difficult to conclude that there was a
deliberate attempt to confuse on behalf of Respondent, and stating that “[i]t
is precisely because generic words are incapable of distinguishing one provider
from another that trademark protection is denied them”); see also WPP
Group PLC v. WPP, AF-0530
(eResolution Jan. 21, 2000) (finding that
"first-come, first-served" shall apply when both parties own
identical trademarks in different countries, and the disputed domain names
involve the identical marks combined with generic geographical terms).
In conclusion, the undersigned finds that
Complainant has failed to provide any documentation, printouts, or other
evidence to substantiate its claim of bad faith registration and use. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum
Feb. 19, 2001) (finding that Respondent successfully rebutted Complainant’s
averments that it registered and used the domain name at issue in bad faith and
that Complainant produced no credible evidence of bad faith on the part of
Respondent); see also 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 Loris Azzaro BV, SARL v. Asterix
& De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and
indignation by Complainant that Respondents have registered and are using the
Domain Name in bad faith are insufficient to warrant the making of such a
finding in the absence of conclusive evidence”).
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that the relief requested by Complainant shall be DENIED.
Daniel B. Banks, Jr., Panelist
Dated: December 29, 2003
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