WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tough Traveler, Ltd. v. Kelty Pack, Inc., Mike Scherer, and Inkling Pen Co.

Case No. D2000-0783

 

1. The Parties

The Complainant is Tough Traveler Ltd., a United States corporation located in Schenectady, New York.

The Respondents are Kelty Pack, Inc. a United States corporation located in Boulder, Colorado, Mike Scherer, an employee of Kelty Pack, and Inkling Pen Co.

 

2. The Domain Name and Registrar

The domain name at issue is "kidcarrier.com". The domain name is registered with Register.com.

 

3. Procedural Background

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by email on July 13, 2000, and by hard copy on July 17, 2000. On July 26, 2000, the Center issued a notice of deficiency because the Complainant had not complied with the Centerís Supplemental Rule 3(c); Complainant subsequently remedied that deficiency. On August 14, 2000, the Center formally commenced this proceeding and notified Respondent that its Response would be due by September 2, 2000. Respondent timely filed its Response, which was received by the Center by email on September 2, 2000, and in hard copy on September 5, 2000. Neither party requested a three-member Panel.

On September 22, 2000, after clearing for potential conflicts, the Center appointed David H. Bernstein as the Panelist.

 

4. Jurisdictional Background

Register.com has confirmed that the registrant of the domain name is Mike Scherer of the Inkling Pen Company; the WHOIS data shows that Mr. Scherer provided an email address of "mscherer@kelty.com". Nevertheless, Kelty Pack (which indicated that its email address also is "mscherer@kelty") has filed the Response in this matter.

WIPO, as an accredited provider under the ICANN Rules, does not have jurisdiction over a party unless the party has agreed to be subject to these proceedings. Although registrants of domain names in the ".com" generic top-level domain ("gTLD") have agreed, through their registration agreements, to submit to the jurisdiction of these ICANN proceedings (thus subjecting Mr. Scherer and Inkling Pen Company to the jurisdiction of this Panel), the Panel cannot reach parties who have not so agreed. Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, Case No. D2000-0138 (WIPO, April 19, 2000).

Here, Kelty Pack has responded and has participated in this proceeding as a respondent. Accordingly, it will be deemed to have consented to the jurisdiction of this Panel. See Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, Case No. D2000-0166 (WIPO, June 1, 2000). Because both the Complaint and Response focus on Kelty Pack as the beneficial holder of the domain name at issue, the balance of this Decision will treat Kelty Pack as the sole Respondent.

 

5. Factual Background

Based on the Complaint and the Response, the following facts are undisputed: Complainant is a manufacturer of backpacks, luggage, child carriers, and other bag products. Among its line of child carriers is a model it has designated the "Kid Carrier," which it introduced in 1985 and continually has sold since then. Respondent is a reseller of camping equipment, including backpacks and child carriers. The Respondent registered the domain name "kidcarrier.com" on January 13, 2000. The other relevant facts are contested; the partiesí allegations are set forth in the next section.

 

6. Partiesí Allegations

Complainant avers that it has invested substantial sums advertising the name "Kid Carrier" as a specific model of child carrier, and extensively has used the term "Kid Carrier" in promotional material, catalogues, and sales material. Complainant states that it uses the designation "Kid Carrier" with the symbol "TM," denoting its claim to common-law trademark rights. It argues that users, buyers, and distributors associate the term "Kid Carrier" with Complainant because Complainant has used the term for 15 years and has invested in advertising its goods marked with that phrase.

Complainant argues that the phrase "Kid Carrier" is inherently distinctive and thus entitled to protection. It states that the generic terms for the product at issue are "child carriers," "baby carriers," "back packs," and "infant carriers," while "Kid Carrier" is used by the public, the industry, and the media to refer specifically to Complainantís product.

In addition, Complainant alleges that Respondent has been guilty of various acts of unfair competition against Complainant in the past. According to Complainant, Respondentís use of "kidcarrier.com" allows Respondent to divert business that would otherwise go to Complainant. Complainant alleges that Respondentís child carriers have been subject to recall, and that Respondentís use of "kidcarrier.com" will tarnish Complainantís products.

Complainant further alleges that Respondent has no rights or legitimate interests in the domain name "kidcarrier.com" because Respondent has not sold products using that name and is not generally associated with that name.

Finally, Complainant alleges that Respondent registered and used the domain name in bad faith because Respondent knew of Complainantís rights to the name; because the registration prevents Complainant from operating its business under the name by which it is generally known; and because Respondent intends to operate the site for profit and to confuse Complainantís customers.

Respondent, in contrast, argues that "kid carrier" is a generic term for both partiesí products, and thus denies that the term is inherently distinctive or has acquired distinctiveness. It submits that consumers and the industry use the phrase "kid carrier" to describe a certain class of goods, and attaches sample news articles, advertisements, and other exhibits using "kid carrier" to describe infant carriers generally. Respondent also submits the dictionary definition of "kid" as further evidence that "kid carrier" is generic.

Respondent denies that Complainant has followed a consistent policy of marking its "Kid Carrier" designation with the "TM" symbol, and submits exhibits in which "Kid Carrier" is advertised without "TM" beside it, including a recent printout from Complainantís website. Respondent notes that Complainant possesses various federal registrations for other marks and uses "TM" on other words on its website, and suggests that Complainantís failure to do so for "Kid Carrier" shows that Complainant understands that "Kid Carrier" cannot indicate source.

In the alternative, Respondent argues that, even if "Kid Carrier" is descriptive rather than generic, Complainant has failed to demonstrate secondary meaning for "Kid Carrier." It argues that there is no direct consumer testimony or consumer survey evidence as to secondary meaning. Furthermore, Respondent alleges that the use of "kid carrier" as a generic term dates back at least to 1986, so that Complainant has not established a significant history of exclusive use of the term. Respondent argues that Complainant has failed to quantify its advertising expenses on "Kid Carrier," and has not submitted evidence of how many consumers were exposed to the ads or bought the product.

For similar reasons, Respondent alleges that it has a legitimate interest in the domain name, as a generic term for a class of products that Respondent sells, even if it has not used "kid carrier" in the past.

Respondent argues that it has not registered or used the domain name in bad faith. It claims that it did not register the domain name for the purpose of selling or otherwise transferring it to Complainant, but instead plans to use the domain to link to a site advertising Respondentís products. Respondent alleges that it was unaware that Complainant claimed trademark rights in the name when it registered the name, and did not intend to disrupt Complainantís business or cause confusion. Respondent claims that Complainant, which has registered various similar names in the past, should have registered "kidcarrier.com" earlier if it considered the name important.

Finally, Respondent argues that Complainantís allegations of past bad faith are incorrect, and that it has voluntarily recalled carriers sold during one nine month period but has not had any significant safety problems. Respondent further alleges that it did not intentionally copy Complainantís mark, but rather proceeded on the reasonable belief that the term was generic, and that it registered "kidcarrier.com" at the same time as "childcarrier.com", demonstrating its good faith and intentions.

 

7. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the ICANN Policy is to prove:

(a) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name has been registered and used in bad faith.

In this case, the Panel need only inquire into whether the Complainant has established rights to the trademark "Kid Carrier." Complainant lacks a trademark registration for this mark. Without a registration, there is no presumption of validity to Complainantís claim of exclusive rights in the mark, and it must establish common-law rights to the term to prevail. It has not done so.

Based on a preponderance of the evidence submitted in this proceeding, the Panel finds that "Kid Carrier" is a generic term for the class of products at issue -- child-carrying backpacks. Although Complainant asserts that the generic phrase for this class of products is "child carrier," it is well established that there may be more than one generic name for a commonly encountered product. See, e.g., King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577, 580 (2nd Cir. 1963); Clairol, Inc. v. Roux Distributing Co., 280 F.2d 863, 865 (CCPA 1960). Indeed, Complainant admits as much when it suggests several other generic names for the product, including "baby carrier" and "infant carrier." Given that those terms are all interchangeable generic terms for child carriers, "kid carrier" also can be a generic term for these goods given that "kid" is a common synonym for "child."

Even more persuasive is the evidence submitted by the Respondent showing that, in both traditional media reports and on Internet websites, the term "kid carrier" regularly is used to refer to child carriers in general, and not to Complainantís brand or model of child carriers. For example, a 1986 article from Sunset, published just a year after Complainantís first use of "Kid Carrier" as a model designation, talks about "heavy-duty kid carriers" sold by both Complainant and Respondent (and two other manufacturers). More recently, a 2000 review on the "GearReview" website entitled "Kid Carrier Comparison" discusses child carriers from both parties (and a third party as well). The Panel found similar, voluminous results in its independent Nexis and Internet searches.

It is important to note that the ICANN Rules contemplate only limited evidentiary presentations by the parties. As such, UDRP proceedings are inappropriate fora for conclusively deciding serious questions as to the ownership and proper classification of unregistered marks. Accordingly, this decision should not be understood as a final determination that "kid carrier" is generic, nor does it prevent Complainant from attempting to prove rights in the phrase "kid carrier," whether before the Patent and Trademark Office or in court. While the Panel has its doubts about that possibility, its decision is limited to finding that, on this record, Complainant has not proved that it has rights to the term "Kid Carrier" because it has not shown that the public associates the words with Complainant as the source of a particular good.

 

8. Decision

For the foregoing reasons, the Panel decides that Complainant has failed to establish rights in the trademark "Kid Carrier" for the purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel therefore denies the Complainantís request that the domain name "kidcarrier.com" be transferred from Respondent to Complainant.

 


 

David H. Bernstein
Sole Panelist

Dated: September 28, 2000


Footnotes:

1. Because both parties are United States residents, it is appropriate to consider United States legal principals in deciding this matter. Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO, June 6, 2000), at n.2.

2. It is well established that Panels may conduct and rely on independent searches of publicly available information. Bass Hotels & Resorts, Inc. v. Mike Rodgerall, Case No. D2000-0568 (WIPO, August 7, 2000), at n.1.