WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McLane Company, Inc. v. Fred Craig
Case No. D2000-1455
1. The Parties
The Complainant in this administrative proceeding is McLane Company, Inc. whose principal place of business is 4747 McLane Parkway, Temple, TX, 76503, U.S.A.
The Respondent in this case is Fred Craig whose address is 716 West Third Street, Fulton, NY, 13069, U.S.A.
2. The Domain Name and Registrar
The domain names at issue are "mclanenortheast.com" and "mclanenortheastsucks.com" which are registered with Namesecure in Concord, CA, U.S.A.
3. Procedural History
A Complaint was received by e-mail by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 25, 2000 and by hardcopy on October 31, 2000.
On November 15, 2000 a Verification Response was received from Namesecure which served to: (1) confirm that Namesecure was in receipt of the notification of the domain names in dispute; (2) confirm that Namesecure is the registrar of the domain names; (3) confirm that Fred Craig is the current Registrant of the domain names; (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrarís WHOIS database for the Registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (5) indicate that the Uniform Domain Name Dispute Resolution Policy is applicable to the domain names in dispute; and (6) confirm that the domain names are currently active.
On November 15, 2000, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single member Panel were paid by the Complainant on time and in the required amount.
A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (email) and Respondent (post/courier, email), dated November 16, 2000. The Notification set a deadline of December 5, 2000 by which the Respondent could make a Response to the Complaint. Respondent submitted an initial Response on November 13, 2000. The Response was resubmitted with additional information on December 4, 2000.
On December 29, 2000, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel naming Roderick Thompson as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on December 29, 2000, was January 11, 2001.
4. Factual Background
Complainant provided evidence that it is the holder of U.S. Service Mark Registration No. 1,211,975 for the mark MCLANE for distribution services in the field of food and grocery items and U.S. Service Mark Registration No.2,048,887 for the mark MCLANE EXPRESS for distributorship services in the field of food and grocery items. Complainant also states that it is the owner of service mark MCLANE NORTHEAST for use in connection with distribution of food and grocery items. Complainant is a food and grocery distributorship with facilities throughout the United States, including a facility in the northeastern region of the United States.
Respondent is a former employee of Complainant who has been disputing his termination of employment since May, 1999. Respondent is the current Registrant of the domain names "mclanenortheast.com" and "mclanenortheastsucks.com" which were registered on September 25, 2000.
5. Partiesí Contentions
Complainant asserts that consumers are likely to confuse the disputed domain names as being owned and operated by Complainant to promote its services in the northeastern region of the United States. Complainant indicates that such confusion is likely in part because Respondent has included Complainantís logos and pictures of its facility as part of his web page.
Additionally, Complainant asserts that Respondent has no rights or legitimate interest in the domain names in question. Complainant claims that Respondentís purpose is tarnish Complainantís marks and thus Respondent is not making a legitimate noncommercial or fair use of the name.
Complainant contends that Respondent registered the names in bad faith to harass, ridicule, defame, and slander Complainant.
Respondent contends that although the domain names "mclanenortheast.com" and "mclanenortheastsucks.com" are similar to Complainantís trademark, parties arriving at his site would not be confused as to source or sponsorship because there is a disclaimer on the homepage indicating that the page is not the official McLane website and is not endorsed by them. Additionally, Respondent contends that no confusion is likely since the introduction to the site states that its purpose is to protest against Complainant. Respondent asserts that the use of the logos and photos is designed to clarify the particular company against which he is protesting. According to Respondent, such logos and photos are not intended to designate sponsorship by Complainant.
Respondent contends that he has not registered, and is not using, the domain names in bad faith. He disputes each element listed as possible evidence of bad faith under Paragraph 4(b) of the Policy.
Respondent claims that he is making legitimate noncommercial fair use of the domain names to protest Complainantís actions toward him.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panelist shall 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." Here, the Complainant, the Respondent, and the registrar are all domiciled in the United States. United Statesí courts have recent experience with similar disputes. The Final Report of the WIPO Internet Domain Name Process (April 30, 1999 [http://ecommerce.wipo.int/domains/ process/ eng/processhome.html]) envisaged the very situation before this Panel, stating "if the parties to the procedure were resident in one country, the domain was registered through a registrar in that country and the evidence of bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition" of what became paragraph 4(a) of the Policy. Accordingly, the Panel may look to rules and principles of law set out in decisions of the courts of the United States in determining whether the complainant has met its burden.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain names registered by the Respondent are identical or confusingly similar to a trademark in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
(iii) that the domain names have been registered and used in bad faith.
B. Application of Paragraph 4(a) to the Facts
Respondentís rights and legitimate interests in the domain names
Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrantís rights or legitimate interests in the name. One such circumstance is the legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleading divert consumers. Respondent is using the domain name "mclanenortheast.com" as a means of protesting against Complainant. Respondent has a grievance against Complainant and has chosen to publicize this grievance via a web site. Protest and commentary is the quintessential noncommercial fair use envisioned by the Policy. Protest and commentary are also considered typical fair use under U.S. law relating to domain names. When commenting on the "Anticybersquatting Consumer Protection Act", the House Judiciary Committee specifically referred to comment and criticism as lawful noncommercial fair use of a mark. Thus Respondent has raised a plausible claim that he has a legitimate interest in the domain name "mclanenortheast.com" and Complainant has not met its burden of proving an absence of such a legitimate interest. Complainantís bare allegation of tarnishment does not overcome Respondentís claim of a legitimate interest.
Respondent is also the registrant of "mclanenortheastsucks.com". Respondent has not yet used this domain name as a site for protest, however. It is not necessary for the Panel to determine whether Respondent has a legitimate interest in the domain name "mclanenortheastsucks.com" because Complainant has failed to prove that the name is identical or confusingly similar to a mark in which Complainant has rights.
Identical or Confusingly Similar to Trademark
The Rules require that the Complaint "specify" the trademarks on which the Complaint is based and "for each mark, describe the goods or services, if any, with which the mark is used." For MCLANE and MCLANE EXPRESS Complainant provided registration numbers and copies of the registrations as well as a description of the services with which the marks are used. For MCLANE NORTHEAST Complainant specified the mark and the services but did not give the service mark registration number or a copy of the registration. Complainantís failure to include a service mark registration number or a copy of the service mark registration for MCLANE NORTHEAST makes the analysis of the identity or similarity between the domain names and the mark more difficult. This is especially true because Respondent contends that Complainant does not own a trademark for MCLANE NORTHEAST.
Because Complainant has failed to prove that Respondent does not have a legitimate interest or right in the domain name "mclanenortheast.com", it is unnecessary to determine whether Complainant has carried its burden of showing that that domain name is identical or confusingly similar to a trademark in which Complainant has rights.
As to "mclanenortheastsucks.com", this Panel determines that the domain name is not identical or confusingly similar to a mark in which Complainant has rights. This is true even if the Panel assumes that Complainant holds a valid service mark in MCLANE NORTHEAST. This domain name includes the term "sucks." While often the inclusion of a generic term will not serve to distinguish a domain name from a trademark, in the case of the term "sucks," the addition of the generic term does reduce the likelihood of confusion. It is unlikely that a viewer would confuse the domain name "mclanenortheastsucks.com" with the trademark mclane northeast. Instead, it should be evident to a viewer that any site reached using "mclanenortheastsucks.com" is not sponsored or endorsed by the trademark owner. In a recent decision regarding registration of the domain name "lucentsucks.com" the judge accepted the argument that "the average consumer would not confuse lucentsucks.com with a web site sponsored by [Lucent]." See Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp 2d 528, 535 (E.D.Va., May 3, 2000).
Registration and use in bad faith
Because Complainant has failed to prove that Respondent does not have a legitimate interest or right in the domain name "mclanenortheast.com" and because Complainant has failed to prove that "mclanenortheastsucks.com" is confusingly similar Complainantís mark, it is unnecessary to determine whether Complainant has carried its burden of showing that the domain names were registered and used in bad faith.
This Panel finds that Complainant has failed to prove that Respondent does not have a legitimate interest or right in the domain name "mclanenortheast.com" and Complainant has failed to prove that "mclanenortheastsucks.com" is confusingly similar Complainantís mark. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain names "mclanenortheast.com" and "mclanenortheastsucks.com" remain with the Respondent.
Roderick M. Thompson
Dated: January 11, 2001