WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Decision Analyst, Inc. v. Doug C. Dohring

Case No. D2000-1630

 

1. The Parties

The Complainant is Decision Analyst, Inc., a corporation organized under the laws of the State of Texas, USA. Complainant is represented by J. Kevin Gray of Jenkens & Gilchrist.

The Respondent is Doug C. Dohring, the Chief Operating Officer of The Dohring Company, an entity in Glendale, California, USA. Respondent is represented by Stephanie Yost Cameron, general counsel of The Dohring Companyís subsidiary OpinionSurveys.com.

 

2. The Domain Name and Registrar

The domain name at issue is <opinionsurveys.com>. The domain name is registered with Network Solutions, Inc. ("NSI").

 

3. Procedural History

The Complainant initiated this proceeding by filing a Complaint by email with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on November 22, 2000. On November 27, 2000, the Center received a hard copy of the Complaint. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center sent Respondent notice of the commencement of this proceeding on December 1, 2000. Respondent timely submitted a response by email on December 21, 2000; the Center received a hard copy of the response on December 22, 2000.

On January 22, 2000, after clearing for potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter.

 

4. Factual Background

Complainant and Respondent each are involved in international marketing research and consulting. On December 6, 1997, Complainant registered the domain names <opinionsurvey.com> and <opinion-survey.com>. On October 7, 1998 Respondent registered the domain name <opinionsurveys.com> (the "Domain Name").

 

5. Partiesí Allegations

Complainant avers that it has invested substantial time and money advertising and promoting the name "Opinion Survey" as an identifiable source for its services. Through these efforts, Complainant claims that the term "Opinion Survey" has acquired common law trademark status due to the substantial goodwill and reputation it enjoys in (the "Claimed Mark").

Complainant asserts that the Domain Name is confusingly similar to the Claimed Mark because both parties offer the same goods and services and the Domain Name is merely a plural of the Claimed Mark.

Complainant does not make any allegation that Respondent has no legitimate interest in the Domain Name, but makes a number of arguments to support its contention that Respondent registered and used the Domain Name in bad faith. First, Complainant claims that Respondent was "on notice" and should have been aware of Complainantís registration of <opinionsurvey.com> and <opinion-survey.com> because they were registered almost a year prior to the registration of the Domain Name. Complainant suggests that the Respondent would have checked the singular version of the Domain Name prior to registering the Domain Name and should therefore have been aware of Complainantís prior registration of <opinionsurvey.com> and <opinion-survey.com>. Second, Complainant charges that Respondent registered the Domain Name in an attempt to attract users and create a likelihood of confusion with the Claimed Mark. Finally, Complainant argues that Respondent acted in bad faith by ignoring a "duty" to determine if the Domain Name infringed upon or violated the rights of a third-party.

Respondent, in contrast, argues that "Opinion Survey" is a generic term for both partiesí activities, and therefore that Complainant lacks any trademark rights in that term. Moreover, even were the Claimed Mark characterized as descriptive, Respondent argues that the Claimed Mark lacks secondary meaning, and thus is not a protectible trademark.

In support of its argument that the Claimed Mark is generic, Respondent notes that, in February 2000, it filed an application with the United States Patent and Trademark Office (the "Trademark Office") to register the mark OPINIONSURVEYS.COM. The Trademark Office refused registration of that mark on the ground that "opinion surveys" was either generic for, or, at the minimum, merely descriptive of, Respondentís services.

In support of its argument that, in any event, the Claimed Mark has not acquired distinctiveness, Respondent alleges that Complainant submitted no evidence of its use of the Claimed Mark and, in fact, that Complainant does not actually use the term as a trademark. Respondent alleges that Complainant markets its services under the trade name "American Consumer Opinion" and only this term - not the Claimed Mark - is used as a trademark on Complainantís websites, letterhead and checks. Respondent also alleges that the websites located at <opinionsurvey.com> and <opinion-survey.com> do not provide any services but merely refer users to Complainantís main website at "www.acop.com".

Respondent claims that it has rights and legitimate interests in the Domain Name because it offered bona fide services in connection with the domain name prior to any notice of the dispute. Respondent alleges that, when it launched its own website in 1999, there were no websites located at the domain names <opinionsurvey.com> and <opinion-survey.com>. Since 1999, Respondent claims that it has conducted opinion surveys on the <opinionsurveys.com> website. According to Respondent, over two million people are currently registered to participate in opinion surveys conducted at the <opinionsurveys.com> website.

Respondent avers that it has not registered or used the Domain Name in bad faith. In support of its contention, Respondent argues that the mere fact that Complainant owns registrations of <opinionsurvey.com> and <opinion-survey.com> is not dispositive of Respondentís of bad faith. Respondent also argues that the Complainant has submitted no evidence to support its claims of marketplace confusion. Finally, Respondent disagrees with Complainantís contention that it had a "duty" prior to registering the Domain Name to determine if it infringed on the rights of any third-parties and, in any event, argues that the Domain Name is not infringing in light of the genericness of the Claimed Mark and Complainantís non-use.

 

6. Discussion

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") have been satisfied:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the Domain Name; and,

(iii) the domain name has been registered and used in bad faith.

Complainant has failed to establish the first element of the Policy because Complainant has not proven rights in the trademark or service mark OPINION SURVEY. See Tough Traveler, Ltd. v. Kelty Pack, Inc., Case No. D2000-0783 (WIPO Sept. 28, 2000) (rejecting complaint where complainant failed to establish common law rights in claimed KID CARRIER trademark).

The phrase "opinion survey" is generic for the services offered by both of the parties: opinion surveys. "Opinion" is a noun used to refer to "a view, judgment or appraisal formed in the mind about a particular matter." Merriam-Websterís Collegiate Dictionary 815 (10th ed. 1997). The term "survey" similarly is a noun meaning "a broad treatment of a subject" or "poll." Id. at 1187. Taken together, "opinion survey" literally means a survey reporting on participantsí opinion, and has been used that way in the popular press for many years. See, e.g., "Professional Services," The Washington Post, June 20, 1983 ("Richard A. Nugent has been named vice president of Potomec Survey Research Inc., a Bethesda opinion survey and market research firm.") (this article, along with others, was cited by the Trademark Office in its refusal to register OPINIONSURVEYS.COM on the ground that it was generic). The Panel thus concludes that "opinion survey" is generic for the research and marketing services and reports that both parties offer. Shopping.com v. Internet Action Consulting, Case No. D2000-0439 (WIPO July 28, 2000) (UDRP complaint over domain name <www-shopping.com> denied because term "shopping" is generic for Internet-based shopping).

This conclusion is reinforced by the Trademark Officeís rejection of Respondentís application for the mark OPINIONSURVEYS.COM. Pet Warehouse v. Pets.com, Inc., Case No. D2000-0105 (WIPO April 13, 2000) (Trademark Officeís refusal to register mark on ground of genericness is powerful evidence that Complainant lacks trademark rights in claimed PETWAREHOUSE mark); cf. eAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047 (WIPO March 24, 2000) (even if mark is highly descriptive and weak, trademark registration is prima facie evidence of validity creating a rebuttable presumption that trademark is distinctive).

Moreover, even if "opinion survey" were characterized as descriptive, rather than generic, Complainant has failed to offer any evidence whatsoever to prove that the mark has acquired distinctiveness. Indeed, the Complaint is notable for its complete lack of evidence of use of the Claimed Mark. The only documentary evidence it did submit (beyond the conclusory allegations of the Complaint) was proof that it registered the domain names <opinionsurvey.com> and <opinion-survey.com>, but it is well established that mere domain name registration alone does not constitute "use" that creates U.S. common law trademark rights. Brookfield Comm., Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (registration of the domain name <moviebuff.com> did not constitute "use" of the term for purposes of acquiring trademark priority); eCash Technologies, Inc. v. Guagliardo, Civ. No. 00-03292ABC, 2000 WL 1868104 (C.D. Cal. Oct. 30, 2000) (registration of a domain name by itself does not give the registrant any rights in a trademark that is the same as the domain name). In contrast, the Respondent submitted evidence showing that Complainant does not use the Claimed Mark as a trademark on any of its websites, nor on its letterhead and checks.

In light of this finding, it is unnecessary for the Panel to consider the second and third elements of the Policy. Nevertheless, the Panel cannot help but note that the Complaint fails to include any allegation whatsoever that Respondent lacks a legitimate interest in the domain name, and its allegations of bad faith are so conclusory that they appear to lack any merit. The Complaint thus borders on Reverse Domain Name Hijacking, but given that the Respondent did not request such a finding, the Panel will refrain from reaching that conclusion sua sponte.

 

7. Decision

Complainant has failed to establish trademark rights in the designation "opinion survey." Accordingly, Complainant has failed to satisfy Paragraph 4(a)(i) of the Policy. The Panel therefore denies Complainantís request that the domain name <opinionsurveys.com> be transferred.

 


 

David H. Bernstein
Sole Panelist

Dated: February 6, 2001