WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Rival Company v. DVO Enterprises
Case No. D2002-0265
1. The Parties
Complainant is The Rival Company, a Delaware corporation having its principal place of business in Milford, Massachusetts, United States of America.
Respondent is DVO Enterprises, apparently located in Alpine, Utah, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <crockpotrecipes.net>, (the "Domain Name").
The registrar is Tucows. The registrarís address is 96 Mowat Avenue Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, approved on October 24, 1999 ("the Policy"), and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, approved on October 24, 1999 ("the Rules").
The Complaint was submitted on March 19, 2002. Respondent submitted an informal email response on April 18, 2002.
The WIPO Arbitration and Mediation Center appointed Frederick Abbott, R. Eric Gaum and Mark V.B. Partridge (presiding) as Panelists on June 12, 2002.
4. Factual Background
Complainant is a Delaware corporation with its principal place of business in Milford, Massachusetts. Complainant owns exclusive rights for its trademark, CROCK-POT, for use in connection with electric casseroles and slow cookers and holds two federal registrations, dated February 8, 1972, and February 14, 1978, for its mark. The registrations claim first use of the mark in commerce on or about November 5, 1970, and February 15, 1971. Complainant has used the mark in commerce in connection with its products for over 30 years and has spent significant time and resources promoting its mark and building goodwill and consumer recognition.
Additionally, Complainant has owned and operated a web site at http://www.crock-pot.com since March, 1998. Complainant provides recipes on its web site. Although Complainant claims to have provided recipes since 1979, it is unclear as to how long these recipes have been available on Complainantís web site.
Respondent is a software company based out of Alpine, Utah. Respondent registered the Domain Name <crockpotrecipes.net> on February 6, 2001. Shortly thereafter, Respondent began selling the computer software "Cookiní Fix and Forget" on the http://www.crockpotrecipes.net web site. The software includes 369 recipes for use with slow cookers and electric casseroles.
On June 1, 2001, Complainant sent a letter of objection demanding transfer of the Domain Name. Respondent replied on July 20, 2001, proposing a business deal in which Complainant would bundle Respondent's recipe CD with its cookers at a cost of $1 per unit and stating: "I am willing to concede to your demands in exchange for a serious consideration of my proposal."
5. Partiesí Contentions
Complainant contends that the Domain Name <crockpotrecipes.net> is confusingly similar to Complainantís registered mark CROCK-POT and Complainantís trademark and Internet Domain Name <crock-pot.com>. Complainant also asserts that Respondent has no rights or legitimate interests in the Domain Name because Respondent does not own a trademark registration for the mark and had no common law use of the mark prior to Complainantís adoption and use of the mark and Domain Name.
Complainant also contends that Respondent has registered and used the <crockpotrecipes.net> domain name in bad faith because Respondent intentionally attempted to attract, for commercial gain, Internet users to the web site http://www.crockpotrecipes.net by creating a likelihood of confusion with Complainantís mark and Domain Name as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site. Complainant also asserts as bad faith Respondentís attempt to leverage its registration of the <crockpotrecipes.net> Domain Name into negotiations with Complainant regarding the sale of Respondentís computer software.
Respondent claims that "crockpot" is a common place word and that its use of the Domain Name does not harm Complainant's business in any way.
6. Discussion and Findings
A. Confusing Similarity
The Domain Name is confusingly similar to a mark in which Complainant has rights. Complainant has shown rights in the mark CROCK-POT through use and registration. The addition of "recipes" is not sufficient to avoid confusion. In fact, the use of "recipes" only adds confusion, as the word is an apt descriptive term for Complainant's product. "The addition of generic terms that describe Complainant's business to Complainant's mark does not create a distinct mark capable of overcoming a claim of confusing similarity." See Kraft Pizza Company and Kraft Foods Holdings, Inc. v. Stealth Commerce a/k/a Telmex Management Services a/k/a Lost In Space, SA a/k/a Drevil. NAF Case No. FA 00113289, (June 17, 2002) (finding that Respondent's Domain Name <kraftpizzacompany.com> is confusingly similar to complainant's KRAFT mark). A consumer encountering the Domain Name <crockpotrecipes.net> web site is likely to believe that it was sponsored or owned by Complainant.
B. No Rights or Legitimate Interests
Respondent is not authorized or licensed to use Complainantís mark as a Domain Name. Respondent as an individual or business has never been known by the Domain Name. Additionally, Respondent is not making a legitimate noncommercial use of the Domain Name; Respondent is making a commercial use, offering goods or services on the corresponding web site.
Respondent suggests that it is making fair descriptive use of Complainant's mark to describe "a device that cooks food slowly over a low heat." Fair use of another's trademark is permitted under federal law if "the use of the name . . . charged to be an infringement is a use, otherwise than as a mark, of . . . a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party." 15 USC 1115(b)(4).
Here, the record does not show that "crockpot" is commonly recognized as descriptive term. Instead, the long use and registration of CROCKPOT as a trademark is evidence that relevant Internet users will recognize the Domain Name as a reference to Complainant's trademark.
Under appropriate circumstances, non-trademark owners are allowed to refer to another's trademark as a "nominative" fair use for the purpose of comparison, criticism, point of reference, or the like. See New Kids on the Block v. America Pub., 971 F.2d 302 (9th Cir. 1992). (finding that the two defendant newspapers made fair use of the name of the plaintiff pop music group in promoting and conducting reader polls about the group's members, with readers paying for a 900 number phone call to register their votes.) According to that decision, the requirements for nominative fair use are: "First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder."
Application of this principle in the domain name context can be seen in People for the Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359, 369 (4th Cir. 2001) (affirming summary judgment against use of domain name for parody site). The plaintiff was the owner of the mark PETA and the defendant operated a parody site at the domain name <peta.org>. The Court concluded that the use of the domain violated the anti-cybersquatting provisions of the Lanham Act. Although it was unlikely that persons would be confused when viewing the content of the parody site, the Court found that confusion was likely among persons using the Internet who were trying to locate plaintiff. The Court also concluded that the defendant did not have a right to use the Plaintiff's trademark as a domain name to express its message, and could easily provide the same content at a different domain name address. In contrast, where the plaintiff's mark is not used as the domain name, but only in the content of a site, the courts have sometimes found the reference to be permitted use. See Bally Total Fitness Holding Corp v. Faber, 29 F.Supp. 2d 1161 (C.D.Cal. 1998)(permitting use of phrase BALLY SUCKS in content of critical, non-commercial web page).
Applying those principles here, although Respondent's use of CROCKPOT in web page content itself might be nominative fair use, the use of the Domain Name involves a greater appropriation of Complainant's mark than is reasonably necessary as a fair reference to Complainant. Moreover, Internet users are likely to believe incorrectly that Respondent's use is sponsored, authorized or otherwise originates with Complainant, especially since Complainant has a long history of offering recipes to consumers for the CROCKPOT cooker. Thus, based on the record here, Respondent's use is not "fair use" permitted by the Policy or federal law.
Nor is Respondent making a bona fide use. Although use of the Domain Name in connection with the sale of goods or services prior to notice of Complainant's objections is apparent, the inquiry must go further since not all such use qualifies as bona fide use under paragraph 4(c)(i) of the Policy. The Planetary Society v. Salvador Rosillo Domainsforlife.com, WIPO Case No. D2001-1228 (2001). A deliberately infringing use, for example, should not be considered bona fide use. "To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." Ciccone v. Parisi, WIPO Case No. D2000-0847 (2000).
Here, it appears that Respondent intended to divert Internet users to its site based on confusion with Complainant's mark. Otherwise, Respondent could have used a variety of domain names that did not appropriate Complainant's trademark and instead aptly described Respondent's business (eg., <slowcookerrecipes.com>, or the like). Thus, Respondent's use of <crockpotrecipes.net> did not constitute a bona fide use in connection with the offering of goods and services under the Policy.
Accordingly, Complainant has shown that respondent lacks any rights or legitimate interests in the Domain Name.
C. Bad Faith Registration and Use
The Policy includes a non-exclusive list of circumstances that may demonstrate bad faith.
Here, it appears more likely than not that the Domain Name was registered and used by Respondent in a deliberate attempt to divert Internet users to Respondent's web site for commercial gain with knowledge that there would be confusion with Complainant's mark. Such conduct is recognized as bad faith registration and use under the Policy. The fact that Respondent may also have intended to attract some persons who would not be confused should not be sufficient to avoid a finding of bad faith. Given the long use and registration of the CROCKPOT mark, the fact that Complainant offers recipes to consumers, and the commercial nature of Respondent's activity, Respondent certainly knew that its registration and use of the Domain Name was likely to create confusion with Complainant's mark and that it might benefit by trading on that confusion.
Respondent's settlement proposal for a business deal might also be viewed as an indication of bad faith. A settlement offer to transfer a domain name in exchange for payment of a premium may be totally appropriate when a party has a legitimate interest in a domain name. Lava Trademark Holding Company, LLC v. Creative Labs, Inc., WIPO Case No. D2001-0994 (2001). Depending on the context, a settlement offer may not be appropriate when a respondent lacks any legitimate rights or interests in a domain name. An unsolicited proposal to gain a business advantage in exchange for transfer of a domain name corresponding to another's name or mark might be viewed as a bad faith attempt to profit from another's mark. Nevertheless, Respondentís proposal here was made only in response to Complainant's demand. In light of its finding of bad faith on other grounds, the Panel need not decide whether Respondentís settlement proposal constituted bad faith.
We find in favor of Complainant: the Domain Name is confusingly similar to a mark in which it has rights; Respondent lacks any rights or legitimate interests in the Domain Name; and Respondent registered and used the Domain Name in bad faith to divert Internet users for commercial gain. Therefore, the Domain Name <crockpotrecipes.net> should be transferred to Complainant.
Mark V.B. Partridge
Dated: August 2, 2002
This case presents what one member of the majority described early on as "a difficult case." I agree with this characterization. I think the majority is correct in finding that the domain name <crockpotrecipes.net> is confusingly similar to Complainantís CROCK-POT trademark. Whether the Respondent has a legitimate interest in the domain name, however, is questionable. I do not think Complainant has established that Respondent registered and is using the domain name in bad faith. I would find for the Respondent because I do not see a clear case of cyber squatting.
The majority is correct, and it is undisputed, that Respondent is not authorized or licensed to use Complainantís mark as a domain name, that Respondent has never been known by the domain name, and that Respondent is not making a noncommercial use of the domain name. The majority states that the Respondent "suggests it is making fair descriptive use of Complainantís mark to describe "a device that cooks food slowly over a low heat." The majority then provides a lengthy fair use analysis.
The Respondentís full statement referred to by the majority was that "the word crockpot is a common place word used to describe a device that cooks food slowly over a low heat." (April 18, 2002, E-mail from Dan Oaks to WIPO.) The Respondent is clearly arguing that the word "crockpot" is a generic term, not that it is making a fair use of the Complainantís trademark. In my opinion, the majorityís fair use analysis is misplaced. In fact, the Respondent asserts that "[t]he results of a search for the keyword crockpot on <google.com> is evidence of this fact" and that "[t]he word is used on 159,000 web pages without reference to The Rival Company or their alleged trademark." Id.
As an initial matter, the Panel would have to consider whether this statement and a similar keyword search is evidence that may be properly considered under the Policy. Section 15(a) of the Policy states that "[a] Panel shall decide a complaint on the basis of the statements and documents submitted". Section 10(b) of the Policy states that "the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case." Respondent claims that his "pockets are not as deep as those of The Rival Company" and that he "cannot hire an attorney" to represent him in this matter. Id. In fact, Respondent has proceeded without counsel. Because the Respondent has provided the Complainant with sufficient notice of the search query and search engine used, to ensure equality to the Respondent, I would consider the results of an identical search conducted by the Panel as evidence properly before it.
By conducting the same search for the keyword "crockpot" on <google.com> I also found hundreds of uses of "crockpot" without reference to the Complainant. Most of the uses of "crockpot" were in a generic or descriptive manner. I also found that an online search of a common dictionary provided the following definition for "Crock-Pot": "A trademark used for an electric cooker that maintains a low temperature. This trademark often occurs in print in lowercase without a hyphen." (The American Heritage® Dictionary of the English Language: Fourth Edition. 2000 Ė http://www.bartleby.com/61/54/C0755400.html.) The definition implies that the mark is often used in a generic or descriptive manner, which is consistent with the Google.com search results.
Although I think the majorityís fair use analysis is misplaced, especially its reliance on 15 U.S.C. ß 1115(b)(4), if the Panel is going to rely on the Lanham Act, the more appropriate section would be 15 U.S.C. ß 1125(d)(1)(B)(ii) of the Anti-cybersquatting Consumer Protection Act ("ACPA"). This section of ACPA creates a defense to cyber squatting liability if the defendant "believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." (emphasis added) Based on what appears to be wide spread use of "crockpot" as a generic or descriptive term, I think Respondent had reasonable grounds to believe that use of the domain name was lawful, as claimed by the Respondent.
I do not mean to suggest that "Crock-Pot" is, in fact, a generic or descriptive term. Such a determination is beyond the jurisdiction of the Panel. In light of the evidence, however, I think there is a legitimate question as to whether or not Respondent has a legitimate interest in the domain name. More importantly, I think there is a legitimate question as to whether or not Respondent registered and used the domain name in bad faith. Accordingly, I would deny the complaint because there appears to be a legitimate dispute, which the UDRP is not intended to address. (See Metabolife International v. Spectrum Labs, WIPO Case No. D2000-0509, fn. 1; ICANN, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy ß 4.1(c) (October 24, 1999), at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm.) ("The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." * * * "The policy relegates all "legitimate" disputes * * * to the courts".)
When considering bad faith, I would also disregard the Respondentís settlement proposal because it was an offer to compromise in response to Complainantís cease and desist letter. (See Fed. R. Evid. 408, Advisory Committeeís Notes explaining policy considerations for Rule.) As part of the offer to compromise, Respondent denied any wrongdoing. (July 20, 2001, E-mail from Dan Oaks to Howard Michael) ("My legal counsel assures me that my crockpotrecipes.net domain does not infringe on your clientís "federally registered Crock-Pot trademark used in connection with electric casseroles."") In light of Respondentís reasonable belief that its use of <crockpotrecipes.net> was lawful, his offer of compromise does not evidence bad faith.
For the foregoing reasons, I respectfully dissent.
R. Eric Gaum
Dated: August 2, 2002