WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Farmersí Trading Company Limited v. Ross Lebel
Case No. DBIZ2002-00225
1. The Parties
The Complainant in this administrative proceeding is The Farmersí Trading Company Limited, a company incorporated New Zealand having its registered office at Wellington, New Zealand, and carrying on business as a retailer of household goods.
The Respondent is Ross Lebel of PMB 330-739, 1773 H Street, Blaine, Washington, WA 98230, United States of America
2. The Domain Name and Registrar
The domain name in dispute is <farmers.biz>.
The Registrar with which said domain name is registered is Communi Gal Communications Limited (hereinafter "the Registrar").
3. Procedural History
On April 26, 2002, the Complaint was submitted by the Complainant by e-mail. Following correspondence between the WIPO Arbitration and Mediation Center ("the Center") and the Complainant, an amended Complaint was subsequently received by the Center by e-mail on May 23, 2002, and the hard copy of the amended Complaint was received by the Center on May 28, 2002.
In accordance with paragraph 4(a) of the Rules for Start-up Trademark Opposition Policy for .BIZ ("the STOP Rules") the Center verified that the Complaint satisfied the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("the STOP Policy"), the STOP Rules and the WIPO Supplemental STOP Rules and that payment in the required amount had been paid by the Complainant.
On May 28, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent by courier and by e-mail. A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that this Administrative Proceeding had commenced on May 28, 2002, and that the Respondent was required to submit a Response to the Center on or before June 17, 2002.
No Response was received by the Center and on June 19, 2002, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorized representative of the Complainant by e-mail.
On June 29, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the Rules, the Center proceeded to appoint James Bridgeman as the Administrative Panel. A Notification of Appointment of Administrative Panel and Projected Decision Date was sent to the Parties by e-mail. On the same day the case file was transmitted to the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant is the Registered Proprietor in New Zealand of Trade Mark Registration Nos 196155 FARMERS in Class 42 and 247158 FARMERS in Class 37 for the following goods and services:
Class 37: "Cleaning and deodorizing services; furnishing protection including fabric, upholstery, floor coverings and carpet."
Class 42: "Retailing and wholesaling services as provided by a department store; retailing and wholesaling services in relation to the following goods: preparations and substances for laundry and cleaning use of all kinds, soaps, perfumery, cosmetics, preparations for the hair, pharmaceutical and sanitary preparations, hand tools and implements, including gardening tools, cutlery, razors, electrical apparatus and appliances including but not limited to apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, video and audio systems of all kinds, musical instruments, televisions, typewriters, electronic equipment, gym, exercise and sporting equipment and articles, bicycles and accessories for bicycles including tools, helmets, pumps, lights, batteries, oils, straps and racks, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, costume jewellery, horological and chronometric instruments including watches and clocks of all kinds, paper, cardboard and goods made from these materials, printed matter, photograph albums, stationery, adhesives for stationery or household purposes, artists materials, paintbrushes, office requisites, instructional and teaching material, plastic materials for packaging, playing cards, leather and imitations of leather and goods made from these materials, bags, umbrellas, parasols and walking sticks, furniture and furniture accessories, mirrors, picture frames, curtains and curtain accessories, lamp shades, household or kitchen utensils and containers, domestic hardware, candles, combs and sponges, brushes, articles for cleaning purposes, glassware, porcelain and earthenware, yarns and threads, textiles and textile goods including bed and table covers, clothing, footwear, headgear, and clothing accessories, sewing equipment and accessories including lace and embroidery, ribbons and braids, buttons, hooks and eyes, pins and needles, artificial flowers, car seat covers, carpets, rugs and other floor coverings, games, toys, puzzles and playthings, decorations for Christmas trees, foodstuffs of all kinds including confectionery and beverages, plants and flowers, tobacco, smokers articles and matches, fireworks."
There is no information available relating to the Respondent except for the registration and contact details set out in the Complaint as provided by the Respondent to the Registrar and available on the Registrarís WHOIS database.
5. Partiesí Contentions
The Complainant submits that this dispute is properly within the scope of the STOP Policy and that the Respondent is required to submit to these Administrative Proceedings in accordance with paragraph 4(a) of the STOP Policy on the grounds that
i. the domain name is identical to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the Domain name was registered or is being used in bad faith.
In support of its application, the Complainant submits that the Complainant, is a New Zealand icon and, either by itself, or by way of its predecessors in business, has traded under or by reference to the FARMERS trade mark in New Zealand since at least 1909. The Complainant refers this Administrative Panel to its web site at www.farmers.co.nz where it states that full details as to the Complainant and its business can be found.
The Complainant submits that it is also the owner of a large portfolio of trade marks comprising and/or including the word FARMERS for a wide variety of goods or services. Furthermore, the Complainant claims that it also owns a large portfolio of domain names, all of which comprise or include the word FARMERS, examples being <farmers.co.nz> and <farmers.info>.
The Complainant submits that on April 19, 2002, a letter was sent by the authorized representative of the Complainant to the Respondent by email seeking information from the Respondent as to its interest in the said <farmers.biz> domain name. The Complainant has furnished this Administrative Panel with a copy of said letter.
The Complainant submits that the results of Internet searches carried out by the Complainant indicate that the Respondent is associated with a US company which appears to be a domain name registration company.
The Respondent was asked to respond and confirm whether or not it had a legitimate and bona fide business which operates under or by reference to the FARMERS trade mark and/or whether the Respondent had any trade mark registrations for the word FARMERS in any jurisdiction in the world. The letter went on to say that failing a response, the Complainant would proceed on the basis that the Respondent has no legitimate right or interest in the said <farmers.biz> domain name or any trade or service mark for the word FARMERS and that the domain name had been registered and/or was being used by the Respondent in bad faith.
The Complainant further submits that trade mark searches conducted on behalf of the Complainant in the United States, the place of residence of the Respondent have failed to reveal any trade mark registrations for the word FARMERS by the Respondent.
The Complainant submits that as of the date on which the Complaint filed its amended Complaint, no response to the said e-mail had been received. The Complainant therefore submits that in the circumstances the Respondent has no legitimate or bona fide interest in said <farmers.biz> domain name and that the name has been registered in bad faith.
There was no Response filed by the Respondent.
6. Discussion and Findings
In accordance with paragraph 4(a) of the STOP Policy, the Complainant must prove that:
(i) the domain name in dispute is identical to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
While the Complainant has not furnished any copies of registration certificates in respect of the trademark registrations set out supra, the Complainant has furnished this Administrative Panel with a print out of details of these registrations as set out in a Companies Office database search. As this matter has not been put in issue in these proceedings this Administrative Panel accepts this evidence submitted. In doing so this Administrative Panel is conscious that at paragraph 21 of the amended Complaint, the Complainant has made the standard certification that the information contained in the Complaint is, to the best of the Complainantís knowledge, complete and accurate.
For the purposes of these Administrative Proceedings this Administrative Panel is willing to accept that the Complainant has rights in the New Zealand registered trademark FARMERS, details of which are set out supra.
It is clear that the said domain name is identical to the Complainantís FARMERS trademark and the Complainant has therefore satisfied the first element of the test as set out in paragraph 4(a) of the STOP Policy.
Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the said domain name <farmers.biz>. The Complainant has also alleged that trade mark searches conducted on behalf of the Complainant in the United States, the place of residence of the Respondent have failed to reveal any trade mark registrations for the word FARMERS by the Respondent. The Respondent has not provided this Administrative Panel with any evidence of these searches or any print-outs of the content of the Respondentís site.
In a number of decisions under the UDRP, panelists have accepted that because there is a difficulty in proving a negative, once the Complainant makes the allegation that the Respondent has no rights or legitimate interest in a domain name the onus of proof on that element of the test shifts to the Respondent. This Administrative Panel is willing to take the same approach under the STOP Policy and to find that the Respondent has satisfied the second element in the test in paragraph 4(a) of the STOP Policy.
Paragraph 4(b) of the STOP Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name viz. circumstances indicating :
(i) that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(iii) the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent intentionally attempted to attract for financial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on the Respondentís web site or location.
This is not an exhaustive list but provides illustrations of how a Complainant may proceed to prove its case.
Under paragraph 4(a) of the STOP Policy, the Complainant bears the onus of proving that the domain name has either been registered or is being used in bad faith.
On April 19, 2002, the representative of the Complainant sent an e-mail message to the Complainant. This e-mail essentially stated that the Complainant and its predecessors in business has been in business and has traded in New Zealand under or by reference to the trademark FARMERS since at least 1909. It stated that the Complainant "is a New Zealand icon" and referred the recipient to the Complainantís www site at <farmers.co.nz>. The Complainant stated that it was the owner of a large portfolio of trademarks and domain names that comprise or include the word "FARMERS".
The e-mail stated that it had recently come to the attention of the Complainant that the Respondent had obtained registration of the Internet domain name <farmers.biz> and that this registration has been put on registry hold and claimed that the Complainant had first intellectual property claim in respect of that domain name.
The e-mail went on to state that the purpose of the correspondence was to seek the Respondentís advice as to the Respondentís interest in the said <farmers.biz> domain name. It requested confirmation from the Respondent that the Respondent had a legitimate and bona fide business interest which operates by reference to the FARMERS trade mark and enquired as to whether the Respondent had registered this trademark in any jurisdiction?
The Complainant stated that it had been unable to locate any information or confirmation that the Respondent has any legitimate right or interest in the said <farmers.biz> domain name or any trade or service mark for the word "FARMERS".
The Complainant went on to state that the Complainant assumed therefore that the Respondent may have registered the said domain name "with a view to selling that" and stated that if this were so, the Complainant wished to hear from the Respondent as to the basis on which it would be interested in selling that domain name.
The Complainant then proceeded to state that if there was no response from the Respondent to its e-mail, that the Complainant would proceed on the basis that the Respondent has no rights or legitimate interest in respect of the <farmers.biz> domain name and hat the said domain name has been registered and is being used in bad faith.
This Administrative Panel has considered the submissions of the Complainant regarding the issue of bad faith and in particular the content of said e-mail dated April 19, 2002, and must conclude that the Complainant has failed to satisfy the third element of the test in paragraph 4(a) of the STOP Policy.
There is no onus on a Respondent to answer the Complainantís e-mail nor was there any onus on the Respondent to file a Response in these Administrative Proceedings. The onus of proof rests on the Complainant to establish each of the three elements in the said test. A respondent may decide not to respond and while this may be a risky approach and may leave open the possibility that an inference may be taken that a respondent has something to hide, nonetheless a respondent is entitled to take this approach and bear the attendant risk.
The Complainant is the owner of a long established registered trademark in New Zealand and this Administrative Panel accepts that the Complainant has achieved a high level of distinctiveness in said trademark in respect of the goods and services in classes 37 and 42 in that jurisdiction as claimed by the Complainant.
At no stretch of the imagination could this trademark FARMERS be seen as a distinctive mark in respect of agricultural goods or services. In the English language, the trademark is essentially a word that can be used to describe the goods and services of anyone engaged in farming. It is also the genitive case of a relatively commonplace family name in the Anglophone world.
If the trademark had been more distinctive, it may have been possible for this Administrative Panel to take an inference that the domain name was registered or being used in bad faith, but in the circumstances outlined by the Complainant and in the absence of any evidence on the point, this Administrative Panel cannot reach such a conclusion.
In the view of this Administrative Panel, therefore the Complainant has not provided any evidence whatsoever that the domain name has been registered or is being used in bad faith and has therefore failed to establish the third element in the test set out in paragraph 4(a) of the STOP Policy.
This Administrative Panel finds that the Complainant has failed to establish that the Respondent registered or is using the <farmers.biz> in bad faith and the Complainantís application must therefore be refused.
According to STOP paragraph 15(e), this Administrative Panel further decides that subsequent challenges under STOP against the domain name shall be permitted.
Dated: July 11, 2002