WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Darden Corporation v. Texas International Property Associates

Case No. D2008-0374

 

1. The Parties

The Complainant is Darden Corporation, Los Angeles, California, United States of America, represented by Aaron Shechet, United States of America.

The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Gary Wayne Tucker, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <dardendental.com> is registered with Compana LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2008. On March 10, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On March 11, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for sending the Response was April 9, 2008. The Response was filed with the Center on April 10, 2008.

The Center appointed Carol Anne Been as the sole panelist in this matter on April 22, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

 

4. Factual Background

Complainant, Darden Corporation, is engaged in the sale of dental supplies. Complainant claims common law trademark rights in the name “Darden Dental”, for dental supply and training. Complainant operates a website located at the domain name <dardensupply.com>.

Respondent registered the Domain Name <dardendental.com> (hereinafter, the “Domain Name”), on December 27, 2005. According to Annex 8 of the Complaint, the Domain Name resolves to a website which is headed “Welcome to dardendental.com” and includes links to a series of sub-pages providing links to various providers of dental services and supplies.

Respondent states that it is in the business of providing online locator services. Respondent states that the links generated under Sponsored Results are provided “pursuant to Yahoo or Google’s terms”.

 

5. Parties’ Contentions

A. Complainant

i. Domain Name Identical or Confusingly Similar to Complainant’s Mark

Complainant contends that it is in the business of selling dental supplies and has sold dental products since 1999. It was incorporated in California in 2001. Complainant sells its products to over 1,000 dentists through a catalogue offering over 8,000 dental products. Complainant’s revenues at the time Respondent registered the Domain Name were approximately $3.8 million. Complainant places its own name on some products and is also a nationwide wholesale distributor of other brands. Complainant markets and sells to customers located throughout the country, offering overnight services to the western United States, and free ground service to any other location on orders over $100.

Complainant contends that it sold dental supplies and conducted business exclusively under the name “Darden Dental” prior to 2007. Complainant continues to use that name and also has used the names “Darden Supply” and “Darden Dental Supply” since 2007. Complainant’s advertisements and catalogues use the name “Darden Dental” and Complainant is known primarily by that name. Complainant has acquired significant goodwill in the “Darden Dental” name.

Complainant contends that it has acquired common law trademark rights in the phrase “Darden Dental” in the context of the dental supply and training industry, to be governed by United States trademark law, through extensive use of the name in commerce since 1999.

Complainant contends that the Domain Name <dardendental.com> is confusingly similar to Complainant’s mark, DARDEN DENTAL, because it incorporates Complainant’s mark in its entirety.

ii. Respondent’s Rights or Legitimate Interests in the Domain Name

Complainant contends that Respondent’s only use of the Domain Name is for a website that hosts links to Darden’s competitors. Respondent’s website provides links to providers of dental implants, tooth bleaching products, and crowns, all of which are sold by Complainant through its catalogue and website.

Complainant contends that Respondent is not making a legitimate non-commercial or fair use of the Domain Name. Instead, Respondent uses the Domain Name to divert customers from Complainant for commercial gain. Respondent receives click through payments from the website, and therefore is operating a commercial enterprise. By misleadingly diverting Complainant’s customers to <dardendental.com>, Respondent derives commercial gain and is not making a legitimate non-commercial or fair use of <dardendental.com>.

iii. Domain Name Registered and Used in Bad Faith

Complainant contends that Respondent would not have registered the Domain Name <dardendental.com> if it had no knowledge of Complainant’s trademark, because the words “darden” and “dental” bear no independent relationship to one another, but are known in the dental industry as Complainant’s trademark. It would not be profitable for Respondent to maintain a website advertising dental supplies under the name “Darden Dental” if Complainant was not in the business of selling dental supplies under the same name.

Complainant contends that Respondent has been party to numerous administrative proceedings where a panel found bad faith because Respondent had used a disputed domain name for the purpose of intentionally attracting, for commercial gain, Internet users who were actually looking for a complainant’s website. Here, Respondent uses the Domain Name <dardendental.com> to offer links to Complainant’s competitors, and Respondent is paid for click throughs to the third party competitors. Bad faith is evidenced by the fact that Respondent commercially benefits from the similarity between the Domain Name <dardendental.com> and Complainant’s mark, DARDEN DENTAL.

Complainant contends that by registering Darden’s mark, followed by “.com,” Respondent intends to exploit Darden’s mark and reputation through Internet user confusion. The content of Respondent’s website, which predominantly offers links to suppliers of dental products and dentists, would lead a visitor to reasonably infer a connection between Respondent’s website and Complainant, when no such relationship exists.

B. Respondent

i. Domain Name Identical or Confusingly Similar to Complainant’s Mark

Respondent contends that Complainant does not have a federally registered trademark, but, rather, a trade name. As such, Complainant is not entitled to the protection afforded a trademark or service mark.

Respondent contends that Complainant has not done business using the name in question in a sufficient manner to develop secondary meaning in the name “Darden Dental” identifying Complainant’s goods or services. Complainant’s evidence shows invoices with total sales revenue of less than $5,500 outside of California, to four customers in Nevada, Arizona, and Pennsylvania. Complainant has failed to show that either the general public, or the specialized dental industry, identifies Complainant’s trade name exclusively or primarily with Complainant’s products.

ii. Respondent’s Rights or Legitimate Interests in the Domain Name

Respondent contends that it offers a legitimate business of targeted advertising searches. Respondent registered the Domain Name because Respondent believed the Domain Name contained a surname and a dictionary word to which no party had exclusive rights. Respondent is the registrant of thousands of domain names. Respondent contracts with Hitfarm which connects its own websites to Respondent’s domain names. The links on the Hitfarm sites are provided pursuant to Yahoo or Google’s terms and are triggered by search requests entered by computer users. Hitfarm provides an email link so that third-parties can complain about advertising on the websites and Hitfarm has universally removed such offending posts upon notice. Complainant has never made a complaint to Hitfarm about the content of the web pages.

Respondent contends that Complainant is seeking to hijack Respondent’s business and traffic to the Domain Name, which has been in operation for over two years without comment by Complainant.

Respondent contends that it has no intent to target Complainant, but rather to provide advertising for any person looking for dental products. Complainant was, like all other parties in the dental industry, free to purchase advertising on the Domain Name website. Respondent has no control over what terms advertisers bid on at Google or Yahoo and what terms appear on its website.

iii. Domain Name Registered and Used in Bad Faith

Respondent contends that Complainant has failed to show that Respondent was aware of Complainant when the disputed domain name was registered. Respondent was not aware of Complainant at the time the disputed domain name was registered in December 2005 and had no actual knowledge of Complainant’s business.

Respondent contends that it is in the business of providing locator services. Respondent registers domain names that become available for registration through expiration and deletion. Respondent did not register the disputed domain name with the intent to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website. Respondent did not register the disputed domain name to prevent Complainant from owning a domain name incorporating its trademark as none existed at the time of the creation of the Domain Name.

6. Discussion and Findings

The Administrative Panel notes that the Response was received by the Center on April 10, 2008, one day after the due date specified for submission of a Response. The Response, appears, however, to have been sent (in the sense of being transmitted by email from Respondent counsel’s apparent location in the United States of America) to the Center on April 9, 2008. In such a circumstance, consideration of the Response by the Administrative Panel is deemed appropriate. United Pet Group, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1039.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar to a Mark in which the Complainant has Rights

Paragraph 4(a)(i) of the Policy requires Complainant to show that “The domain name is identical or confusingly similar to the trademark and service mark in which the Complainant has rights.”

The preliminary issue is whether Complainant has protectable rights in the phrase to which it contends the Domain Name is confusingly similar. Complainant has not registered the name Darden Dental as a trademark and Respondent argues that Complainant has a trade name, not a trademark. Trade names, according to Respondent, are “not what the policy was designed to protect”. Response at paragraph [6].

There is a lack of consensus among panels as to when the Policy can properly be used to protect trade names. Moreover, the Report of the Second WIPO Internet Domain Name Process, September 3, 2001 states that “despite the majority of opinion that protection should be extended to trade names… we do not consider that it is appropriate to modify the UDRP so as to allow complaints for the bad faith and misleading registration and use of trade names…” (see Paragraphs 298-320, particularly Paragraph 318). Nevertheless, numerous panels have found a trade name to be protectable, if not specifically as such, then at least where the trade name has been proven to have acquired a secondary meaning as identifying the goods or services of the provider. See, for example, General Electric Company v. Resolution Diagnostics, WIPO Case No. D2005-0878.

Complainant contends that it has acquired common law trademark rights in the words “Darden Dental”. To successfully assert a common law trademark, the Complainant has the burden to show by a preponderance of the evidence that “the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 1.7, http://www.wipo.int/amc/en/domains/search/overview/index.html#17. Common law trademark mark rights have been found when a party proves that there is enough goodwill and reputation in a name and sufficient association of the name with the party itself. Action Sports Videos v. Jeff Reynolds, WIPO Case No. D2001-1239. Usage of a mark in trade can give rise to a common law trademark even where the volume of trade is very small and geographically limited. Marbil Co. Incorporated “DBA” Insol v. Sangjun Choi, WIPO Case No. D2000-1275.

Complainant’s evidence of use of the name “Darden Dental” in commerce prior to Respondent’s registration of the Domain Name includes a copy of an October 2004 advertisement as well as copies of undated catalogue pages and advertisements bearing the name “Darden Dental”. Complainant asserts that it has advertised and sold products under the name “Darden Dental” since 1999 to over 1,000 dentists, and provides evidence that it received gross annual revenues of $2.7 to $3.8 million in the two years immediately prior to Respondent’s registration of the Domain Name.

The submitted evidence tends to show use of the name “Darden Dental” as a trademark rather than merely as a trade name and supports Complainant’s assertions that the phrase was used to brand certain products sold by Complainant prior to the date Respondent registered the Domain Name.

Respondent argues that because Complainant’s advertising budget (approximately $50,000) and evidence of sales outside Complainant’s home state of California (totaling approximately $5,500) are small, there is insufficient evidence to establish a common law trademark. These arguments relate to the extent of Complainant’s trademark rights, not their existence. Although Complainant’s evidence of use is not overwhelming, the Panel finds it sufficient for the purpose of Paragraph 4(a)(i) to establish that Complainant has a common law trademark in the name “Darden Dental”.

Having concluded that Complainant has trademark rights in the phrase “Darden Dental”, it is evident that the Domain Name <dardendental.com> is identical or confusingly similar to that mark.

B. Rights or Legitimate Interests

Under the Policy, a right or legitimate interest in a domain name may be demonstrated by showing that Respondent: (i) used, before any notice of the dispute, or demonstrably prepared to use, the domain name in connection with a bona fide offering of goods or services; or (ii) has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Policy Paragraph 4(c).

Complainant contends that Respondent’s only use of the Domain Name is for a website that hosts links to Complainant’s competitors’ websites and that such use is not a legitimate non-commercial or fair use of the Domain Name. Respondent contends that it offers a legitimate business of targeted advertising searches and has no intent to target Complainant, but rather to provide advertising for any person looking for dental products.

In general, where a disputed domain name incorporating a complainant’s trademark is used in connection with an Internet website that only lists hyperlinks to third party websites, including those offering goods and services that are in direct competition with complainant’s products, such use is not bona fide offering of services and is not a legitimate non-commercial or fair use of the disputed domain name. E.J. McKernan Co. v. Texas International Property Associates, WIPO Case No. D2007-1499.

Respondent cites Eastbay Corporation v. VerandaGlobal.com, Inc., NAF Case No. FA105983 and Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364 as authority for the proposition that it “may fairly use descriptive or generic terms as well as surnames as a commercial domain name”. Both of these cases, however, dealt only with generic or descriptive terms that were reasonably related to the legitimate business of the respective respondents.

Here, Respondent does not claim any use of the phrase “Darden Dental” apart from its Internet use for targeting advertising searches. Respondent registered the Domain Name after Complainant began using the mark. The phrase used in the Domain Name is not generic or descriptive, and is not in common use apart from Complainant’s use. Rather, as Respondent admits, the Domain Name consists of a surname coupled with the descriptive word “Dental”. Respondent has not provided any reason for selecting this particular combination of words which have no apparent meaning apart from identifying Complainant’s business.

Respondent has not set forth any evidence of circumstances of the type described in Paragraph 4(c) of the Policy to demonstrate rights to and any legitimate interest in the Domain Name.

Therefore, the Administrative Panel holds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy states that it is evidence of bad faith when the Respondent, by using the disputed domain name, intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

Complainant contends that by registering the Domain Name, Respondent is exploiting Complainant’s mark and reputation. Complainant contends that Respondent has been party to numerous administrative proceedings where a panel found bad faith because Respondent had used a disputed domain name for the purpose of intentionally attracting, for commercial gain, Internet users who were actually looking for a complainant’s website.

Respondent contends that it did not register the disputed domain name with the intent to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website. Respondent further asserts that it is the registrant of “thousands of domain names” and that it was not aware of Complainant at the time the disputed domain name was registered.

The fact that Respondent combined the name “Darden” with the word “Dental” in the Domain Name is evidence that Respondent was in all likelihood aware, on some level, of Complainant and its business when Respondent registered the Domain Name. This is further supported by Respondent’s use of the Domain Name to host links to competitors of Complainant showing that Respondent intended to profit from traffic seeking Complainant’s business. Respondent’s arguments to the contrary are not persuasive.

“A Panel is not required to blindly accept assertions offered by a Respondent any more than it is required to accept unsupported assertions by a Complainant. It is especially important under this procedure to test Respondent’s assertions for evidentiary support and credibility, since normally the Complainant has no opportunity to counter the Respondent’s assertions, whilst the Respondent does have the opportunity to counter those of the Complainant.” Do the Hustle v. Tropic Web, WIPO Case No. D2000-0624.

Confronting similar assertions by Respondent in a separate proceeding, an Administrative Panel warned: “those who register domain names, and particularly those who register domain names in large numbers using automated programs and processes, are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners. That responsibility derives from paragraph 2 of the Policy, and in particular the words: ‘It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights’“. Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.

Another Administrative Panel, addressing a case where a different respondent had registered domain names in large numbers, held:

“Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as [pay per click] landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.” mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141

Applying the reasoning of the above decisions to the facts of this case, the Administrative Panel concludes that Respondent registered and used the Domain Name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the Domain Name <dardendental.com> be transferred to Complainant.


Carol Anne Been
Sole Panelist

Dated: May 6, 2008