WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Easy Gardener Products, Inc. v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc.
Case No. D2010-1185
1. The Parties
Complainant is Easy Gardener Products, Inc. of Waco, Texas, United States of America, represented by RGC Jenkins & Co., United Kingdom of Great Britain and Northern Ireland.
Respondent is Whois Privacy Protection Service, Inc. / Demand Domains, Inc. of Bellevue, Washington, United States of America, represented internally.
2. The Domain Name and Registrar
The disputed domain name <easy-gardener.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2010. On July 19, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 19, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 28, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 2, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on August 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2010. The Response was filed with the Center on August 24, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 10, 2010. 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 is the owner of registration of the word and design trademark EASY GARDENER on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 2356107, dated June 6, 2000, in International Classes (ICs) 19 and 24, covering "fabric for use in construction, specifically, for leveling patios, sidewalks or other flat surfaces" and "fabric for use in landscaping, specifically, as a weed retardant" respectively, asserting first use and first use in commerce of August 1998.1 The design of the registered trademark involves a drawing of a flower under which appears the stylized words EASY GARDENER within an irregularly drawn rectangle. Complainant is the owner of two Community Trade Mark (CTM) registrations of EASY GARDENER on the register of the Office for Harmonization of the Internal Market (OHIM) of the European Union: the word trademark EASY GARDENER, registration number 002401230, dated March 12, 2004, in ICs 1, 5, 6, 17, 19, 20, 22 and 24, covering a wide range of gardening products, including without limitation, chemicals for weed control, weed killers, protective wrapping for plants, fabrics for use in construction, bird netting, and fabric for landscaping; and the word and design trademark EASY GARDENER, registration number 002401032, dated May 18, 2004, in ICs 1, 5, 6, 17, 19, 20, 22 and 24, covering essentially the same products. The stylization of the word and design CTM is the same as the USPTO registered trademark described above.
Complainant is a leading producer and supplier of landscaping products in the United States of America and the United Kingdom. It has been selling in the United States of America market since 1983, and in the United Kingdom market since 1997. According to information on Complainant's website at “www.easygardener.com”, Complainant "is the largest producer and supplier of weed control & landscape fabrics to the United States of America lawn and garden market", with "manufacturing facilities in the United States and Europe". Complainant has provided extensive lists of outlets for its products in the United States and the United Kingdom. In the United States those outlets include Home Depot, Wal-Mart, Kmart, Target, Right-Aid and Ace Hardware. In the United Kingdom, there is a large network of distributors of Complainant's products.
Complainant operates an active commercial Internet website at “www.easygardener.com”, and specifically for the United Kingdom market at “www.easygardener.co.uk”. Both are sophisticated websites that include company description, product line, gardening advice, information concerning outlets, etc.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to a WhoIs database printout provided by the Center, the record of the disputed domain name was created on February 20, 2008.
Respondent has used the disputed domain name to operate a link farm page (headed "Welcome to easy-gardener.com") that lists various product categories related to landscaping, including, for example, "Garden Accessories", "Landscape Fabric", "Garden", "Weed Control" and "Garden and Landscape". Alongside the headings is the photo of an unidentified smiling blonde female. Clicking through on the product categories takes the Internet user to various "sponsored" garden product supply firms that appear to be unrelated to Complainant. There are a substantial number of such third-party supply firms with sponsored listings. At the bottom of the website pages of Respondent's link farm there is a click through for "Legal Terms". This directs Internet users to a statement that begins:
"The operator of this web site respects the intellectual property rights of others and has no bad faith intentions to 'cybersquat' trademarks or confusingly similar business names. The domain name associated with this web site is believed to be merely generic or descriptive in nature. The domain name is not for sale to any individual or company with trademark rights, or their agent, for the respective word or phrase. This domain name is also not for sale to any competitor of such trademark holder, or their agent. Any offer to sell a domain is immediately void if the buyer is one of the previously mentioned persons.
If you believe you have legitimate trademark or other legally recognized rights in the domain name associated with this web site, please send us notice via email at: email@example.com. Your notice must include all of the following information: "
The registration agreement in effect between Respondent and eNom subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it has rights in the trademark EASY GARDENER in the United States based on long use in commerce and as evidenced by registration on the Principal Register of the USPTO. Complainant contends that it has rights in the trademark EASY GARDENER in the European Union, and more specifically in the United Kingdom, as evidenced by registration of a CTM at the OHIM. Complainant alleges that it has made substantial use of the EASY GARDENER trademark in the United Kingdom.
Complainant states that the EASY GARDENER trademark is distinctive, and not commonly descriptive or generic. Complainant argues that the trademark is composed of two commonly used words that taken together have no clear descriptive meaning. Complainant contends that "simply put, while there may be such a thing as 'easy gardening,' there is no such thing as an 'easy gardener'."
Complainant alleges that the disputed domain name <easy-gardener.com> is identical to or confusingly similar to its trademark, differentiated only by the addition of a hyphen between the two words forming the second-level domain name. Complainant argues that an Internet user encountering the disputed domain name would assume that it was connected to Complainant.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent has not been commonly known by the disputed domain name, is not using the disputed domain name in connection with a bona fide offering of goods or services, and is not making legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant's trademark.
Complainant argues that use of the disputed domain name to operate a pay-per-click "landing site" offering links to third-party websites, principally commercial sites offering products and services competitive with those of Complainant, does not constitute legitimate noncommercial or fair use of its trademark. Complainant contends that numerous decisions of panels under the Policy support this position.
Complainant contends that Respondent registered and has used the disputed domain name in bad faith, including for commercial gain by seeking to create Internet user confusion as to Complainant's association with Respondent's website. Complainant further contends that because its trademark was well known when Respondent registered the disputed domain name, Respondent did not inadvertently come upon a set of words that was associated with Complainant. Complainant further contends that because Respondent's website includes the statement "This domain may be for sale", and because Respondent understood that Complainant's trademark embodies valuable goodwill, Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to Complainant or a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Complainant finally notes that Respondent's conduct reflects a "deliberate attempt to create a nuisance and to interfere with the Complainant's business such that Complainant or one of its competitors might be persuaded to pay valuable consideration to secure its transfer".
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent contends that Complainant's word trademark EASY GARDENER is "merely descriptive" and that Complainant does not have rights in the words standing alone, unaccompanied by the design elements present in its USPTO registrations (and noting that one of those registrations has been canceled).
Respondent argues that prior decisions by panels under the Policy have established that a trademark that is comprised of generic or descriptive terms is not confusingly similar to a domain name that uses the same generic or descriptive terms.
Respondent contends that pay-per-click websites are a common business practice and constitute a bona fide offering of the service "particularly when the domain name in question is descriptive or generic, as is the case here."
Respondent has provided evidence of an Internet "blog" authored by a person who refers to herself as the "Easy Gardener", which Respondent contends refutes Complainant's argument that its trademark is distinctive. Respondent has also provided evidence of a landscape design business in Knoxville, Tennessee doing business as "The Easy Gardener, Inc.", with website at ”www.theeasygardener.com". Respondent argues that it has rights or legitimate interests in a domain name comprised of generic and/or common words which are not, in any event, exclusively associated with Complainant's business.
Respondent argues that it did not register and/or used the disputed domain name in bad faith. Respondent states that it believed that the disputed domain name was descriptive "and a starting point for Internet users seeking information about gardening and landscaping". Respondent states that it did not intend to divert Internet traffic from Complainant. It further argues that there is no evidence that Complainant's mark is famous, and that it is at best a descriptive mark consisting of a logo and non-distinctive words.
Respondent requests the Panel to reject Complainant's request for an order directing transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s 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) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of use in commerce of the word and design trademark EASY GARDENER in the United States, and of registration of that trademark on the Principal Register of the USPTO. Complainant has provided evidence of registration of the word trademark, and the word and design trademark, EASY GARDENER, as a CTM, and substantial evidence of use of that trademark in the United Kingdom. See Factual Background, supra.
Respondent has argued that Complainant's word trademark is merely descriptive or generic, and is not enforceable as against Respondent and the disputed domain name, because its distinctiveness is based on the incorporated design elements. Respondent has not challenged Complainant's rights in its word and design trademark in so far as it is taken as a whole. In that regard, Complainant has rights in a trademark, even if (according to Respondent) those rights may be circumscribed by the descriptive character of the words. Further, Respondent has not addressed the fact that Complainant owns registration of the word trademark EASY GARDENER as a CTM, without design elements.
The Panel determines that Complainant has rights in the word trademark EASY GARDENER in the United Kingdom and the European Union based on its registration as a CTM, and has rights in the word and design trademark EASY GARDENER as evidenced by registration at the USPTO and as a CTM. The extent to which word and design trademark rights are enforceable as against Respondent and the disputed domain name is further considered in the context of Respondent's rights or legitimate interests.
The disputed domain name is differentiated from Complainant's word CTM solely by addition of a hyphen ("-") between EASY and GARDENER. The separation in the disputed domain name of the two words of the combination EASY GARDENER, by a hyphen does not serve to differentiate the disputed domain name from the word trademark. For technical reasons, words in domain names may not be separated by ordinary spacing, but require insertion of a hyphen or some other character. An Internet user familiar with Complainant's word trademark would be likely to confuse the disputed domain name with Complainant's word trademark. The Panel finds that the disputed domain name is identical for purposes of the Policy to Complainant's word CTM.2
The Panel determines that Complainant has rights in the trademark EASY GARDENER in the United States and the United Kingdom (and the EU), and that the disputed domain name is identical to Complainant's word CTM. The Panel need not address whether the disputed domain name is confusingly similar to Complainant's word and design trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent was not commonly known by the disputed domain name, Respondent has not used the disputed domain name for a bona fide offer of goods or services, and that Respondent has not made legitimate noncommercial or fair use of the disputed domain name. Complainant has contended that use of the disputed domain name in connection with a link farm page that includes links to competitors of Complainant is not fair use of the disputed domain name. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
It is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to products competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925: Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
Respondent has principally argued that Complainant has no enforceable trademark rights in commonly descriptive or generic terms. If Complainant had no trademark rights in the term EASY GARDENER, it could not enforce those rights as against Respondent and the disputed domain name. Respondent would not need to demonstrate rights or legitimate interests. However, Respondent has not made a specific argument to negate Complainant's rights in the word-alone trademark registered at the CTM, and the Panel has determined that Complainant has rights in the word trademark EASY GARDENER.
Respondent might nevertheless succeed in establishing rights or legitimate interests if it could demonstrate that it was making fair commercial use of those terms in the disputed domain name.
Respondent has argued that EASY GARDENER is a commonly descriptive or generic combination term. According to Respondent, it follows from this that it is entitled to make use of EASY GARDENER in the disputed domain name using its commonly descriptive or generic meaning. Central to Respondent's argument concerning fair use is that EASY GARDENER is a descriptive phrase with a common meaning that will be understood by Internet users to refer to something other than the goods of Complainant. Complainant has pointed out that the combination of the terms "easy", an adjective (and sometimes an adverb) referring to an action that is without substantial difficulty,3 and the term "gardener", a noun referring to a person who performs gardening or landscaping,4 does not naturally form a description of something in common English. Indeed, the term "easy" can be used in relation to a person, as in the phrase "I will be taking a course from an 'easy professor'", meaning that the student may secure a passing or good grade without difficulty from that instructor. But, there is no equivalent sense of EASY GARDENER, unless one considers unusual possibilities, such as a synonym for a relaxed gardener, or perhaps as a landscaper who does not cause much difficulty. But these are not ordinary or common usages.5 By way of contrast, as Complainant has pointed out, the combination term "easy gardening" does have a common meaning, that is, landscaping or gardening that is undertaken without much difficulty.
In the Panel's view, Complainant's word trademark EASY GARDENER is not a combination term ordinarily susceptible to fair use in a descriptive sense. The Panel rejects Respondent's contention that it has rights or legitimate interests in the disputed domain name because it is using that combination of terms to commonly describe something.
Respondent has used the disputed domain name solely for the purpose of directing Internet users to a link farm pay-per-click page with multiple links to third-parties offering goods competitive with those of Complainant. This does not establish rights or legitimate interests in the disputed domain name for Respondent.
The Panel finds Respondent lacks rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent has used the disputed domain name which is identical to Complainant's trademark to direct Internet users to a pay-per-click link farm page. Respondent's link farm page includes connections to numerous third-party competitors of Complainant. Complainant is one of the leading suppliers of gardening and landscaping products in the United States and the United Kingdom. There is evidence on the record of this proceeding that Complainant's mark is well known by consumers. This suggests that Respondent was aware of the marketplace value inherent in Complainant's trademark when it registered the disputed domain name, and that it has sought to take unfair advantage of that marketplace value. The Panel determines that Respondent registered and used the disputed domain name in bad faith by intentionally for commercial gain using Complainant's trademark in the disputed domain name to create Internet user confusion with regard to Complainant acting as source, sponsor, affiliate or endorser of Respondent's website.
The Panel has determined that Respondent registered and used the disputed domain name in bad faith by creating Internet user confusion. The Panel need not address Complainant's additional allegations of bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <easy-gardener.com> be transferred to the Complainant.
Frederick M. Abbott
Dated: September 24, 2010