WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sights on Service Inc. v. The Secret Shopper Company
Case No. D2003-0415
1. The Parties
The Complainant is Sights on Service, Inc. ("SOS"), of Minnesota, United States of America, represented by Cooley Godward LLP, of United States of America ("USA").
The Respondent is The Secret Shopper Company, of Georgia, United States of America, represented by Powell, Goldstein Frazer & Murphy LLP, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <secretshoppercompany.com> (the "Domain Name").
The registrar is Network Solutions, Inc. (the "Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received SOSís Complaint by email on May 29, 2003, and in hard copy on June 4, 2003. On May 29, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On June 4, 2003, the Registrar transmitted an email to the Center containing its verification response confirming that (1) the Domain Name was registered through it; (2) Respondent is the current registrant of the Domain Name; (3) the Organization and Administrative Contact for the Domain Name is as stated above; (4) the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name; and (5) the Domain Name is active. After notices of Complaint Deficiency, the final Amendment to the Complaint was received by email on June 20, 2003 and in hard copy on June 23, 2003. 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 June 23, 2003. The Center received the Response by email on July 13, 2003, and in hard copy on July 16, 2003.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 28, 2003. 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
SOSís Complaint alleges that its SECRET SHOPPER mark is a distinctive, federally-registered trademark that is famous in the mystery shopping industry. Mystery shopping refers to the commonplace practice among certain retailers of goods or services of sending someone to the retailerís locations, on an anonymous or undercover basis, to make purchases like an ordinary customer, in order to monitor or evaluate the service, employee performance, or other aspects of the shopping experience.
SOS alleges that it has invested a significant percentage of its revenue in advertising and promotion. SOSís federal registration in the United States for its SECRET SHOPPER trademark predates the registration of the Domain Name at issue here.
SOS, which conducts business on the Internet at www.secretshopper.com, alleges instances of actual confusion as a result of Respondentís use of the Domain Name and attaches several misdirected emails as evidence of confusion in Exhibit E to the Complaint.
The Respondent alleges that the mark SECRET SHOPPER is generic within the mystery shopping industry and that as a result of the generic nature of the mark Complainant cannot satisfy its burdens as required under the Policy. Respondent attaches a voluminous set of materials in support of its assertion that SECRET SHOPPER is a generic mark.
5. Partiesí Contentions
SOS asserts as follows:
ē The registered SECRET SHOPPER mark is well known and famous in the mystery shopping industry.
ē The disputed Domain Name <secretshoppercompany.com> is identical to the trademark SECRET SHOPPER and confusingly similar to SOSís website "www.secretshopper.com".
ē Complainant has made substantial commercial use of the SECRET SHOPPER mark prior to Respondentís registration of the Domain Name.
ē Respondent is not a licensee and therefore has no legitimate interest in the Domain Name or in the SECRET SHOPPER mark.
ē Respondent registered and is using the Domain Name in bad faith.
ē Respondentís use of the Domain Name has resulted in actual confusion.
Respondent The Secret Shopper Company asserts as follows:
ē The mark SECRET SHOPPER is a descriptive and generic term, in both the general lexicon and in the mystery shopping industry, used to refer to a person hired by a retailer to anonymously monitor the retailerís employees.
ē The mark SECRET SHOPPER was originally used in the mystery shopping industry several years before it was registered by Complainant.
ē There can be no confusing similarity with the Domain Name <secretshoppercompany.com> as the mark SECRET SHOPPER is generic and therefore not source identifying.
ē Respondent has legitimate rights in the Domain Name as it legitimately operates under the name "The Secret Shopper Company."
ē Respondent has not registered or used the Domain Name in bad faith.
C. Jurisdictional Basis
As stated, the Registrar verified that the Policy applies to the Domain Name. In accordance with the Policy, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:
(i) The Domain Name is identical or confusingly similar to a trademark 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. Domain Name Identical to Trademark
Complainant owns a federal registration for the mark SECRET SHOPPER. The Domain Name in dispute is <secretshoppercompany.com>. There is no dispute that the Domain Name is identical to the asserted mark with the addition of the word "company" at the end. It is well established in U.S. trademark law that the addition or deletion of the corporate designation "company" does not alter or eliminate the likelihood of confusion between two confusingly similar trade names or marks. Cf. General Electric Co. v. Forddirect.com, Inc., WIPO Case No. D2000-0394 (June 22, 2000) (addition of generic term "direct" does not alter the confusing similarity of domain name to mark). Accordingly, Respondentís addition of the term "company" does not distinguish the Domain Name from Complainantís mark.
While it could be argued that, if the mark were deemed generic (an issue discussed further below), Complainant could not own any trademark rights in it, the Panel need not reach or resolve that issue in the context of establishing this first element of Paragraph 4(a), as it is more relevant to the second, and perhaps third, elements. For present purposes, Complainantís ownership of a federal registration suffices to give it standing to proceed with this dispute.
B. Respondentís Rights In the Domain Name
Next, Complainant must show that Respondent lacks any rights or legitimate interest in the Domain Name.
Respondent has put forth evidence that it is a legitimate business which has operated under the name "The Secret Shopper Company" for several years. (Response at Paragraph 52). Respondent has also shown that it is using the Domain Name in connection with a bona fide offering of goods or services and is doing so without intent to misleadingly divert consumers or to tarnish the trademark at issue.
Complainantís position is that Respondentís use of this business name is improper because it infringes Complainantís trademark rights, and that Complainant has not granted Respondent a license. While the Panel accepts the Complainantís representation that the Respondent does not have a license to the SECRET SHOPPER mark, this fact alone is not dispositive of whether Respondentís use of the mark in its business has been legitimate. Respondent contends that the mark is not strong enough to render a use by others in a similar industry ipso facto unfair and illegitimate. Respondent further contends that the mark is generic and thus unable to function as a trademark at all, but rather freely available for others to use.
The Panel finds that Respondentís use of the mark in its business was legitimate. The mark, if not generic, is at least sufficiently descriptive and weak so as to undermine Complainantís contention that Respondentís use of it as part of a business name is ipso facto improper.
The Complainant has demonstrated that it has an incontestable federal registration in the mark SECRET SHOPPER for business consulting services, namely evaluation of customer service. See Exhibit D to Complaint. However, not every trademark registration precludes the possibility of another partyís making legitimate use, in a particular business, of the trademark. Moreover, an incontestable registered trademark will be deemed abandoned if it becomes generic. 15 U.S.C. ß 1064(3), 1065(4) .
Under the trademark law of the United States, a federal registration is generally entitled to a strong presumption that the term is not generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed.), ß 12:12 . In light of that presumption, as well as the inherently limited scope of evidentiary presentations under the Policy, it is not the place of this Panel to make a binding determination as to genericness. Indeed, the genericness argument was raised for the first time in a Response to which Complainant has had no opportunity to respond. Because a full-scale adversary presentation of evidence relating to this issue may be required prior to a determination by a court of competent jurisdiction as to whether the presumption of trademark validity has been overcome, nothing herein should be deemed a full or final adjudication of that issue.
i. Partiesí Assertions
Complainant alleges that the mark SECRET SHOPPER is an indicator of source in the mystery shopping industry while the term "mystery shopper" is used as a generic term. In support of this Complainant offered:
1) its 1991 federal registration of the mark (Exhibit D to the Complaint);
2) the absence of other live U.S. trademark registrations or applications using the term "secret shopper" (though the Panel notes three dead intent-to-use applications);
3) Complainantís twelve years using the registered mark;
4) Complainantís investments in advertising and promotion; and
5) Complainantís use of the domain name <secretshopper.com>.
Respondent counters with the assertion that the mark SECRET SHOPPER is a generic term and offers in support:
1) evidence of generic use of "secret shopper" by someone other than the Complainant dating as early as 1983 (Exhibit A to the Response);
2) examples from third party commercial websites which use "mystery shopper" and "secret shopper" in a generic, interchangeable manner (Exhibit D to the Response);
3) examples from third party media websites which use "mystery shopper" and "secret shopper" in a generic, interchangeable manner (Exhibit E to the Response);
4) the first 150 results from a Google search of "secret shopper" (out of an asserted several thousand) the majority of which use the term "secret shopper" as a generic term to describe undercover shopping and customer service evaluation (Exhibits F and G to the Response); and
5) a list of third party mystery shopping websites at domain names using the term "secret shopper" (Exhibits F and H to the Response) including:
<secretshopper.net> and <secretshopnet.com>,
ii. Findings Regarding Legitimacy of Respondentís Use of Mark.
While it is ultimately the Complainantís burden to prove each of the three elements of Paragraph 4(a), its holding of an incontestable federal registration for the mark entitles it to a presumption that the mark is valid and not generic. This presumption shifts the burden of proof of genericness onto Respondent. McCarthy, ß 12:29.
Respondent has submitted a voluminous annex of exhibits in support of a finding of genericness Ė approximately 200 pages of materials which demonstrate considerable use of "secret shopper" as synonymous with "mystery shopper." Respondentís annex includes cited uses such as:
- "Mystery Shoppers are known as Secret Shoppers, Service Evaluators, Consumer Researchers, Customer Service Researchers, or Market Research / Evaluators." (from "www.justshop.org", website of the National Center for Professional Mystery Shoppers and Merchandisers)
- A Business Week article from 1983 noting the existence of "secret shoppers" used to patrol Pathmark stores. Retailing May Have Overdosed On Coupons, Business Week, June 13, 1983, at 149.
- Dozens of printouts of other third-party commercial websites which refer to "secret shopper programs" or "being a secret shopper" (e.g. "www.a-closer-look.com", "www.ucountonus.com", "www.pedge.com", "www.majesticimpressions.com/shopper.htm", etc.).
- Numerous media articles which use "secret shopper" as a generic term to describe undercover shopping services.
- Hundreds of search engine results which use "secret shopper" as a generic term to describe undercover shopping services.
The Panel need not, and does not, resolve the question of whether the mark is generic. The Panel finds, however, that Respondentís evidence creates a legitimate question as to whether the term "secret shopper" is associated in the minds of the public with the type of service provided by undercover customer service evaluators, rather than with any one such service provider. At the very least, the mark does not appear strong enough to warrant a conclusion that Respondentís seemingly bona-fide use of it over the past several years in connection with a business in the "mystery shopping" field should be deemed illegitimate.
Accordingly, pursuant to Paragraphs 4(c)(ii) and (iii) of the Policy the Panel finds that the Complainant has failed to prove that Respondent has no legitimate rights in the Domain Name.
C. Registration and Use In Bad Faith
Finally, Complainant bears the burden of proving that the Domain Name was registered and used in bad faith. Paragraph 4(b) of the Policy sets out four non-exclusive factors that should be considered when determining registration and use in bad-faith:
(i) registration primarily for the purpose of selling the Domain Name,
(ii) registration in order to prevent the trademark owner from using the Domain Name,
(iii) registration primarily for the purpose of disrupting a competitorís business, and
(iv) registration for intentional creation of likelihood of confusion.
Here, the Panel finds that the Complainant has shown none of the above categories of bad faith, nor has it demonstrated any other facts which would support a finding of registration and use in bad faith. Although Complainant does offer some evidence of actual confusion by way of misrouted emails, these are insufficient to conclude that Respondent has been operating its business under the Domain Name in bad faith.
Additionally, the existence of a federal registration of a mark is insufficient to show constructive notice of the mark if that mark is generic or even weakly descriptive. See Ciphergen Biosystems v. David Sabatini, WIPO Case No. D2002-0600 (September 12, 2002) (descriptive mark not entitled to presumption of notice). As there is no evidence in the record that Respondent had actual notice of Complainantís mark, the Panel cannot find that Respondent knew of, or should have known of, Complainantís mark. Nor, even if Respondent had (or should have had) such knowledge, has its usage of the Domain Name been shown to rise to the level of bad faith, as might have been the case if there were more persuasive evidence of the strength or fame of Complainantís alleged mark.
In sum, Complainant has failed to meet its burden of proving bad faith registration and use.
In light of the above findings, the Panel decides that Complainant has failed to meet the second and third elements of Paragraph 4(a) of the Policy. Complainant has not shown that Respondent lacks legitimate rights in the Domain Name or that Respondent registered and used the Domain Name in bad faith. Accordingly, the Panel decides that the Domain Name <secretshoppercompany.com> shall remain with the Respondent.
Michael A. Albert
Dated: August 23, 2003
1. A generic mark is a description of a product or service that cannot be used to indicate origin. McCarthy, ß12:1. For example the word SOAP cannot be used as a trademark to designate that the cleaning product comes from a particular manufacturer, nor can the term CARPET CLEANERS be used as a service mark to indicate the source or origin of carpet cleaning services. Generic marks describe what a service is, not who is providing the service.
2. McCarthy is a leading and frequently-cited treatise on trademark practice.