Complainant is Mariposa Ltd. of Manchester, Massachusetts, United States of America, represented internally.
Respondent is Stonecutter, Don Sawtelle of Coulterville, California, United States of America.
The disputed domain name <mariposa.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2010. On February 11, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 11, 2010, eNom transmitted by email to the Center its verification response confirming that Respondent is 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” 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 February 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2010. The Response was filed with the Center on March 16, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 19, 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.
By email dated March 17, 2010, Complainant filed a supplemental reply in response to the Response. By email dated March 17, 2010, Respondent provided supplemental information with respect to its Response; by email dated March 18, 2010 Respondent filed a supplemental reply to Complainant's March 17, 2010 email, and; by email dated March 18, 2010 Respondent further provided additional information. Complainant by email dated March 19, 2010 responded to Respondent's supplemental filings. Respondent resent its first March 18, 2010 email on March 20, 2010.
Although some of the supplemental information filed by the parties is not material to the Panel's determination in this proceeding, the Panel has accepted the filings and considered them.
Complainant registered the word trademark MARIPOSA on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3523247, dated October 28, 2008, in international classes 6, 8, 11, 20, 21 and 35. This registration covers, inter alia, bottle stoppers, tableware, candle lanterns and a range of household utensils, as well as “computerized on-line wholesale ordering services” regarding the aforesaid items. The application for registration was filed on August 10, 2007. The application for registration indicated a date of first use and first use in commerce in each of the classes of January 7, 1980. The registration documentation of the USPTO indicates that “The English translation of the word ‘MARIPOSA' in the mark is ‘BUTTERFLY'.”
The Complaint does not document specific use of the MARIPOSA trademark by Complainant, except as referred to in the USPTO trademark register. Although supplemental filings by Complainant refer to Internet user searches for its domain name by its customers, no documentary evidence as to Complainant's actual usage of its trademark in commerce accompanies its submission. The Panel has not independently attempted to locate Complainant's business on the Internet or elsewhere.
According to the Registrar's verification report, Respondent is registrant of the disputed domain name. According to an InterNIC WhoIs database report submitted by Complainant, the record of registration for the disputed domain name was created on May 12, 1995.
Through the date of commencement of this administrative proceeding, Respondent used the disputed domain name to direct Internet users to a website headed “STONECUTTER”, followed by “web technology & communication”, and stating:
At STONECUTTER (est. 1987) we apply technology, design, and the written word to create interactive web applications. We handle 100% of any web project or work as a team with your agency, PR firm or IT department. We also develop multi-platform software, do print design, write manuals, create databases and enhance business plans.
Respondent is based in Mariposa County, California. Respondent has provided evidence that since 2001 it has maintained the website of the Mariposa County Library of Mariposa County, California (see Wayback archive data at “http://web.archive.org/web/20020608001226/www.mariposalibrary.org/home.html”). Respondent's Stonecutter firm is listed as the web designer of the Mariposa County Library as of 2002. Respondent has further provided evidence that it maintains the website of Mariposa Lodge in Mariposa, California. Respondent indicates that it has been developing a public information site regarding Mariposa County for “some time”, but that it was unable to provide documentary evidence of this because of the “registrar freeze” placed on its account in connection with this dispute.
The USPTO TARR database lists 16 active trademark registrations of the term “Mariposa” standing alone, including that of Complainant. There are additional applications for registration at the USPTO of the term standing alone, and applications and registrations for the term used in combination with other terms.
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)).
Complainant alleges that it has rights in the trademark MARIPOSA based on registration at the USPTO, and that the disputed domain name is identical or confusingly similar to its trademark.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent does not own a trademark registration for MARIPOSA, and that Respondent's sole use of the disputed domain name is to re-direct Internet users to a website promoting its Stonecutter business.
Complainant argues that the disputed domain name was registered and used in bad faith because Internet users are re-directed by the disputed domain name to the “www.stonecutter.com” website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent argues that Complainant's trademark registration covers a limited number of goods and services, and cannot be used “in any way [to] restrict other individuals, businesses and organizations from using the word ‘mariposa' in connection with goods and services unrelated to those named by the complainant's trademark registration.”
Respondent alleges that it does not require trademark registration to use the term “Mariposa”, which refers to a county that is a gateway to Yosemite National Park, including to provide information concerning the municipality and county of Mariposa. Respondent states that there are a substantial number of trademark registrations for the term “Mariposa”. Respondent states that it is in the process of developing a website using the disputed domain name to provide public information concerning the “Mariposa” geographic area. Respondent further argues that it directed the disputed domain name to its Stonecutter website as a matter of convenience, and has not derived any economic benefit from this use.
Respondent requests the Panel to reject Complainant's request for transfer of the disputed domain name.
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 transmitted the Complaint and notification of commencement of the proceeding to Respondent, and Respondent submitted a Response and supplemental filings. The Panel is satisfied that each party had adequate opportunity to present its position in this proceeding.
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.
Complainant has provided evidence of its registration of the word trademark MARIPOSA on the Principal Register of the USPTO. Registration of a trademark on the Principal Register establishes a presumption of rights in the mark. Although Complainant has not provided documentary evidence showing use of the trademark in commerce, Respondent has not challenged the validity of Complainant's trademark registration as such. The Panel determines that Respondent has rights in the trademark MARIPOSA based on the presumption arising from registration.
The disputed domain name is identical to the trademark within the meaning of the Policy.
The Panel determines that Complainant has established rights in the trademark MARIPOSA and that the disputed domain name is identical or confusingly similar to that trademark.
Complainant has made a prima facie argument as to a lack of rights or legitimate interests in the disputed domain name on the part of Respondent, and Respondent has made arguments to rebut that presumption. Because Complainant must satisfy all three elements of the Policy in order to demonstrate abusive domain name registration and use, and because Complainant has not established that the disputed domain name was registered and used in bad faith, the Panel exercises administrative economy and does not further address the issue of Respondent's rights or legitimate interests in the disputed domain name.
In order to be found to have engaged in abusive domain name registration and use, Respondent must have registered and used the disputed domain name to take unfair advantage of Complainant's rights in its trademark.1 Respondent's bad faith intention could be evidenced in paragraph 4(b) of the Policy, which provides a non-exhaustive list of bad faith conduct.
As a matter of general principle under the Policy, Respondent could not have acted to take unfair advantage of Complainant's rights in a trademark before those rights arose. A finding that Respondent registered and used the disputed domain name in bad faith presupposes that Complainant had trademark rights that could be unfairly exploited at the time of domain name registration. See, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033; Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333; Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet, WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie / Symbility, WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074.2
The disputed domain name was registered by Respondent on May 12, 1995. Complainant's MARIPOSA trademark was registered by the USPTO on October 28, 2008, some 13 years following registration of the disputed domain name. In replying to Respondent's submissions, Complainant has referred to the dates of first use and first use in commerce of the mark in 1980 asserted in its application for registration at the USPTO. However, Complainant has presented no documentary evidence in this proceeding that would support a claim of trademark use in 1980. Since Complainant's trademark term is otherwise used as a geographic term, and is also a commonly used term in the Spanish language (for “butterfly”), Complainant would have to present substantial evidence to establish secondary meaning in connection with its trademark in order to establish rights based on use (i.e., common law rights) dating back prior to May 12, 1995.
The Panel recalls from its decision in Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033, a discussion of “.... the legal significance of the date of first use asserted in a trademark application, the relevance of the filing date, and the date on which the trademark is registered. For example, in Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333:
Complainant alleges that it holds common law rights to those marks that arose prior to their registration at the USPTO. Among other things, Complainant refers to its claimed dates of first use and first use of the trademarks in commerce on its applications for registration that substantially predate those applications.
The date of application for trademark registration serves as constructive first use contingent upon issuance of the registration. The U.S. Lanham Act provides:
Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing--
(1) has used the mark; (15 U.S.C. §1057)
The dates of first use and first use in commerce claimed on a trademark application do not establish an evidentiary presumption in favor of a trademark registrant. As McCarthy notes: ‘The allegation of a date of first use in a use-based application for registration is not evidence of a date of first use on behalf of an applicant or registrant.' [footnote omitted] 3 McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.) McCarthy also notes: ‘In inter partes proceedings, a trademark registration resulting from a use-based application is proof of use only as of its filing date, not of the date of first use alleged in the application.' [footnote omitted] (Id.)”
In the instant proceeding, Complainant has provided no documentary evidence to support the dates of first use and first use in commerce referenced in its trademark application. There is no evidentiary basis by which the Panel might reasonably conclude that Complainant held rights in the MARIPOSA trademark prior to the May 12, 1995 date on which Respondent registered the disputed domain name. The disputed domain name incorporated a geographic term designating the place where Respondent's business is located, and there was no federal trademark database record of Complainant's alleged usage for Respondent to research. Respondent would not reasonably have been on notice of a claim of common law trademark rights by Complainant.
The Panel determines for purposes of this proceeding that Complainant has established trademark rights as of the date of its trademark registration, October 28, 2008, which may further establish a presumption of rights relating back to its application for registration on August 10, 2007. Since those presumptive trademark rights arose more than a decade following Respondent's registration of the disputed domain name, Respondent could not have sought to take unfair advantage of such rights when it registered the disputed domain name.
The Panel determines that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy.
The Panel notes in conclusion that even if Complainant had been able to demonstrate common law rights in the MARIPOSA mark arising prior to Respondent's registration of the disputed domain name in 1995, Complainant would almost certainly not have succeeded in this proceeding. Respondent demonstrated that it has long acted as a website design and service provider for clients whose names include the geographic term “Mariposa”, and Respondent operates its business from the Mariposa, California geographic area. There was good reason for Respondent in 1995 to consider that registration of the disputed domain name incorporating the geographic area where its clients and its business resided would prove useful in connection with a bona fide offering of services to those clients (or for its own business). Respondent's activities in connection with the disputed domain name appear to have been undertaken in good faith, and Respondent's website does not convey an intent to take advantage of Complainant's recently registered trademark. While Complainant may consider that it has a “better claim” to the term “Mariposa” than Respondent, that is not sufficient to establish abusive domain name registration and use.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: March 28, 2010
1 Paragraph 4(b) of the Policy establishes the required demonstration of bad faith, providing:
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
2 There are some panel decisions under the Policy in which bad faith registration and use has been found notwithstanding that trademark rights had not been established at the time of domain name registration, as limited exception to the general sequencing principle. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845. Some panels have used the public announcement of a forthcoming product or service launch as the basis for effectively establishing trademark rights in the making. No such exceptional circumstances are present in this proceeding.