WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saltworks, Inc. v. Gary Pedersen, Salt Works
Case No. D2013-0984
1. The Parties
Complainant is Saltworks, Inc. of Woodinville, Washington, United States of America, represented by
Revision Legal, United States of America
Respondent is Gary Pedersen, Salt Works of Mesa, Arizona, United States of America, represented by Udall Shumway, United States of America.
2. The Domain Name and Registrar
The disputed domain name <saltworks.us.com> is registered with CentralNic.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2013. On June 3, 2013, the Center transmitted by email to CentralNic a request for registrar verification in connection with the disputed domain name. On June 4, 2013, CentralNic transmitted by email to the Center verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the CentralNic Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “Rules”) and World Intellectual Property Organization Supplemental Rules for CentralNic 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 June 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2013. The Response was timely filed.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 4, 2013. 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 owner by way of assignment of registration of the word trademark SALT WORKS on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 2,954,938, registration dated May 24, 2005, in international class (IC) 30, covering “salt used for food”, asserting first use and first use in commerce of January 1, 1999. The filing date for this application was February 12, 2004. Complainant is owner of registration at the USPTO of the word trademark SALTWORKS, registration number 3,843,425, registration dated September 7, 2010, in ICs 3 and 30, covering “bath salts” and “salt and spices”, respectively, asserting first use and first use in commerce of February 6, 2002. Both of the aforesaid trademark registrations disclaim exclusive right to use “salt” apart from the mark as shown. Complainant has submitted applications for other goods and services registrations at the USPTO using the word term “saltworks”, and designs.
Complainant operates a commercial Internet website at “www.saltworks.us”, where it offers and sells “Gourmet Salts” and “Bath & Spa Salts” for retail and bulk purchase. Complainant has provided a screenshot printout from the Wayback machine Internet archive which Complainant states shows its use of the domain name <saltworks.us> as of December 5, 2002.1 Complainant has provided evidence that the domain name <saltworks.us> was registered by it on July 5, 2002. The Wayback machine webpage printout shows the name “Saltworks”, and refers to “Gourmet Salts” and “Bath & Spa Salts”, but it does not carry information that identifies a company in a particular geographic location other than in North America.2
Complainant’s current website includes a media archive with the earliest news release dated March 1, 2004.
Complainant provides a number of media stories regarding its Saltworks products dating back to 2004, including a listing of its Red Envelope Artisanal Sea Salt Sampler in “O, The Opera Magazine” in October 2007.
Respondent has provided a record from the Corporate Division of the Washington Secretary of State showing Complainant filing as a corporation on May 31, 2005.
According to CentralNic’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on May 5, 2008. CentralNic has verified that Complainant participated in CentralNic mediation involving the disputed domain name, and that the mandatory mediation period prior to initiating a dispute under the CentralNic Policy terminated.
Respondent has provided substantial evidence that it has done business in Arizona under the name “Salt Works” since 1999. Such evidence includes a State of Arizona Department of Revenue Transaction Privilege Tax License for an enterprise doing business as “Charlie Pepper Salt Works”, effective September 1, 1999; numerous invoices issued by “Salt Works” to various enterprises, including local school districts, feed mills, manufacturers, fuel distribution companies, hotels and resorts, senior care complexes, and so forth. On its promotional materials, on its invoices, and in applying for vendor identification numbers, Respondent has routinely referred to itself as “Salt Works”, and sometimes as “Charlie Pepper Inc., D.B.A. Salt Works”. Purchase orders issued by customers of Respondent have been issued in favor of “Salt Works”. Respondent has used various email addresses that incorporate “saltworks” (e.g., “saltworks@[...].net” and “saltworksoffice@[...].net”).
Respondent markets and sells water treatment, water softening and animal nutrition salt products to municipal water treatment facilities, hospital power plants for water filtration, hotel boiler rooms for water softening, to animal feed mixers and to other customers. Respondent has provided photographs of large tank trucks used to transport its salt products that are identified by “Salt Works” on the cabs. On its commercial website at the disputed domain name <saltworks.us.com>, Respondent describes its business, inter alia, as follows:
“Salt Works is the leading provider of salt in the West. We offer a variety of products and services, including pure extra-course salt, fine grade salt, iodized salt, colbalt iodized salt, pellet salt, pool salt, and more. And we provide salt for a variety of different applications, which include water treatment, industrial water softening, and dairy type applications.
But we are much more than just a Phoenix salt company. We also provide several minerals and chemicals to help you provide the best maintenance and care to meet your agricultural needs, whether it be for a family-owned farm or a large corporate firm. Some of the products we provide specifically for farm and animal use include Big 6 Trace Mineral, which is great for weight gain, feeding efficiencies, and overall performance, and Hi-Salt for improved feed utilization, animal growth, and optimal reproduction.”
In addition, the domain name <saltworks.com>, which is not at issue in this proceeding, directs Internet users to the website of the “Anguillas Saltworks Company” (based in the Caribbean) which offers and sells fragranced bath salts under names such as “Rendezvous Bay” and “Little Bay”. The website at the domain name <saltworks.com> indicates that the Company was established in 2000, though it is not clear when products were first offered to the public. There is a copyright notice on the website homepage for 2000-2006.
The Registration Agreement in effect between Respondent and CentralNic 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 claims that it has rights in the trademarks SALT WORKS and SALTWORKS (hereinafter referred to as SALTWORKS marks) established by use in commerce and as evidenced by registration at the USPTO.
Complainant contends that its SALTWORKS marks are “well known across the world”, referring to a number of countries where its products have been sold, and to various media stories.
Complainant contends that it began using the SALTWORKS marks in 1999, and that it has common law trademark rights in SALTWORKS.
Complainant argues that Respondent registered the disputed domain name on May 5, 2008, that the website under the disputed domain name prominently displays the term “Salt Works” as a trademark, and that Respondent registered the disputed domain name approximately nine years after Complainant first used the trademark SALT WORKS in commerce, and approximately three years after Complainant first registered it at the USPTO. Complainant argues that the date of first use and first use in commerce listed on its applications at the USPTO demonstrate that it has used SALTWORKS marks in commerce since 1999.
Complainant contends that the disputed domain name is identical or confusingly similar to its SALTWORKS marks.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s trademark rights; (2) Complainant has not authorized Respondent to use its trademark; (3) Respondent is not commonly known by the name “Salt Works” because Respondent, according to Arizona Department of State records is known as “Charlie Pepper, Inc.” and did not adopt “Salt Works” as a trade name until November 13, 2012; (4) prior to notice of this dispute, Respondent did not make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (5) Respondent’s salt is likely to be confused with Complainant’s salt products as originating from the same source; (6) Respondent is selling the same product (i.e. salt) as Complainant, and; (7) Respondent registered the disputed domain name with actual or constructive notice of Complainant’s trademark.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name with prior knowledge of Complainant’s trademark and for purposes of profiting from Complainant’s well-known trademark and disrupting Complainant’s business by diverting confused consumers to Respondent’s website; (2) Respondent registered the disputed domain name approximately nine years after Complainant first used the trademark SALT WORKS in commerce, six years after Complainant first used it on the Internet, and three years after Complainant first registered it at the USPTO; (3) Respondent has used the disputed domain name to disrupt Complainant’s business, and to attract Internet users by creating a likelihood of confusion with Complainant’s trademark, including by creating initial interest confusion; (4) Respondent has heightened the likelihood of Internet user confusion by using the same blue and white color scheme on the website under the disputed domain name as the one on Complainant’s website.
Complainant requests the Panel to direct CentralNic to transfer the disputed domain name to Complainant.
Respondent argues that Complainant was not organized under the laws of the State of Washington until 2005. Respondent contends that Complainant has not been the largest United States supplier of sea salt and exotic salt since 1999 as it was not organized until 2005. Respondent argues that none of Complainant’s evidence shows that it has been selling its products for over fourteen years.
Respondent argues that Complainant’s product line is limited to sea salt and bath salts, and does not include water treatment, water softening and animal nutrition salt products marketed and sold by Respondent. Respondent argues that its customer base and Complainant’s customer base are distinct and different.
Respondent contends that the evidence does not show that Complainant owns registration of the <saltworks.us> domain name because it is registered under the name of another company, and Complainant did not exist at the time of that registration.
Respondent contends that the trademark SALTWORKS was originally used by a registrant at the USPTO other than Complainant (i.e. […] Cohen). The initial USPTO registrant, Mr. Cohen, secured registration covering “salt used for food”, and Complainant was assigned the trademark.
Respondent argues that the term “saltworks” has been in common Internet use by others since 2002, and that the domain name <saltworks.com> was registered by a third party on June 17, 2001, over a year before Complainant alleges that it registered its domain name <saltworks.us>.
Respondent contends that none of Complainant’s trademark registrations or applications for registration cover Respondent’s products and services. Complainant’s goodwill and common law rights, to the extent they exist, cover only sea salts and bath salts.
Respondent contends that it has been doing business as “Salt Works” since 1999. Respondent states that Complainant’s evidence confirms that Respondent is in a different business than Complainant. Respondent states that when it registered the disputed domain name on May 5, 2008, it did not know of Complainant and did not attempt to research companies using similar domain names, but that the website designer contracted by Respondent indicated that the disputed domain name was available. Respondent has been using the trademark SALT WORKS since 1999 throughout its market area and has acquired common law rights in its trademark.
Respondent alleges that the evidence shows that it began using its trademark in commerce about six years before Complainant began using its trademark in commerce, about three years before Complainant first claimed to use its trademark on the Internet, and about six years before Complainant first registered its SALTWORKS trademark at the USPTO.
Respondent does not dispute that Complainant has ownership rights in the SALTWORKS marks (including SALT WORKS) as registered at the USPTO, but disputes when those trademark rights arose. Respondent claims that the evidence does not show usage by Complainant of the trademark prior to its formation in 2005.
Respondent indicates that the disputed domain name differs by the addition of the generic Top-Level Domain (gTLD) suffix “.com” from Complainant’s domain name <saltworks.us>, but that in any case the most cursory view of the website under the disputed domain name indicates that it deals with goods that are entirely distinct, and are not remotely competitive, with those of Complainant. Respondent has provided evidence of a third party owner of registration of the domain name <saltworks.com> other than Complainant, indicating that similarity between domain names is not a major concern even among direct competitors in Complainant’s line of business. Respondent contends that there is no likelihood of consumer confusion based on its use of the disputed domain.
With respect to rights or legitimate interests, Respondent argues that it has been using the SALT WORKS trademark since at least September 1, 1999 in bona fide offerings and sales of goods and services, and that Respondent has acquired common law rights to its trademark which corresponds closely to the disputed domain name. Respondent contends that it acquired those trademark rights before Complainant acquired rights to its trademark. Respondent contends that it was unaware of Complainant and/or its trademark when it registered the disputed domain name. Respondent refers to the evidence it has provided regarding its on use of the SALT WORKS trademark in commerce, and states that this shows bona fide offers and sales prior to notice of this dispute. Given the wide difference between the products and markets of Complainant and Respondent, there is no evidence that any customers of Complainant would be led to believe that Respondent is the source of Complainant’s products. Respondent argues there is no legal authority or support for Complainant’s proposition that because the products of the businesses contain salt the product lines are identical or similar.
With respect to bad faith registration use, Respondent states that Complainant has provided no evidence to support any of the conclusory allegations it has made. Given the wide difference between the product lines of Complainant and Respondent, Respondent could not realistically profit from Complainant’s trademark or divert confused consumers to its website. There is no evidence that Respondent registered the disputed domain name to disrupt Complainant’s business. Respondent began using the SALT WORKS trademark before Complainant was formed or started doing business, and Respondent could not have adopted its trademark to take advantage of Complainant.
Respondent indicates that decisions under the Policy do not support the concept of constructive knowledge of a trademark. Respondent contends that Complainant’s evidence is insufficient to establish that it has a well-known trademark.
Respondent contends that Complainant has provided no evidence that it competes with Respondent.
Respondent contends that blue and white color schemes are ubiquitous on the Internet, and that a simple comparison of Complainant’s and Respondent’s websites shows that there is no similarity in look or feel. The fonts and colors shadings are different, and Respondent uses its own fanciful logo.
Respondent request the Panel to deny the Complaint.
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 the 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 the Complaint to Respondent and Respondent filed its Response in a timely manner. The Panel is satisfied that Respondent was notified of the Complaint 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) the domain name is identical or confusingly similar 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 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 had provided evidence of registration of the trademarks SALT WORKS and SALTWORKS on the Principal Register of the USPTO. The first registration for SALT WORKS is dated May 24, 2005, and covers “salt used for food”. This registration was acquired by assignment. Complainant has not provided evidence regarding the facts underlying that assignment.3 The application for registration associated with the first registration claimed date of first use and first use in commerce of January 1, 1999. Complainant registered the trademark SALTWORKS covering bath salts, and salt and spices, on September 7, 2010, claiming date of first use and first use in commerce of February 6, 2002. For convenience, both of Complainant’s trademarks are hereinafter referred to as SALTWORKS, unless expressly indicated otherwise.
Complainant had provided evidence of it use of the term “Saltworks” in commerce on the Internet. The earliest evidence appears to be from December 5, 2002 in the form of a printout of a single rudimentary webpage identified as SaltWorks and offering “Gourmet Salts” and “Bath & Spa Salts” (See Factual Background, supra). The earliest press release information regarding Complainant on the record of this proceeding is dated March 1, 2004.
Complainant has argued that it has common law rights in the trademark SALTWORKS that predate the initial USPTO registration of its trademark. The evidence furnished by Complainant is insufficient for that purpose. The term Saltworks is descriptive of Complainant’s products, and Complainant has not shown consumer or Internet user association with its trademark prior to the date of initial registration.
Because the Lanham Act confers exclusive rights dating back to the filing date of an application for registration, contingent on the grant of registration, Complainant has established trademark rights as of February 12, 2004 based on its initial application (by way of assignment). (A trademark registration applicant’s claimed date of first use and first use in commerce is not evidence of trademark usage, and does not establish any evidentiary presumption in favor of the applicant. See, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033.)
The Panel determines that Complainant has rights in the trademark SALTWORKS.
The disputed domain name <saltworks.us.com> uses Complainant’s SALTWORKS trademark in conjunction with the domain extension “.us.com” offered by CentralNic. The Panel determines on the basis of the direct incorporation of the term “saltworks” that the disputed domain name is confusingly similar to Complainant’s SALTWORKS trademark.4
The Panel determines that Complainant has rights in the trademark SALTWORKS and that the disputed domain name is confusingly similar to that 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)). Paragraph 4(c) of 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.”
Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s trademark rights; (2) Complainant has not authorized Respondent to use its trademark; (3) Respondent is not commonly known by the name “Salt Works” because Respondent, according to Arizona Department of State records is known as “Charlie Pepper, Inc.” and did not adopt “Salt Works” as a trade name until November 13, 2012; (4) prior to notice of this dispute, Respondent did not make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (5) Respondent’s salt is likely to be confused with Complainant’s salt products as originating from the same source; (6) Respondent is selling the same product (i.e. salt) as Complainant, and; (7) Respondent registered the disputed domain name with actual or constructive notice of Complainant’s trademark.
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name; however, Respondent has successfully rebutted that prima facie case.
Respondent has provided substantial evidence of use in commerce of the business identifier “Salt Works” dating back to 1999. While some documentation refers to Respondent as Charlie Pepper, Inc. DBA Salt Works, and while certain of Respondent’s design logos use both the term “Charlie Pepper” and “Salt Works”, a very substantial number of Respondent-related documents in the form of invoices and promotional materials use the term “Salt Works” standing alone, and documentation makes evident that Respondent’s customers commonly refer to it as “Salt Works”. The evidence of continuous and substantial usage by Respondent of the term “Salt Works” in identifying its business and services establishes that Respondent has been commonly known by the disputed domain name, whether or not Respondent has established common law trademark rights in that term.
Because Respondent has been commonly known by the disputed domain name, it is not necessary to determine whether Respondent has also made use of a name corresponding to the domain name for a bona fide offering of goods or services prior to notice of this dispute. Nonetheless, based on the long use by Respondent of the name “Salt Works” corresponding to the disputed domain name, and the absence of evidence that Complainant was doing business under that name as early as Respondent, the Panel determines that Respondent used the disputed domain name for a bona fide offering of goods and services prior to notice of this dispute.
The Panel determines that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name. Because Complainant has failed to establish an element necessary for a finding of abusive domain name registration and use, the Panel need not address the element of bad faith registration and use. Complainant’s request for relief is denied.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: July 15, 2013
1 The particular screenshot printout provided by Complainant appears to show an archive date of February 2, 2003, though the relationship between the various dates on the printout is not clear.
2 A single Wayback machine homepage printout of the type provided by Complainant does not necessarily show all of the information that may have been included at the identified website at the relevant time. In the absence of better information from Complainant, the Panel cannot presume what other information may have been available on the website.
3 The Panel has visited the USPTO Trademark Status & Document Retrieval website facility and determined that Complainant acquired the SALT WORKS trademark by assignment executed on December 13, 2007, from an enterprise named "The Mate Factor, LLC.” Panel visit to “www.uspto.gov”, on July 15, 2013. Complainant or Respondent could have, but did not, furnish such information.
4 The “.us.com” extension employed by CentralNic is lengthier than the “.com” or “.us” TLD standing alone, and in some other circumstance use of the “.us.com” extension with a variation on a trademark term might entail avoidance of confusing similarity. The Panel does not consider it necessary to explore such hypothetical circumstances, particularly in view of its denial of the Complaint.