Tillamook County Creamery Association
CES Marketing Group
[Indexed as: Tillamook County Creamery v. CES Marketing]
[Indexed as: TILLAMOOK.COM]
National Arbitration Forum
Administrative Panel Decision
Forum File No.: FA0003000094345
Commenced: 24 March, 2000.
Judgment: 26 April, 2000.
Presiding Panelist: Judge Karl V. Fink (Ret.)
Domain name - Domain name dispute resolution policy - U.S. Trade Mark - Identical - Confusingly similar - Bad faith registration - Cybersquatting.
Complainant had been using the trade mark "TILLAMOOK" since 1918 in connection with cheese, ice cream and other products, and has numerous related domain names already registered. Respondent registered TILLAMOOK.COM in late 1996 allegedly intending to use the domain as a geographically-named email forwarding service, yet it offered to sell the domain name to Complainant for $6,000.00.
Held, Name Transferred to Complainant.
The domain name is identical or confusingly similar to Complainant's trade mark. There is no evidence that Respondent had any legitimate interest in the domain name. The offer to sell the domain name for an amount in excess of out-of-pocket expenses is clear evidence of bad faith use and registration.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.
Fink, Panelist -
The above entitled matter came on for an administrative hearing on April 26, 2000 before the undersigned on the Complaint of Tillamook County Creamery Association, hereafter "Complainant", against CES Marketing Group, hereafter "Respondent". Complainant was represented by Ben C. Fetherston, Jr., Post Office Box 2206, Salem, Oregon 97308. David Wotherspoon, Fasken, Martineau, DuMoulin, 2100-1075 West Georgia Street, Vancouver, BC V6E 3G2, Canada represented the Respondent. Upon the written submitted record, the following DECISION is made:
Domain Name: Tillamook.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: CES Marketing Group
Date of Domain Name Registration: October 9, 1996
Date Complaint Filed: March 23, 2000
Due Date for a Response: April 13, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)l and Rule 4(c): March 24, 2000
After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on March 24, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).
On October 9, 1996, Respondent registered the domain name "Tillamook.com" with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.
FINDINGS OF FACT
1 .Complainant owns the following federally registered trademarks for TILLAMOOK: 533,033 and 1,390,970.
2. Complainant first registered the mark "TILLAMOOK on November 7, 1950. Complainant first used the mark "TILLAMOOK" on April 15, 1918. Complainant first used the mark "TILLAMOOK" in commerce on April 15, 1918.
3. Complainant has widely and continuously used the mark "TILLAMOOK" in connection with cheese, butter, ice cream and other products. Through extensive use on products and in advertising, TILLAMOOK has become a famous mark. Complainant has numerous domain name registrations used in connection with its on-line activities directly related to its trademark and its products. Those names include: Tillamookcheese.org, Tillamookcheese.net, Tillamookcreamery.com, Tillamook-cheese.com, Tillamookcheese.com, Tillamookfoodsales.com, Tillamookfoods.com, and Tillamook.org.
4. On October 9, 1996, Registrant registered the domain name in controversy, "Tillamook.com" with the Registrar, Network Solutions.
5. The Registered domain name, "Tillamook.com", is identical or confusingly similar to the trademark or service mark in which the Complainant has rights and the Respondent does not have any right or legitimate interest in respect of the domain name, "Tillamook.com", which is the subject of the complaint.
6. Both before and after the Respondent had notice of the dispute, the Respondent never made any actual use of the domain name. The Respondent has not used the domain name in connection with a bona fide offering of goods or services, is not commonly known by the domain name, and is not making a legitimate noncommercial or fair use of the domain name.
7. Respondent registered and used the domain name, "Tillamook.com", in bad faith as is evidenced by the circumstances which indicate that Respondent registered the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant who was the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name. The Respondent offered to sell the domain name to Complainant for $6,000, an amount in excess of out of pocket costs directly related to the domain name.
8. The exclusivity of Complainant's trademark is protected under United States law.
9. No evidence has been presented that Respondent has any right or legitimate interest to the domain name as provided in Rule 4(c).
10. Complainant's prayer for relief requests that the domain name be transferred to Complainant.
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:
1. The domain name "Tillamook.com", registered by Respondent on October 9, 1996, with Network Solutions, is identical or confusingly similar to Complainant's trademark TILLAMOOK.
2. Respondent has stated that it plans to develop the site "Tillamook.com" into an e-mail forwarding business and it has offered evidence that it intends to do so with other geographic name sites. Despite this assertion it is found that Respondent, which has no claimed connection to the region Tillamook and no prior use of the name, has no right or legitimate interests in Tillamook.com..
3. Respondent registered and used the domain name in bad faith as evidenced by circumstances indicating that Respondent registered and acquired the domain name "Tillamook.com" primarily for the purpose of selling, renting or otherwise transferring the said domain name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name.
4. Under ICANN's Uniform Domain Name Dispute Resolution Policy Complainant has proven that the domain name should be transferred to Complainant.
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "Tillamook.com" REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT.
Domain Name Transferred