[Indexed as
Netgrocer v. Anchor]
[Indexed as
Netgrocer.org]
The National
Arbitration Forum
Administrative
Panel Decision
File No. FA0002000094207
Commenced:
February 29, 1999
Judgment:
April 7, 2000
Presiding Panelist: Nelson A. Diaz
Domain name Domain name dispute resolution policy Service Mark Confusingly similar Identical Legitimate interest - Bad faith registration Bad faith use.
Complainant was registered owner of service mark. Respondent registered the domain name <netgrocer.org>. Complainant alleged that its service mark and its web address, <netgrocer.com>, were identical to Respondents registered domain name and that Respondent had no legitimate interest in the domain name.
HELD, Name Not Transferred.
Complainant is the owner of the United States service mark NETGROCER, used in commerce since 1997 and registered in 1999. In addition, Complainant registered the domain name <netgrocer.com> in 1995 and has widely used this domain name on the Internet. The domain name <netgorcer.org>, registered by Respondent in 1999, is identical to and confusingly similar to Complainants registered service mark. The distinction between .org and .com is not significant in determining similarity.
Despite
the limited evidence, the Panel believes that it is reasonable to infer
that Respondent has no rights or legitimate interest in the domain name
in question.
However,
Complainant has not met its burden of proof on the issue of bad faith registration
and use. There is no evidence of an attempt by Registrant to sell
the domain name for profit. There is no evidence that Respondent
engages in a pattern of registering the trademarks of others as domain
names. There is no evidence that Respondent registered the domain
name for the purpose of disrupting the business of a competitor.
Finally, there is no evidence that Respondent intentionally attempted to
create a likelihood of confusion by registering the domain name <netgrocer.org>
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
Registration Agreement with Register.com, Inc., effective December 31, 1999
Panel Decision
referred to
--
Diaz, Panelist: -
1. The Parties
Complainant
is NetGrocer, Inc., located at 1112 Corporate Road, North
Brunswick,
N.J. 08902 ("Complainant"). Respondent is Anchor, located at
7131 West
Yarmouth Ct., West Bloomfield, MI 48322 ("Respondent").
2. The Domain Name(s) and Registrar(s)
The domain
name at issue is <netgrocer.org>. The registrar is Register.com,
Inc. (the
"Registrar"), 575 Eighth Ave., 11th Floor, New York, NY 10018.
3. Procedural History
The National
Arbitration Forum (the "Forum") received the complaint on February
25, 2000.
The Forum verified that the complaint satisfies the formal requirements
of
the ICANN
Uniform Domain Name Dispute Resolution Policy (the "Policy"), the
Rules for
Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the
Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy (the
"Supplemental
Rules"). The Forum thereafter sent the Respondent a notification of
the administrative
proceeding together with copies of the complaint. This
notification
was sent by the methods required under paragraph 2(a) of the Rules.
The formal
date of the commencement of this administrative proceeding is February
29, 2000.
On March 7, 2000, the Registrar verified to the Forum that:
1.The domain name at issue was registered with Register.com; and
2.That the registration for the disputed domain name was on "Hold"
status.
Respondent
did not submit a response to the complaint within twenty (20) days as
required by
Rule 5(a). The Administrative Panel issues its decision below based
upon the complaint,
the filed documents, the Policy, the Rules, and the
Supplemental
Rules without the benefit of any response from Respondent.
Complainant
first used the NETGROCER mark in commerce on May 4,
1997. Complainant
is currently the owner of the registered United States
service mark
NETGROCER (Registration No. 2,217,548) which was
issued on
January 12, 1999 for computerized on-line ordering services
featuring
consumer goods, namely groceries, in class 42 (U.S. CLS.100 and
101). Complainant
also has two pending trademark applications for
NetGrocer
(App. Nos. 75/508,254 and 75/480,948).
In addition,
Complainant registered the domain name <netgrocer.com> in
1995 and has
widely used this domain name on the Internet.
Respondent
registered the domain name <netgrocer.org> on December
31,1999. No
evidence was presented suggesting that there is an active web
site associated
with the <netgrocer.org> domain name.
5. Parties Contentions
A. Complainant
contends that Registrants domain name <netgrocer.org> is
identical to or substantially similar to Complainants NETGROCER service
mark.
B. Complainant
contends that Respondent has no rights or legitimate interest in
the disputed domain name.
C. Complainant
contends that Respondent registered and is using the domain
names in bad faith.
D Respondent
has not contested that the domain name is identical to or
confusingly similar to Complainants service mark.
E. Respondent
has not contested that it has no rights or legitimate interest in the
disputed domain name.
F. Respondent
has not contested that it has acted in bad faith in registering and
using the domain name.

To obtain relief
under paragraph 4(a) of the Policy, the Complainant must prove
each of the
following:
1.That the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the
Complainant has rights; and
2.That the Respondent has no rights or legitimate interest in the domain
name; and
3.That the domain name has been registered and used in bad faith.
A.
Similarity Between Registrants Domain Name and Complainants Service
Mark.
In this case, it is clear that the domain name registered by Respondent
is
identical to the registered service mark owned by Complainant. The
distinction between .org and .com is not significant in determining similarity.
The panel finds that the domain name is identical to and confusingly similar
to
Complainants registered service mark.
A. Respondents Rights or Legitimate Interest in the Domain Name.
Under paragraph
4(c) of the Policy, evidence of a registrants rights or legitimate
interest in
the domain name includes:
1.Demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services prior to the dispute;
2.An indication that the registrant has been commonly known by the
domain name even if it has acquired no trademark rights; or
3.Legitimate noncommercial or fair use of the domain name without
intent to divert consumers or to tarnish the trademark.
Respondent
has made no showing with respect to any of the above factors.
Similarly,
Complainant has asserted, without providing any affirmative evidence,
that Respondent
has no rights or legitimate interest in the domain name. Despite the
limited evidence,
the Panel believes that it is reasonable to infer that Respondent
has no rights
or legitimate interest in the domain name which is essentially identical
to Complainants
registered service mark, NETGROCER.
B. Respondents Bad Faith Registration and Use of the Domain Name.
Under paragraph
4(b) of the Policy, evidence of Respondents bad faith
registration
and use includes:
1. Circumstances indicating the domain name was registered for the
purpose of resale to the trademark owner or competitor for profit;
2. A pattern of conduct showing an attempt to prevent others from
obtaining a domain name corresponding to their trademarks;
3. Registration of the domain name for the purpose of disrupting the
business of competitor; or
4. Using the domain name to attract, for commercial gain, Internet users
to Respondents web site by creating a likelihood of confusion with
the trademark owners mark.
The Panel finds
that the Complainant has not met its burden of proof on the issue of
bad faith
registration and use. There is no evidence of an attempt by Registrant
to
sell the domain
name for profit. There is no evidence that Respondent engages in a
pattern of
registering the trademarks of others as domain names. There is no
evidence that
Respondent registered the domain name for the purpose of disrupting
the business
of a competitor. Indeed, there is no evidence of any use, much less
bad faith
use, of the contested domain name. Finally, the record contains insufficient
evidence to
establish that Respondent intentionally attempted to create a likelihood
of confusion
with Complainants mark which, after all, was not registered with the
U.S. PTO until
after Respondent had registered the domain name in question.
Accordingly,
the Panel finds that Complainant has failed to meet its burden of proof
on a prima
facie issue: Registrants bad faith in the registration and use of the
contested
domain name. Accordingly, under the standards applicable to this
proceeding,
the Panel concludes that Complainant is not entitled to relief on the
record presented.
7.Decision
We find
in favor of Respondent and deny Complainants request for relief under
paragraph
4 (i) of the Policy.
Date: April 7, 2000 Nelson A. Diaz
Presiding Panelist
AMENDMENT TO ADMINISTRATIVE PANEL DECISION
No.: FA0002000094207
THE NATIONAL ARBITRATION FORUM
P.O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA
NETGROCER,
INC.
1112 Corporate
Road
North Brunswick,
N.J. 08902
COMPLAINANT,
vs.
ANCHOR
7131 West
Yarmouth Ct.
West Bloomfield,
MI 48322
RESPONDENT.
File No.: FA0002000094207
This is an
Amendment to the Administrative Panel Decision with regard to the
domain name
dispute between the parties. The last sentence in the second to last
paragraph
in 6. Discussion and Findings above should read as follows: "Finally,
the record
contains insufficient evidence to establish that Respondent intentionally
attempted
to create a likelihood of confusion with Complainants mark by
registering
the domain name <netgrocer.org>."
The remainder of 6. Discussion and Findings remains unchanged.
Having considered
the above revision, the Panel reiterates its finding that
Complainant
has not met its burden of proof on the issue of bad faith registration
and use of
the contested domain name. Accordingly, the Panel reaffirms its decision
in favor of
Respondent and denies Complainants request for relief under
paragraph
4(i) of the Policy.
Date: April
11, 2000 Nelson A. Diaz
Presiding
Panelist
Name Not Transferred