v.
National Trade Publications, Inc.
[Indexed as: Tall Oaks Publishing v. National Trade Publications]
[Indexed as: ULTRAPUREWATER.COM]
National Arbitration Forum
Administrative Panel Decision
Forum File No.: FA0003000094346
Commenced: 24 March, 2000.
Judgment: 5 May, 2000.
Presiding Panelist: Jonathan Hudis
Domain name Domain name dispute resolution policy U.S. Trade Mark Identical Confusingly similar Initial interest confusion Disrupting competitors Generic trade marks Descriptive trade marks Acquired distinctiveness.
Complainant is the owner of several trade mark registrations for ULTRAPURE WATER in connection with water-related technical periodicals. Respondent registered ULTRAPUREWATER.COM and used the domain to redirect web users to its Water Technology Online web site. Respondent is a direct competitor with Complainant, but alleges it is making a legitimate fair use of the domain name and that Complainants trade mark is generic.
Held, Name Transferred to Complainant.
The domain name is legally identical to Complainants mark, as the
lack of a space in the domain name is not a sufficient distinction.
Respondent has not shown that it is commonly known by the name ULTRAPURE
WATER or ULTRAPUREWATER.
The term ULTRAPURE WATER is a generic term, but only in relation
to a type of water, not, as the Complainants mark, in relation to
publications. The mark ULTRAPURE WATER is merely descriptive, and
little evidence was brought forth to prove that the mark had acquired distinctiveness
over its years of use. However, Respondent has twice attempted to purchase
Complainants publication, which the Panel considers to be admissions
of a party opponent that Complainants mark has achieved some level of
recognition and distinctness.
Respondent is not making descriptive fair use of the mark, as the
domain name takes web users directly to Respondents home page, and not
to subsidiary pages on water treatment. Furthermore, there is evidence
that Respondent has registered the legal equivalents of other competitors
trade marks, showing a pattern of bad faith registration. The registration
is sufficient to cause initial interest confusion"a process in which
internet users looking for information on a topic become indifferent to
the source of the information.
Cases referred to:
World Wrestling Federation Entertainment, Inc. v. Michael Bossman,
WIPO Dispute No. D99-0001
Robert Ellenbogen v. Mike Pearson, WIPO Dispute No. D00-0001.
Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4, 9 (2d
Cir. 1976).
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.
1961).
Brookfield Communications, Inc. v. West Coast Entertainment Corp.,
174 F.3d 1036, 1062-1063 (9th Cir. 1999).
Hudis, Panelist
Procedural Findings
The Arbitrator's oath of impartiality and independence is already on
file with the National Arbitration Forum ("NAF"). On April 27, 2000, NAF
contacted the undersigned to solicit interest in serving as an Arbitrator
for this Administrative Proceeding. After confirming that neither the Undersigned
nor the Arbitrator's law firm had a conflict in this matter, the Undersigned
accepted the appointment on April 28, 2000. NAF transmitted the case file
to this Panel for decision on April 28, 2000, by e-mail and Priority Mail.
Domain Name: ultrapurewater.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: National Trade Publications, Inc.
13 Century Hill Drive
Latham, New York 12110 USA
Date of Domain Name Registration: April 23, 1996
Date Complaint filed: March 21, 2000
Date of Commencement of Administrative Proceeding in Accordance with
Rule
2(a) and Rule 4(c): March 24, 2000
Due date for a Response: April 13, 2000
Respondent's Response was filed: April 24, 2000
1. On March 16, 2000, Complainant submitted a Complaint to the NAF
pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy")
implemented by the Internet Corporation for Assigned Names and Numbers
("ICANN") on October 24, 1999, under the rules for the UDRP Policy implemented
by ICANN on the same date ("UDRP Rules"). The Complaint and exhibits were
received by NAF on March 21, 2000. The Complainant elected to proceed before
a single arbitrator. NAF acknowledged receipt of the Complaint by facsimile,
sent to the Complainant on March 23, 2000. In its Acknowledgment Letter,
NAF notified Complainant that the Respondent information it provided was
not correct. Complainant provided an Amended Complaint to NAF that same
day, March 23, 2000, by facsimile. NAF formally commenced the captioned
Administrative Proceeding on March 24, 2000 and notified the Registrar
thereof.
2. On March 28, 2000, the Registrar, Network Solutions, Inc., ("NSI"),
confirmed by e-mail that: (i) it received the Commencement of Administrative
Proceeding from NAF, (ii) it received a copy of the Complaint from the
Complainant; (iii) NSI is the Registrar for the domain name at issue; and
that (iv) Respondent, National Trade Publications, Inc., is the current
Registrant of the domain name.
3. NAF forwarded its Complaint Notification Instructions and Complaint
to Respondent, notifying Respondent that an Administrative Proceeding had
been filed against it with respect to the subject domain name. NAF required
Respondent to submit its Response to the Complaint by no later than April
13, 2000.
4. Respondent's Response and Exhibits are dated April 24, 2000. Although
apparently late, Respondent's submission has been fully reviewed and considered.
Respondent has elected to proceed before a single arbitrator. On April
27, 2000, Complainant submitted a Supplement to Complaint Reflecting New
Information to NAF by facsimile. On April 28, 2000, Respondent filed with
NAF a Response to Complainant's Supplemental Filing.
5. For ease of reference, the Panel shall use the following abbreviations
within its decision: "Cmpl." shall refer to Complainant's Amended Complaint;
"Resp." shall refer to Respondent's Response to Complaint; "Suppl. Cmpl."
shall refer to Complainant's Supplement to Complaint Reflecting New Information;
"Suppl. Resp." shall refer to Respondent's Response to Complainant's Supplemental
Filing; "Slejko Aff." shall refer to the Affidavit of Complainant Tall
Oaks' sole shareholder, Frank L. Slejko, Ph.D., dated March 13, 2000; "Tyler
Decl." shall refer to the Declaration of Respondent's President and founder,
Mr. Humphrey S. Tyler, dated April 21, 2000; and "Exh." shall refer to
one or more of the Exhibits attached to the parties' various submissions.
Factual Findings
The Parties
6. The Complainant (collectively) is Tall Oaks Publishing, Inc. ("Tall
Oaks"), a Colorado corporation located in Littleton, Colorado, and its
sole shareholder, Frank L. Slejko, Ph.D. ("Slejko"). The Respondent is
National Trade Publications, Inc. ("National Trade"), a New York corporation
located in Latham, New York.
The Domain Name and Registrar
7. The domain name is ULTRAPUREWATER.COM. The Registrar is Network
Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139,
U.S.A.
Factual Background
8. Complainant Tall Oaks is the owner of U.S. Trademark Supplemental
Registration No. 1,359,898 for the mark ULTRAPURE WATER, in connection
with "periodicals * namely, technical journals." The mark was registered
on September 10, 1985, and claims first use of the mark as of July 17,
1984. The registration has been maintained by the filing of an Affidavit
of Use. (Cmpl., Exhs. B and C).
9. Complainant Slejko is the named Applicant on Application Serial
No. 75/785,879 for the mark ULTRAPURE WATER, in connection with "periodicals,
namely, technical journals in the field of water." This mark was applied
for on August 16, 1999, and the application claims first use of the mark
on July 17, 1984. The Application seeks registration of the mark on the
Principal Register pursuant to Trademark Act Section 2(f). A Notice of
Publication was issued for this application on February 11, 2000. The application
was published for opposition on March 14, 2000. Complainant asserts that
neither a Notice of Opposition nor a Request for an Extension of Time to
file a Notice of Opposition was filed during the time provided therefor.
(Cmpl., par. 5; Suppl. Cmpl., pars. 3-7; Exhs. 1 and 2).
10. Complainant Tall Oaks is the named Applicant on CTM Application
No. 692,475, filed in the European Union for the mark ULTRAPURE WATER,
in connection with, inter alia, printed matter, periodicals, journals,
arranging and conducting conferences, and conferences on industrial water
treatment. (Cmpl., Exh. D).
11. Respondent National Trade is the owner of the domain name ULTRAPUREWATER.COM,
registered with the Registrar Network Solutions, Inc. on April 23, 1996.
(Cmpl., Exh. J). National Trade uses this domain name to direct Internet
users to its Water Technology Online web site. (Cmpl., Exh. K).
Parties' Contentions
Complainant
12. Tall Oaks and Slejko contend that National Trade knew of Complainant's
use of ULTRAPURE WATER as the name of a trade journal since 1984, long
prior to National Trade's 1996 registration of the ULTRAPUREWATER.COM domain
name; a fact which National Trade concedes (Cmpl., par. 22; Slejko Aff.;
Resp., p. 3). Tall Oaks and Slejko claim that the ULTRAPUREWATER.COM domain
name is identical or confusingly similar to their mark ULTRAPURE WATER;
that National Trade has no rights or legitimate interests with respect
to the ULTRAPUREWATER.COM domain name; that National Trade is not a licensee
of Tall Oaks or Slejko nor otherwise authorized to use the ULTRAPURE WATER
mark; that National Trade registered and is using the ULTRAPUREWATER.COM
in bad faith; and that the parties are direct competitors in the publication
of journals relating to water treatment. (Cmpl., pars. 7 and 29-35).
13. Tall Oaks and Slejko seek a transfer of the ULTRAPUREWATER.COM
domain name from National Trade to them; in the alternative cancellation
of the domain name. (Cmpl. Cover Sheet, p. 3).
Respondent
14. National Trade concedes that the ULTRAPURE WATER mark and ULTRAPUREWATER.COM
domain name are similar in appearance and sound; that it is not an authorized
licensee or user from Tall Oaks or Slejko of the ULTRAPUREWATER.COM domain
name; that it is the owner of the domain name ULTRAPUREWATER.COM registered
with the Registrar Network Solutions; and that National Trade uses this
domain name to direct Internet users to its Water Technology Online web
site. (Resp., pp. 2-4).
15. National Trade counters Tall Oaks' and Slejko's arguments by contending
that National Trade is making legitimate fair use of the ULTRAPUREWATER.COM
domain name, and that the alleged mark ULTRAPURE WATER of Tall Oaks and
Slejko is generic. (Resp., pp. 4-10).
Conclusions
Applicable Policy Provisions
16. The UDRP Policy requires the Complainant to prove each of the following
three elements, in order to prevail in this proceeding:
1. That the domain name is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
2. That Respondent has no rights or legitimate interests in respect
of the domain name; and
3. That the domain name has been registered and is being used in bad
faith.
UDRP Policy, Section 4.a.
17. It is not sufficient to prevail that a Complainant prove only registration
in bad faith; rather, the Complainant must prove both registration and
use in bad faith. See World Wrestling Federation Entertainment, Inc. v.
Michael Bossman, WIPO Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson,
WIPO Dispute No. D00-0001.
18. However, the UDRP Policy states that the following circumstances
shall be evidence of the registration and use of a domain name in bad faith:
(a) 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
(b) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(c) 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.
***
UDRP Policy, Sections 4(b)(ii)-(iv).
19. These circumstances are non-inclusive, and the Panel may consider
other circumstances as constituting registration and use of a domain name
in bad faith. Id.
Opinion of the Panel
20. This Panel finds that Tall Oaks and Slejko are entitled to the
relief sought, namely, transfer of the ULTRAPUREWATER.COM domain name.
First, Tall Oaks and Slejko, albeit just barely, have proved that they
have rights in a trademark legally identical to the domain name in dispute.
National Trade does not dispute that the alleged mark ULTRAPURE WATER and
the domain name ULTRAPUREWATER.COM are similar in sight and sound. In this
Panel's opinion, the added space between ULTRAPURE and WATER in Tall Oaks'
and Slejko's alleged mark, and the addition of the .COM suffix at the end
of National Trade's domain name, do not serve to distinguish the commercial
impression of the mark and the domain name.
21. This Panel also finds that Respondent has no rights or legitimate
interests in respect of the domain name. Before it received notice of this
proceeding, National Trade did not make use the domain name ULTRAPUREWATER.COM
in connection with the bona fide offering of goods or services. National
Trade has not shown that it has been commonly known by the name ULTRAPURE
WATER or ULTRAPUREWATER. Moreover, National Trade has not made legitimate
or fair use of the ULTRAPUREWATER.COM domain name. Finally, this Panel
is satisfied that the domain name has been registered and is being used
in bad faith. UDRP Policy, Sections 4(c).
(a) The "Strength" of the ULTRAPURE WATER Mark
22. National Trade contends that Tall Oaks' and Slejko's alleged mark
ULTRAPURE WATER mark is a generic term of art within the water treatment
industry. (Resp., pp. 3 and 5). A "generic" term is one that refers, or
has come to be understood as referring, to the genus of which the particular
product is a species. Abercrombie & Fitch Co. v. Hunting World Inc.,
537 F.2d 4, 9 (2d Cir. 1976). Generic terms can never become trademarks
or service marks, no matter how much money or effort is directed to the
term or how much commercial success from public exposure the term has achieved.
Id., 537 F.2d at 9.
23. By contrast, a descriptive mark forthwith conveys an immediate
idea of the ingredients, qualities or characteristics of the goods. Descriptive
marks, although not inherently entitled to trademark protection, are afforded
such protection upon a showing that such marks have acquired distinctiveness
(secondary meaning) through use in the marketplace. Id., 537 F.2d at 9-11.
24. The Declaration of Mr. Tyler states that the term ULTRAPURE WATER
"is a grade of water that has been specifically treated so that it may
be used in certain industrial, medical, and scientific settings." (Tyler
Decl., par. 11). The numerous articles attached to Mr. Tyler's Declaration
bolster this definition. So, according to National Trade, the term "ultrapure
water" is generic for a type of treated water. However, this is neither
the product for which Tall Oaks and Slejko have registered, applied for,
nor used the mark ULTRAPURE WATER.
25. To the contrary, Tall Oaks and Slejko have registered, applied
for, and use ULTRAPURE WATER as mark in connection with the promotion and
sale of a technical journal about water treatment. (Cmpl., Exhs. A-E; Slejko
Aff.). While ULTRAPURE WATER certainly "forthwith conveys an immediate
idea of" the subject matter of Tall Oaks' and Slejko's trade journal, the
mark does not name, and is not the name of, the very products Tall Oaks/Slejko
and National Trade promote and sell * technical trade journals and/or technical
information services relating to the water treatment industry. (Cmpl.,
Exhs. A, G, and H).
26. As the panel finds that the ULTRAPURE WATER mark is merely descriptive,
Tall Oaks and Slejko still must show that the mark has acquired distinctiveness.
On this issue, Tall Oaks and Slejko have not made a strong showing. The
panel has little evidence before it regarding the distinctiveness ULTRAPURE
WATER may have acquired from Tall Oaks'/Slejko's use of the mark. The panel
has before it the cover of a single issue of the ULTRAPURE WATER journal
(Cmpl., Exh. A), and Dr. Slejko's statements that the mark has been in
use for over 15 years (Slejko Aff., Compl., Exh. T). The panel does not
have before it sales or advertising figures for the ULTRAPURE WATER journal,
unsolicited recognition by the press, the trade, or Complainants' readership,
or any of the other indicia that the ULTRAPURE WATER mark has acquired
distinctiveness.
27. Considering that the late, additional submissions by Tall Oaks
and Slejko have been strenuously objected to by National Trade (Suppl.
Cmpl., Suppl. Resp.), the Panel has given no weight to the fact that the
U.S. Patent and Trademark Office has issued a Notice of Publication for
Dr. Slejko's Principal Register application for the ULTRAPURE WATER mark,
or that the opposition period with respect to the application has passed
without a Notice of Opposition or an Extension Request therefor having
been filed.
28. However, Tall Oaks and Slejko have submitted meager, although telling,
evidence that the ULTRAPURE WATER mark and its associated journal have
acquired at least a small modicum of distinctiveness. In 1997 and 1998,
an employee and an agent of National Trade made two separate inquiries
on National Trade's behalf to purchase the ULTRAPURE WATER publication
from Complainants. (Cmpl., Exh. R). National Trade characterized the ULTRAPURE
WATER journal as a "small to medium-sized trade or professional magazine[]
which [has] ... a history of profitable operations or a reasonable chance
of reaching a profitable level." Presuming that National Trade operates
a profitable publishing business, it would not have made inquiries to purchase
a 15-year publication (which, at the time of the inquiries was a 13/14-year
publication) that National Trade did not believe had "a history of profitable
operations or a reasonable chance of reaching a profitable level." The
Panel considers the two inquiries made by National Trade as admissions
of a party opponent that the ULTRAPURE WATER mark had achieved at least
some level of recognition and distinctiveness. Rule 801(d)(2), Fed. R.
Evid.
29. Further, Dr. Slejko's Affidavit portrays a long history of the
parties exchanging complimentary copies of their respective publications
for over a decade (Slejko Aff.); a contention that National Trade admits
in its Response (at p. 3) and which Mr. Tyler nowhere disputes in his Declaration.
Further, as Mr. Tyler states in his Declaration, the ULTRAPUREWATER.COM
domain name was registered with the intent of, and used for the purpose
of, making it easier for Internet users to find National Trade's Water
Technology Online web site (Tyler Decl., pars. 9 and 10; Cmpl., Exh. K).
The Panel finds that National Trade, in this respect, is making trademark
use of the ULTRAPUREWATER.COM domain name * further indicia that ULTRAPURE
WATER has acquired at least some form of trademark distinctiveness in the
water treatment industry.
a. Whether National Trade's Use of the ULTRAPUREWATER.COM Domain Name
Constitutes "Fair Use"
30. National Trade also contends that it is making "fair use" of the
ULTRAPUREWATER.COM domain name. For National Trade to establish that it
is making "fair use" of this domain name, it must show that said use is
"otherwise than as a mark ..., which is descriptive of and used fairly
and in good faith only to describe the goods or services of such party
...." Trademark Act, Section 33(b)(4).
31. As stated above, National Trade is making not a descriptive fair
use of ULTRAPUREWATER.COM, but a trademark use of the domain name. National
Trade does not direct Internet users to subsidiary water treatment information
pages within its web site, but directly to its home page (which contains
links to product purchasing and journal subscription web pages, advertising,
and classified ads). When accessing portions of National Trade's web site,
an Internet user first is asked to complete a questionnaire, and accept
all "cookies" left by accessing National Trade's web site, from which National
Trade certainly could compile a mailing and/or e-mail subscription list
for its Water Technology magazine and on line products and services. (Cmpl.,
Exhs. E, F, and K). The questionnaire also directly refers the Internet
user directly to National Trade's Water Technology journal in the introductory
text.
32. Thus, National Trade's trademark use of the ULTRAPUREWATER.COM
web site is inconsistent with its claim that "fair use" is being made of
the domain name.
(c) Likelihood of Confusion
33. The panel also finds that National Trade's registration and use
of the ULTRAPUREWATER.COM domain name is likely to cause confusion with
Tall Oaks' and Slejko's ULTRAPURE WATER mark, under the factors stated
in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).
34. As discussed above, the ULTRAPURE WATER mark is merely descriptive,
but sufficient evidence has been submitted, although barely, to show that
the mark has acquired a modicum of distinctiveness. Also as discussed,
the panel considers the ULTRAPURE WATER mark and the ULTRAPUREWATER.COM
domain name to be legally identical in appearance, sound, and commercial
impression.
35. The parties are direct competitors in the same industry, and from
all appearances they promote and sell their technical journals to the same
general class of consumers, water treatment professionals. While there
has been no showing of actual confusion, the panel does not consider this
decisive when the standard is "likelihood" of confusion.
36. National Trade and Mr. Tyler assert that they have registered and
are using the ULTRAPUREWATER.COM domain name in good faith. The Panel questions
these assertions, given the manner, discussed above, in which National
Trade is using the domain name.
37. Further, Tall Oaks and Slejko have submitted evidence that National
Trade has registered and is using the domain names WATERQUALITY.COM and
QUALITYWATER.COM in the same manner that National Trade has registered
and is using the ULTRAPUREWATER.COM domain name. QUALITY WATER INTERNATIONAL
appears to be the registered mark of, and the name of a magazine of, the
International Association on Water Quality, apparently another competitor
in the water treatment publications industry. (Compl., Exhs. L - Q). The
Panel concludes from this additional evidence that National Trade has engaged
in a pattern of registering as domain names the legal equivalents of the
marks of its competitors.
38. In the face of the above-recited evidence, Mr. Tyler maintains
that "'Water Quality' and 'Quality Water' are not the names of trade magazines"
and that "NTP has never registered a domain name for the purpose of misleadingly
diverting web users." (Tyler Decl., pars. 13 and 14). The Panel finds that
Complainants' evidence belie these statements of Mr. Tyler.
39. For purposes of the Panel's decision, it presumes that National
Trade's products and services are of equal quality to those of Tall Oaks,
and that the purchasers and consumers of the parties' products are sophisticated.
These facts do not detract from the Panel's ultimate finding that National
Trade has registered and used the ULTRAPUREWATER.COM domain name in bad
faith, for the purposes of creating a likelihood of confusion with Complainants'
ULTRAPURE WATER publication.
40. Further, the Panel finds that National Trade has registered and
used the ULTRAPUREWATER.COM domain name in a manner likely to cause "initial
interest confusion." That is, Internet users looking on line for Tall Oaks'
ULTRAPURE WATER journal will instead be taken to National Trade's Water
Technology Online web site. Once there, it appears quite likely that Internet
users interested in information on water treatment issues will have found
what they were looking for, although offered by another party, and instead
take advantage of National Trade's products and services rather than those
of Tall Oaks and Slejko. Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 1062-1063 (9th Cir. 1999).
Decision
41. The Panel finds that the ULTRAPUREWATER.COM domain name is legally
identical to and/or confusingly similar to the ULTRAPURE WATER trademark
in which Tall Oaks and Slejko have rights. National Trade has not shown
that it has rights or legitimate interests in the domain name. Further,
National Trade has been shown to have registered and to have been using
the ULTRAPUREWATER.COM domain name in bad faith.
42. Further, the Panel finds that National Trade has registered the
ULTRAPUREWATER.COM domain name in order to prevent Tall Oaks and Slejko
from reflecting the ULTRAPURE WATER mark in a corresponding domain name,
and that National trade has engaged in a pattern of such conduct with respect
to the mark of at least one other competitor, the International Association
on Water Quality. National Trade also has registered the domain name primarily
for the purpose of disrupting the business of Tall Oaks and Slejko, who
are direct competitors. By the manner in which National Trade is using
the ULTRAPUREWATER.COM domain name, it is intentionally attempting to attract,
for commercial gain, Internet users to its Water Technology Online web
site, by creating a likelihood of confusion with the ULTRAPURE WATER mark
as to the source, sponsorship, affiliation, or endorsement of National
Trade's web site with the ULTRAPURE WATER journal promoted and sold by
Tall Oaks and Slejko.
43. For the reasons set forth above, this Panel orders that the ULTRAPUREWATER.COM
domain name be transferred to the Complainant.
Domain Name Transferred