WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

House of Spices (India) Inc. v. DataNet Inc.

Case No. D2007-0845

1. The Parties

Complainant is House of Spices (India) Inc., Flushing, New York, United States of America, represented by Kalow & Springut LLP, United States of America.

Respondent is DataNet Inc., Forest Hills, New York, United States of America, represented by Lewis & Hand, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <houseofspices.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2007. On June 13, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue, and the following day eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 22, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced June 28, 2007. In accordance with the Rules, paragraph 5(a), and an extension agreed by the parties, the due date for Response was extended from July 18, 2007 to August 1, 2007. The Response was filed with the Center on July 26, 2007.

Complainant requested a single-member Panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. On September 11, 2007, the Center appointed Richard G. Lyon, David E. Sorkin, and Maxim H. Waldbaum as panelists. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rule 7.

4. Factual Background

Complainant sells food products and groceries, primarily at wholesale. It owns a trademark registered with the United States Patent and Trademark Office for HOUSE OF SPICES in International Class 42, for retail stores and wholesale distributorships featuring groceries. Complainant applied for this trademark in February 1996, it was published for opposition in November 1999, and it was issued in February 2000. An officer of Complainant has submitted a declaration asserting that Complainant has used this mark in United States Commerce since at least 1975, and that its annual sales last year exceeded USD 60 million.

Respondent is a corporation owned by a single individual, D.K. Singh, a computer programmer. Both Mr. Singh and Respondent are based in Forest Hills, New York, United States of America, in the same borough of the City of New York in which Complainant is located. Mr. Singh grew up on a farm in India, from which he or his family or associates grew and sold various spices.

Respondent registered the disputed domain name in 1998. Until May 2007 an internet user who entered the disputed domain name into his or her browser received an error message and no content. Complainant submitted a copy of the House of Spices web page accessed May 15, 2007, that included a number of links to grocery and grocery-related products. Respondent acknowledged that this use occurred, but Mr. Singh declares upon penalty of perjury that following Respondent’s change of servers its new provider added the content and hyperlinks without Respondent’s knowledge or consent, and that when he learned of this he immediately took steps to stop it. When the Panel accessed the disputed domain name in September 2007, it received an “under construction” web page. The Panel’s review of internet archives at “www.archive.org” confirms that until 2007 the disputed domain name resolved to an error page.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical to Complainant’s federally-registered trademark, thus satisfying the requirements of paragraph 4(a)(i) of the Policy.

Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never authorized use of its mark, Respondent has never been known individually or professionally by the disputed domain name, and Respondent’s non-use of the disputed domain name for many years reveals no right or legitimate interest. The 2007 click-through pages are not a bona fide use of the disputed domain name.

Respondent’s bad faith in registration and use is demonstrated from his registration of the disputed domain name after Complainant had applied for its trademark and more than twenty years after Complainant first began using its mark in commerce. Respondent’s use of the disputed domain for links to competing products is further evidence of registration and use in bad faith.

B. Respondent

Respondent contends as follows:

At the time Respondent registered the disputed domain name Complainant had no registered trademark, and Complainant has not alleged or provided any evidence of common law rights. Without evidence of common law rights all of Complainant’s allegations are entitled to no weight and should not be credited by the Panel. Many other companies employ a combination of the words house and spice (including House of Spices) in trademarks for restaurants, grocery stores, purveyors of spices, and many other businesses. Similarly, use of the phrase ‘House of [goods]’ is “so common as to be mundane.” Accordingly Complainant has no exclusive right to the phrase “houseofspices”.

Respondent’s connection with a spice farm in India, which his family still owns, provides rights or legitimate interests in the disputed domain name. While Respondent has not yet developed an active website at the disputed domain name, he may do so, and as evidence of this he has registered several other domain names including the word spices. Use of a descriptive or generic dictionary word as a domain name is presumptively legitimate. Should the Panel take account of the click-through page inadvertently in existence for a short period of time, click-through revenues are also presumptively legitimate.

Respondent registered the disputed domain name two years before Complainant acquired its trademark. Respondent did not register the disputed domain name with the intent to sell it to Complainant, Complainant’s competitors, or anyone else. Mr. Singh declares that he has turned down a number of anonymous offers to purchase the disputed domain name. Respondent received no revenues from any click-through pages advertently contained at the disputed domain name for a brief period of time. There is no basis to impute prior knowledge of Complainant or its mark at the time Respondent registered the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) that the Respondent has no rights or legitimate interests in respect to the disputed domain name; and

(3) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established the requirements of paragraph 4(a)(i) of the Policy. At the date the Complaint was filed it held a nationally-registered trademark for HOUSE OF SPICES. The existence of trademark rights is measured as of the date the Complaint is filed, not the date Respondent registered the disputed domain name. The Panel lacks authority to set aside a nationally-registered mark. As the disputed domain name is identical to Complainant’s mark except for the top level domain designation .com, this Policy element has been met.

B. Rights or Legitimate Interests

Complainant has made its prima facie case that Respondent has no rights or legitimate interest in the disputed domain name by showing that Respondent has never been known by the disputed domain name and has not been authorized to use it by Complainant. Respondent has not come forward with any evidence of a right or legitimate interest, and contrary to the assertion of its counsel there is, at least in the absence of other factors, no presumptive right to register a descriptive or generic phrase. Neither a stated but unproven intention to develop a spice-related website at some point in the future nor Respondent’s registration of other domain names makes out the “demonstrable preparations” required by paragraph 4(c)(i) of the Policy. The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph 3.1, Consensus View. While in the United States of America trademark rights accrue from use rather than registration, panels in Policy proceedings generally require proof that the respondent actually knew of the complainant and its mark and intentionally selected the disputed domain name to take advantage of that mark. Such knowledge may be proven directly or inferentially. See Net2phone Inc v. Delta Three Inc., WIPO Case No. D2007-0644 and cases cited at notes 5-11. When as in this proceeding the disputed domain name consists of common words the complainant’s task is even more difficult. American Appraisal Associates Inc. v. R Hagar, Kinja LLC, WIPO Case No. D2006-1556.

There is scant evidence that Respondent knew of Complainant or its mark when it selected a commonly used phrase for its domain name. Complainant has provided no evidence from which the Panel could infer any widespread or special identification of the phrase with Complainant, no evidence of any business or other connection between the parties that predates registration, and no other evidence from which the Panel could infer actual knowledge. Complainant’s only evidence is its officer’s summary comment that Complainant has used the mark for thirty years and had USD 60 million in sales last year.

Panelists under the Policy rarely apply the constructive notice doctrine, requiring instead that complainant provide evidence that respondent actually knew of complainant and its mark. Overview, paragraph 3.4. The rare exceptions to this consensus view have almost always involved an evidentiary showing that established facts from which the Panel could infer that respondent’s knowledge was likely, or that respondent intentionally turned a blind eye to the trademark rights of others. Complainant has made no such showing here.

As in SmartTix Entertainment Services, Inc. v. Anand Karunakaran/IconnectU, LLC (private domain holder) and 1 & 1 Internet, Inc. (domain registrant/proxy), WIPO Case No. D2007-0966, a case with closely analogous facts, the record reflects none of the usual indicia of cybersquatting, the limited class of cases that the Policy was enacted to combat. Commercial use of the disputed domain name was non-existent for nine years and then limited and possibly accidental. Respondent never sought to sell the disputed domain name to Complainant or anyone else. Respondent has never competed with Complainant. Nothing suggests that Respondent took advantage of any goodwill in Complainant’s mark.

In essence, Complainant has failed to supply the Panel with evidence that it held any common law rights to its mark prior to federal registration. Had Complainant, for example, shown that its mark was famous prior to the registration of the disputed domain name, the Panel may have had something to consider in its favor on this issue.

As both registration and use in bad faith must be established, the Panel need not consider whether the brief use of the disputed domain name for links to products competing with those of Complainant constitutes use in bad faith for purposes of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: September 25, 2007