Domain name - Domain name resolution policy - Confusingly similar - Generic Marks - Bona fide offering of goods and services - Online sales - Good faith - Prima facie case - Reverse domain name hijacking.

Complainant, Jewelry.com,  is engaged in the business of selling fine jewelry, rings, earrings, etc. over the Internet. Complainant conducts its online retail sales through its website, www.jewelry.com. Complainant registered JEWELRY.COM on November 8, 1999. Since October 1999, Complainant has spent over millions in national marketing and promotional efforts relating to JEWELRY.COM. and achieved over $1 million dollars in sales.

Respondent Idealab! registered the domain name JEWELERY.COM April 1, 1998, with the anticipation of using that domain name in connection with an online jewelry business. Idealab! is an investor in Respondent Ice.com, Inc.  March 2000, Respondent launched the Ice.com web site, which is dedicated to the online sale of jewelry.  Respondents have used the "JEWELERY.COM" domain name to direct Internet users that enter said name to the "Ice.com" website.

Held, Name not transferred.

Complainant has applied for trademark rights for "JEWELRY.COM"; however, the application has been initially denied by the United States Patent and Trademark Office. USPTO's rejection of Complainant's application for service mark registration denies a presumption of validity to Complainant's claim of exclusive rights in that mark.  Although Complainant has a right in the domain name JEWELRY.COM, Complainant holds no trademark or service mark in JEWELRY.COM.

A generic word "cannot be validly registered as a trademark even if there is proof of secondary meaning."  Nor does the ".Com" suffix to the word "Jewelery" add any significance.  When a trademark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.), nor the TLD have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address."

Because serious questions exist as to whether Complainant has any proprietary rights in an arguably generic term, Complainant has failed to satisfy Paragraph 4(a)(i) of the policy. Whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal. The Panel need not consider whether the domain name "JEWELERY.COM" is identical or confusingly similar to Complainant's alleged service mark, nor whether Respondents have rights or legitimate interests in "JEWELERY.COM", nor whether Respondents' registration and use of the disputed domain name was in bad faith. 

The Panel denies Respondent's request for a determination that Complainant has engaged in reverse domain name hijacking within the meaning of Paragraph 15(e) of the Policy. Complainant has presented substantial evidence of its use of the name "JEWELRY.COM" in commerce, and it has an understandable interest in seeking to control the use of that name by others. It has not evidenced bad faith by initiating these procedures.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Examination Guide, September 29, 1999.

Registration Agreements referred to

Network Solutions Service Agreement Version 5.0.

Cases referred to

Surgicenters of Am., Inc. v. Medical Dental Surgies, Co., 601 F. 2d 1011,1016 (9th Cir. 1979)

America Online, Inc. v. AT&T Corp., 64 F. Supp. 2d 549, 560-61.

Panel Decision referred to

Pet Warehouse v. Pets.Com, Inc., ICANN Case No. D2000-0105 (WIPO April 13, 2000).
 

McCotter, Panelist - 

PARTIES

Complainant is Jewelry.com, San Mateo, CA, USA ("Complainant"). The Respondent is Idealab!, Pasadena, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is "JEWELERY.COM", registered with Network Solutions Inc ("NSI").

PANELIST(s) 

The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Charles K. McCotter, Jr. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/18/2000; The Forum received a hard copy of the Complaint on 07/20/2000. 

On 07/19/2000, NSI confirmed by e-mail to The Forum that the domain name "JEWELERY.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On 07/27/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/16/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondents registration as technical, administrative and billing contacts by e-mail. 

Idealab! and Ice.com ("Respondents")timely filed a Response and the Complainant filed a Reply to Respondents' Response. Respondents filed a Reply to Complainant's Reply. 

On August 18, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed Charles K. McCotter, Jr. as Panelist.

The Panel has reviewed and considered all of the submitted pleadings and exhibits.

RELIEF SOUGHT

Complainant requests that the domain name JEWELERY.COM be transferred from the Respondent to the Complainant. 

PARTIES CONTENTIONS

A. Complainant

Complainant contends:

1. That it owns common law trademark and/or service mark rights to the use of "JEWELRY.COM", a mark which has been used in commerce since April 1997;

2. That Respondents' domain name JEWELERY.COM is virtually identical or confusingly similar to Complainant's name and protectable mark, JEWELRY.COM, through which Complainant conducts its online retail sales;

3. That Complainant's extensive use of the JEWELRY.COM domain name constitutes evidence of secondary meaning. 

4. That the infringing domain name is purposely misspelled;

5. That an Internet user who seeks to access Complainant's web site will typically type www.jewelry.com and by doing so be directed to Complainant's web site; however, when an Internet user misspells or mistypes www.jewelry.com by typing www.jewelery.com, a common mistake, the user is diverted away from the Complainant's web site to the web site of Ice.com, a competitor of Complainant. (Respondent, Idealab! is the registrant of the domain name ICE.COM.) 

6. That Respondents' registration and use of the domain name JEWELERY.COM is in bad faith;

7. That the Respondents' have intentionally diverted, for commercial gain, Internet users away from Complainant's web site to Ice.com's web site; and

8. That Respondents have no rights or legitimate interest in the JEWELERY.COM domain name. 

B. Respondents

Respondents contend:

1. That the Canadian-preferred spelling of "jewelry" is "jewelery" and that Respondents arranged to point the jewelery.com domain name to the Ice.com site in order to direct consumers looking for "jewelery" retailers to the Ice.com site;

2. That JEWELRY and JEWELRY.COM are generic marks and that Complainant does not have a protectable interest in the words "jewelry" or "jewelry.com"; and

3. That the Respondents have acted in a good faith belief that trademark law does not prevent them from using a generic word to direct traffic to the Ice.com jewelry retailing web site.

Respondents request that an express finding be made that Complainant has brought this Complaint in bad faith and has attempted to engage in reverse domain name hijacking. 

FINDINGS

1. Complainant, Jewelry.com, is engaged in the business of selling fine jewelry, rings, earrings, necklaces, bracelets, strands, neckchains, and pins online over the Internet.

2. Complainant conducts its online retail sales through its website, www.jewelry.com. Complainant (under its previous corporate name, TheWebVault.Com,LLC) registered the domain name JEWELRY.COM with NSI on November 8, 1999.

3. In October 1996, Complainant purchased the URL and domain name JEWELRY.COM from John Devaney, who originally registered the domain name in 1993. Beginning in April 1997, Mr. Devaney began operating and conducting web-based business activities relating to the online retail sales of jewelry under the JEWELRY.COM domain. Since October 1999, Complainant has spent over $1.8 million in national marketing and promotional efforts relating to JEWELRY.COM. and in the subsequent ten months achieved over $1 million dollars in sales.

4. On April 1, 1998, Idealab! registered the domain name JEWELERY.COM with the anticipation of using that domain name in connection with an online jewelry business. Idealab! is an investor in Respondent Ice.com, Inc. ("Ice.com");

5. In March 2000, Respondent Ice.com launched the Ice.com web site, which is dedicated to the online sale of jewelry. 

6. Respondents have used the "JEWELERY.COM" domain name to direct Internet users that enter said name to the "Ice.com" website.

7. Since its launch, Ice.com has become the most visited online jewelry site on the Internet. Complainant's
JEWELRY.COM site is the fourth most visited online jewelry retailer.

8. There are numerous online jewelry retailers who compete with Ice.com and Complainant, most of whom use domain names incorporating the generic word, "jewelry" or versions of "jewelry" in order to attract Internet traffic.

9. Complainant has an application pending before the United States Patent and Trademark Office and for trademark rights for "JEWELRY.COM"; however, the application has been initially denied. In the Refusal, the USPTO states that "the term jewelry is the generic term for applicant's goods in International Class 14 and the generic term for the goods featured in applicant's International Class 35 services". Moreover, the Refusal states that "[T]he term ëjewelry' combined with the TLD ë.COM' equates to ëjewelry' because the ".Com" portion of the mark has no source indicating significance." Refusal at 2, citing Exam Guide No 2-99, Sept. 29, 1999, at p.3;

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

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

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

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

Identical and/or Confusingly Similar

Complainant Jewelery.com has applied for trademark rights for "JEWELRY.COM"; however, the application has been initially denied by the United States Patent and Trademark Office. The USPTO's rejection of the Complainant's application for service mark registration denies a presumption of validity to Complainant's claim of exclusive rights in that mark. See Pet Warehouse v. Pets.Com, Inc., ICANN Case No. D2000-0105 (WIPO April 13, 2000). Although Complainant has a right in the domain name JEWELRY.COM, Complainant currently holds no trademark or service mark in JEWELRY.COM.

Complainant contends that its corporate and domain name, JEWELRY.COM is protectable, even if merely descriptive, because it has acquired secondary meaning. However, federal courts in the United States have concluded that a generic word "cannot be validly registered as a trademark even if there is proof of secondary meaning." Surgicenters of Am., Inc. v. Medical Dental Surgies, Co., 601 F. 2d 1011,1016 (9th Cir. 1979); America Online, Inc. v. AT&T Corp., 64 F. Supp. 2d 549, 560-61. Nor does the ".Com" suffix to the word "Jewelery" add any significance. Section I of the Examination Guide states that "[W]hen a trademark...is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.), nor the TLD have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address." Exam Guide 2-99, September 29, 1999.

Here, because serious questions exist as to whether Complainant has any proprietary rights in an arguably generic term, Complainant has failed to satisfy Paragraph 4(a)(i) of the policy. See Pet Warehouse v. Pets.Com, Inc., supra. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal. Id. In light of this determination, the Panel need not consider whether the domain name "JEWELERY.COM" is identical or confusingly similar to Complainant's alleged service mark, nor whether Respondents have rights or legitimate interests in "JEWELERY.COM", nor whether Respondents' registration and use of the disputed domain name was in bad faith. Id. 

The Panel denies Respondent's request for a determination that Complainant has engaged in reverse domain name hijacking within the meaning of Paragraph 15(e) of the Policy. Complainant has presented substantial evidence of its use of the name "JEWELERY.COM" in commerce, and it has an understandable interest in seeking to control the use of that name by others. Although Complainant has not demonstrated its exclusive right to that name, neither has it evidenced bad faith by initiating these procedures.

DECISION 

Based upon the above findings and conclusions, I find in favor of the Respondents. Therefore, the relief requested by the Complainant pursuant to Paragraph 4(i) of the Policy is Denied. The Respondent shall not be required to transfer the domain name "JEWELERY.COM" to the Complainant.

Charles K. McCotter, Jr.
Dated: September 1, 2000