David Sardinha / Pineapple Studios, Inc. v. David Wolfenden

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

David Sardinha / Pineapple Studios, Inc. v. David Wolfenden

Case No. D2003-0386

1. The Parties

The Complainants are David Sardinha / Pineapple Studios, Inc., of Middletown,

Rhode Island, United States of America, represented by Donald D. Page of United

States of America (hereinafter "Complainant").

The Respondent is David Wolfenden of Middletown, Rhode Island, United States

of America.

2. The Domain Names and Registrar

The disputed domain names <pineapplestudios.com>, <pineapplestudios.net>,

<pineapplevideo.com> and <pineapplevideo.net> are registered with

NameSecure.com (a VeriSign Co) ("NameSecure").

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation

Center (the "Center") on May 20, 2003. On May 21, 2003, the Center

transmitted by email to NameSecure a request for registrar verification in connection

with the domain names at issue. On May 23, 2003, NameSecure transmitted by email

to the Center its verification response confirming that the Respondent is listed

as the registrant and providing the contact details for the administrative,

billing, and technical contact. On May 22, 2003, the Center received an email

from the Respondent, requesting that he be sent a copy of the Complaint. On

May 27, 2003, the Center notified the Complainant that it had not yet received

the Complaint in hard copy. On June 5, 2003, the Center received the hard copies

of the Complaint. The Center verified that 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 on June

6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

was June 26, 2003. The Response was filed with the Center on June

25, 2003.

The Center appointed M. Scott Donahey as the sole panelist in this matter on

July 7, 2003. The Panel finds that it was properly constituted. The

Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

The Complainant requested that he be permitted to submit a Reply. The Panel

permitted the Complainant to submit a Reply for the Panel's consideration as

to whether to include it as part of the record. The Panel has received and reviewed

the Reply, and the Panel will not accept it nor rely on it in any way.

4. Factual Background

The Complainant holds a Certificate of Incorporation for Pineapple Studios,

Inc. issued by the State of Rhode Island. The Complainant has been operating

under the name of Pineapple Studios in Middletown, Rhode Island since 1992.

Complaint, Annex 8; Response Annexes 2,A and 2,B. The business cards of the

Complainant's principal identify the Complainant as "Pineapple Studios," as

does a folding brochure. On May 9, 2003, the Complainant applied to the

United States Patent and Trademark Office ("USPTO") for a trademark for PINEAPPLE

STUDIOS. Complaint, Annexes 3 and 4.

On April 24, 2003, the Complainant registered as fictitious names with the

State of Rhode Island "Pineapple Video Productions" and "Pineapple Multimedia."

Complaint, Annex 3.

The population of Middletown, Rhode Island is approximately 20,000. It is located

on Aquidneck Island between Newport and Portsmouth.[1]

The Complainant is listed on a sign that fronts on Aquidneck Avenue as "Pineapple

Studios," a tenant in Aquidneck Green. Complaint, Annex 4.

The Newport Daily News, a regional newspaper of general circulation ran a story

on Pineapple Studios on its front page. The date of the story is not specified,

although from the context it appears to have been no earlier than the late 1990's.

Complaint, Annex 4.

On April 17, 2003, the Complainant registered the following domain names: <pineapplestudios.org>,

<pineapplestudios.info>, <pineapplestudios.biz>, <pineapplevideo.biz>,

<pineapplevideo.info>, <pineapplevideo.org>, <pineapplemultimedia.biz>,

<pineapplemultimedia.com>, <pineapplemultimedia.info>, <pineapplemultimedia.net>,

and <pineapplemultimedia.org>. The Complainant is also the owner of <pineapple-studios.com>.

Complaint, Annex 4.

On April 17, 2003, the Complainant wrote the Respondent a cease and desist

letter. In reply, the Respondent offered to sell the Complainant the domain

names <pineapplesudios.com> and <pineapplestudios.net> for $1,500.

Complaint, Annex 7.

On July 4, 2002, the Respondent registered the domain name <pineapplevideo.com>,

and on July 5, 2002, the Respondent registered the domain names <pineapplevideo.net>,

<pineapplestudios.com>, and <pineapplestudios.net>. The Respondent

is also a resident of Middletown, Rhode Island. In fact, the Respondent's residence

is also on Aquidneck Avenue, approximately two miles from the Complainant's

business. Response.

The Respondent has printed business cards for "Pineapple Studios 'New England

Arts & Crafts'", and for "Pineapple Video Productions "www.pineapplevideo.com"."

The Respondent claims forty years of experience in radio, television, and the

recording industry. The Respondent claims to be in the business of videography,

digital editing, document and photo archival, and event filming.

The domain names at issue resolve to web sites that identify "Computer Resources,"

the Respondent, the Respondent's email address, and a telephone number. Complaint,

Annex 1.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain names at issue are identical or confusingly

similar to trademarks in which the Complainant has rights, that the Respondent

has no rights or legitimate interests in respect of the domain names at issue,

and that the Respondent has registered and is using the domain names at issue

in bad faith.

B. Respondent

The Respondent contends that the domain names at issue utilize generic words,

that the Respondent is operating a video business and an arts and crafts business

in conjunction with which he uses the domain names at issue, and at the time

he registered the domain names at issue he was unaware of the Complainant's

business.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel

is to use in determining the dispute: "A Panel shall decide a complaint

on the basis of the statements and documents submitted in accordance with the

Policy, these Rules, and any rules and principles of law that it deems applicable."

Since both the Complainant and the Respondent are domiciled in the United States,

and since United States’ courts have recent experience with similar disputes,

to the extent that it would assist the Panel in determining whether the Complainant

has met its burden as established by Paragraph 4(a) of the Policy, the Panel

shall look to rules and principles of law set out in decisions of the courts

of the United States.

Paragraph 4(a) of the Policy directs that 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 interests in respect of

the domain name; and,

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

6.1 <pineapplestudios.net> and <pineapplestudios.com>

A. Identical or Confusingly Similar

The Panel finds that the Complainant through the use of the name in commerce

since 1992, and the publicity surrounding the name "Pineapple Studios" that

the Complainant has established common law service mark rights, at least within

the territory of Rhode Island. As the Complainant's mark is incorporated into

two of the domain names at issue, the Panel finds that the domain names <pineapplestudios.net>

and <pineapplestudios.com> are identical to the Complainant's common law

service mark. Wal-Mart Stores Inc. v. MacLeod, d/b/a For Sale, WIPO

Case No. D2000-0662.

B. Rights or Legitimate Interests

While the Respondent purports to use the above two domain names at issue in

conjunction with an arts and crafts business, the only evidence offered is a

business card. The Respondent does not describe this as his area of business,

nor does he claim any experience in this line of business. The Respondent has

offered no evidence of any expenses incurred in preparing to engage in this

line of business. Moreover, the Respondent lived on the same road on which the

Complainant conducted business less than two miles away, on which the Complainant's

name was prominently placed on a road side sign, in a city of fewer than 20,000

people, in a community in which the Complainant's business had been featured

on the front page of a regional newspaper of general circulation. Accordingly,

the Panel finds that the Respondent has no rights of legitimate interests in

respect of the two domain names listed above.

C. Registered and Used in Bad Faith

From the facts recited under B, above, it is the Panel's conclusion that the

Respondent must have known of the Complainant's business at the time he registered

the two domain names set out above. Moreover, the Respondent offered to sell

the two domain names set out above for $1,500, a sum far in excess of any legitimate

costs the Respondent may have incurred in the registration of the names and

the printing of business cards. Accordingly, the Panel finds that the Respondent

has registered and is using the domain name at issue in bad faith. Policy, paragraph

4(b)(i).

6.2 <pineapplevideo.com> and <pineapplevideo.net>

The Complainant has failed to establish that through public use he has acquired

common law trademark rights in the service mark PINEAPPLE VIDEO.

Moreover, while a person or entity might have trademark or service mark rights

in a common word such as "pineapple," this does not mean that the person or

entity can thereby exclude all others from using the common term in a domain

name. Zero International Holdings v. Beyonet Services, WIPO

Case No. D2000-0161. If the Complainant wishes to monopolize all domain

names that include the common word, "pineapple," then the Complainant must conceive

of and register all such domain names. Judging by Annexes 4c.1 and 4c.2, the

Complainant has already begun this daunting task.

To the extent that the Complainant believes that the Respondent's conduct is

violative of the Rhode Island laws of unfair competition, that is an issue that

should be taken up with the courts of the State of Rhode Island and Providence

Plantations.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain names, <pineapplestudios.net>

and <pineapplestudios.com> be transferred to the Complainant and that

as to the domain names <pineapplevideo.net> and <pineapplevideo.com>,

the Complaint is denied.

M. Scott Donahey

Sole Panelist

Dated: July 17, 2003

Footnote:

1. See Middletown, Rhode Island

Community Profile, at "www.riedc.com/MCDS/middletown.html".