The Shelburne Company d/b/a Zoysia Farm Nurseries v. Smith Turf Farms

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

The Shelburne Company d/b/a Zoysia Farm Nurseries v. Smith Turf Farms

Case No. D2003-1007

1. The Parties

The Complainant is The Shelburne Company d/b/a Zoysia Farm Nurseries, Taneytown,

Maryland, United States of America, represented by Sughrue Mion, PLLC,

United States of America.

The Respondent is Smith Turf Farms, Belton, Missouri, United States of America.

2. The Domain Name and Registrar

The disputed domain name <amazoy.com> is registered with Network Solutions, Inc.

Registrar.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on December 18, 2003. On December 22, 2003, the Center transmitted

by email to Network Solutions, Inc. Registrar a request for registrar verification

in connection with the domain name at issue. On December 29, 2003,

Network Solutions, Inc. Registrar 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.

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 December 30, 2003. In accordance with the Rules, paragraph 5(a),

the due date for Response was January 19, 2004. The Response was filed

with the Center on January 20, 2004[1].

The Center appointed Frederick M. Abbott as the Sole Panelist in this matter

on February 6, 2004. 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.

On February 6, 2004, Complainant transmitted to the Center a request

to file a reply to the Response and its reply. Shortly thereafter, Respondent

transmitted to the Center a clarification in response to Complainant’s supplemental

filing. The Center advised the parties that a determination as to whether the

supplemental submissions would be accepted would be made by the Panel.

4. Factual Background

Complainant has registered the stylized word trademark "AMAZOY" on

the Principal Register of the United States Patent and Trademark office (USPTO),

reg. No. 0611244, dated August 30, 1955, in International Class

(IC) 31, covering "grass sod and plugs," claiming date of first use

and first use in commerce of April 15, 1954. Complainant has submitted

evidence that it fulfilled the procedural requirements to establish incontestable

status of the mark[2]. The trademark registration

is valid and subsisting. (Complaint, paras. 9-10 & Exhibit B)

Complainant advertises and sells its "AMAZOY" grass plug product

(Meyers Z-52 zoysia grass plugs) through print media and on the Internet

at its website located at URL "www.zoysiafarms.com." Complainant spends

a substantial amount of money to advertise and promote its "AMAZOY"

product, and sells a significant volume of the product to consumers in various

parts of the United States. (Id., at paras. 11-12 &

Exhibit A)

According to the Registrar’s verification response, Respondent is registrant

of the disputed domain name <amazoy.com>. According to a Network Solutions

WHOIS database printout submitted by Complainant, the record of the disputed

domain name was created on January 5, 1999 (id., at Exhibit C).

Respondent advertises and sells a grass plug product (Meyers Z-52 zoysia grass

plugs) at an Internet website located at URL "www.zoysiagrass.com"

(id., at Exhibit D). Respondent and Complainant are competitors in the market

for sales of zoysia grass plugs.

Prior to contact by Complainant’s general counsel in December 1999, Respondent

included reference to Complainant’s trademarked product on its website in a

manner that Complainant considered derogatory and objectionable (letter from

R. Bloch to G. Smith dated December 21, 1999, id., Exhibit

F). As a result of Complainant’s objection, Respondent indicated that it had

removed such reference from its website.

Complainant’s general counsel again contacted Respondent in June 2001,

objecting to continued reference to its trademarked product on Respondent’s

website, and to the fact that Respondent had established a link between the

disputed domain name and Respondent’s website. After substantial further correspondence

from Complainant’s counsel, Respondent removed the link to its website, but

initially redirected the disputed domain name to an "under construction"

webpage. (Id., at Exhibits G-K)

In January 2002, Complainant retained specialized intellectual property

counsel to further address the continuing references to its trademarked product

on Respondent’s website, and to demand transfer of the disputed domain name.

In response to correspondence from counsel, Respondent removed reference to

Complainant’s trademarked product on its website, but refused to transfer the

disputed domain name. By letter of January 22, 2002, Respondent asserted

that it had purchased the disputed domain name legally and offered to sell it

to Complainant[3]. In response to Respondent’s

offer to sell, Complainant offered, in return for its transfer, to pay Respondent’s

out-of pocket expenses in connection with the disputed domain name. (Id., at

Exhibits L-M)

Respondent does not presently make active use of the disputed domain name.

It does not resolve to an active web page (id., at para. 22).

Respondent asserts that it registered the disputed domain name after "the

registrar had me wait while he did a search for ties to Amazoy. There was no

evidence to lead him to do anything but sell this to me, legally" (Response).

Respondent indicates that it receives a significant volume of telephone and

email inquiries from customers and potential customers seeking Complainant.

This, according to Respondent, disrupts its business. Respondent states that

it is careful not to associate itself with Complainant. (Id.)

The Registration Agreement in effect between Respondent and Network Solutions,

Inc., Registrar, subjects Respondent to dispute settlement under the Policy.

The Policy requires that domain name registrants submit to a mandatory Administrative

Proceeding conducted by an approved dispute resolution service provider, of

which the Center is one, regarding allegations of abusive domain name registration

and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it holds rights in the trademark "AMAZOY"

based on use in commerce and as evidenced by registration at the USPTO. Complainant

alleges that its rights in the trademark are incontestable. (See Factual Background,

supra)

Complainant alleges the disputed domain name is identical or confusingly similar

to its trademark.

Complainant contends that Respondent has no rights or legitimate interests

in the disputed domain name. Respondent has not been commonly known by the disputed

domain name and is not authorized by Complainant to use it. Complainant argues

that Respondent has not made use of the name in connection with a bona fide

offering of goods prior to notice of a dispute and is not using the disputed

domain name for a legitimate noncommercial or fair use.

Complainant states that Respondent registered and is using the disputed domain

name in bad faith because it registered the name with full awareness of Complainant’s

mark and with intent to use it to disrupt Complainant’s business.

B. Respondent

Respondent contends that the public understands "AMAZOY" as a generic

reference to Meyers Z-52 zoysia grass, which was developed by the U. S.

government. Respondent argues trade the founder of its business as early as

1959-1960 referred to that product in a brochure as "amazing zoysia."

The disputed domain name is therefore a reference to "amazing zoysia"

as used in those early brochures.

Respondent contends that the registrar allowed it to register the disputed

domain name after conducting a search and determining that it was not tied to

Amazoy.

Respondent contends in that it could not agree to transfer the disputed domain

name for its out-of-pocket expenses because it has invested several thousand

dollars in it. It says that it receives numerous complaints about Complainant

and "Retaining the Amazoy domain name would appear to be the cheapest way

to remedy the situation stopping the complaints taking my employees time and

my money."

Respondent contends that it intends to establish a website addressed by the

disputed domain name where it will provide a consumer sounding board about zoysia

grass products, and this will constitute a legitimate use of the name.

Respondent requests a finding of reverse domain name hijacking.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent have notice

of proceedings that may substantially affect its rights. The Policy and the

Rules establish procedures intended to ensure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Respondent has filed a timely Response. The Panel is satisfied

that the Respondent had adequate notice of the proceedings.

Complainant and Respondent have each transmitted a supplemental submission.

The Panel has discretion to accept such submissions in appropriate circumstances.

Complainant’s reply seeks to address Respondent’s contention that its trademark

is generic, and to discuss certain alleged inconsistencies in Respondent’s version

of the facts. There is, however, nothing material in Respondent’s Response that

should not reasonably have been anticipated by Complainant in light of the history

of correspondence with Respondent. Respondent’s supplemental submission is largely

directed to expanding on its genericness and free speech/legitimate interests

arguments. The Panel declines to accept either supplemental submission.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

A. Identical or Confusingly Similar

Complainant has presented substantial prima facie evidence of rights

in the trademark "AMAZOY," including long use in commerce in the United

States and registration on the Principal Register at the USPTO (see Factual

Background, supra). Respondent seeks to overcome Complainant’s prima

facie evidence by asserting that the term "AMAZOY" has become

generic for a type or variety of grass plug. However, Respondent has offered

no evidence of this genericness beyond its mere assertion. Respondent has not

submitted evidence of use of the term "AMAZOY" in a generic sense

by the public or third party sellers of zoysia grass. The Panel rejects Respondent’s

claim that Complainant lacks rights in the mark because it has become generic.

Respondent asserts that "Meyers Z-52 zoysia grass" was initially

developed by an agency or department of the U.S. federal government. There is

not sufficient information in the case file to permit the Panel to form an opinion

regarding the factual basis for this assertion. However, the fact (if demonstrated)

that a product was initially developed by the federal government does not preclude

a third person from marketing that product or its own modified version of that

product under its own trademark, so long as that marketing does not infringe

on a right of the government or a third party (whether a trademark right or

another right, such as a plant variety protection right)[4].

Respondent has also asserted that its founder used the term "amazing zoysia"

in a brochure connected with the marketing of zoysia grass. This is supported

by a photocopy of a brochure. This evidence might best be understood to argue

that Respondent was commonly known by the disputed domain name, and this argument

is discussed in the following section infra. It might also be understood

as a claim by Respondent to priority rights in the "AMAZOY" mark.

To the extent that the latter argument is intended, the Panel rejects it. Complainant’s

"AMAZOY" mark was registered by the USPTO on August 30, 1955.

Respondent asserts that it began selling zoysia grass plugs in "1959/1960"

and its brochure copy on which the term "amazing zoysia" is shown

is undated. It would appear that Respondent’s use of "amazing zoysia"

postdated Complainant’s registration of its "AMAZOY" mark. Respondent

has not presented facts to suggest any priority right in the mark, even assuming

(which the Panel does not) that the terms "amazing zoysia" and "AMAZOY"

are confusingly similar from a trademark law standpoint.[5]

If these terms are confusingly similar, it might be that Respondent infringed

Complainant’s mark at an early date.

The Panel finds that Complainant has established rights in the trademark "AMAZOY."

The disputed domain name <amazoy.com> is effectively identical to Complainant’s

mark from the standpoint of the Policy. The Panel determines that Complainant

has established rights in a mark and that the disputed domain is identical to

that mark. Complainant has established the first element necessary for a finding

of abusive domain name registration and use.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration is that the

respondent has no rights or legitimate interests in respect of the domain name

(Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which

a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, paragraph 4(c)).

Respondent has not argued that it used the disputed domain name to offer goods

or services within the meaning of paragraph 4(c)(i) of the Policy. Respondent’s

arguments with respect to rights or legitimate interests appear to be directed

at paragraphs 4(c)(ii) and (iii).

Respondent implies that it has been commonly known by the domain name <amazoy.com>

because in the late 1950s its marketing brochure referred to "amazing zoysia."

The Panel does not accept that use of the term "amazing zoysia"

some 45 years ago in a marketing brochure establishes that Respondent has been

commonly known as "amazoy.com" or "amazoy." Respondent has

not offered any evidence of recent usage of "amazing zoysia" in its

business activities, and has not offered any evidence that its customer base

would identify it as "amazing zoysia," which theoretically might be

shortened to "amazoy" as a domain name. The Panel finds that Respondent

has not been commonly known by the domain name.

Respondent also suggests that it intends to engage in legitimate non-commercial

or fair use of the domain name by establishing a "sounding board"

as "There are no regulatory agencies in existence to assure the validity

of claims made about products such as Zoysiagrass on the World Wide Web."

Respondent does not suggest that it has previously made such use of the disputed

domain name, and the express language of paragraph 4(c)(iii) refers to

active "making use" of a name. While the Policy provides leeway for

making good faith preparation to use a name for legitimate noncommercial or

fair use purposes[6], the Panel does not

consider Respondent to have evidenced such good faith intent. Respondent has

already used the disputed domain name in bad faith, and its claim to now intend

another use appears an effort to avoid an adverse determination in this proceeding[7].

Complainant has established that Respondent has no rights or legitimate interests

in the disputed domain name, and so has established the second element to support

a finding of abusive registration and use.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, "in particular but

without limitation," be evidence of bad faith (Policy, paragraph 4(b)).

Among these circumstances are that a respondent has "registered the domain

name primarily for the purpose of disrupting the business of a competitor"

(id., paragraph 4(b)(iii)).

Respondent was undoubtedly aware of Complainant’s trademarked product when

it registered the disputed domain name. Having asserted that "half"

the "public" in the United States confuses "AMAZOY" with

the generic term "Meyers Z-52 zoysia grass," Respondent as a specialized

seller in the same line of commerce can hardly claim to have been unaware of

Complainant’s product when it registered the disputed domain name.

Respondent initially redirected the disputed domain name <amazoy.com>

to its own commercial website. Complainant repeatedly objected to Respondent’s

use of its trademark to disparage its product on that website, and Respondent

eventually removed the reference to Complainant and its product.

Respondent has stated that it receives telephone calls and emails intended

for Complainant, so much so (according to Respondent) that this is a major inconvenience

in the conduct of its own business. While offering assurance that it does nothing

to cast aspersions on Complainant, Respondent notes that "Their level of

complaints caused me to attempt to disassociate myself from them." It has

gone so far as to submit a lengthy copy of its telephone bills, suggesting that

if someone would compare these bills against Complainant’s customer records,

they would discover how many of Respondent’s incoming calls were actually intended

for Complainant.

The solution to this confusion, according to Respondent, is for it to keep

the disputed domain name, saying "Retaining the Amazoy domain name would

appear to be the cheapest way to remedy the situation stopping the complaints

taking my employees time and my money." The Panel has some difficulty following

the logic behind this proposed remedy. Respondent seems to suggest that if only

Complainant would cease doing business, Respondent wouldn’t be bothered by consumers

seeking Complainant. Whatever Respondent’s line of reasoning may be, it seems

apparent that Respondent has disrupted and intends to disrupt Complainant’s

business by its registration and use of the disputed domain name.

The Panel finds that Respondent registered the disputed domain name primarily

for the purpose of disrupting the business of a competitor, and has used the

disputed domain name for that purpose.

Complainant has established the third and final element necessary for a finding

of abusive domain name registration and use. The Panel will direct the Registrar

to transfer the disputed domain name to Complainant.

The Panel rejects Respondent’s request for a finding of reverse domain name

hijacking.

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 name, <amazoy.com>

be transferred to the Complainant.

Frederick M. Abbott

Sole Panelist

Dated: February 17, 2004

1. The file transmitted to the Panel does

not include a copy of the email Response. It does, however, include an email

from Respondent dated January 20, 2004, requesting confirmation for its email

Response sent the previous night. The Panel considers the Response was filed

in a timely manner.

2. A USPTO TESS printout of the record of

registration on the Principal Register shows the filing of the affidavit required

by Section 15 of the Lanham Act (15 USC §1065).

3. Complainant had apparently declined an

earlier offer to purchase the disputed domain name from Respondent.

4. Respondent is not precluded from marketing

Meyers Z-52 zoysia grass under its own trademark (assuming that it is not otherwise

infringing on a right of the government or third party).

5. The Panel is inclined to view the terms

"amazing zoysia" and "AMAZOY" as sufficiently distinct from a trademark law

standpoint so as not to be confusingly similar, but need not make a finding

to that effect here.

6. See, e.g., Pfizer Inc v. Van Robichaux,

WIPO Case No. D2003-0399, decided July 16, 2003, and decisions referred to therein.

7. The Panel need not consider whether a

third party other than Respondent acting in other circumstances might be able

to use the disputed domain name in a manner now suggested by Respondent.