Foodemporium.com

The timeline behind foodemporium.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION The Great Atlantic & Pacific Tea Company, Inc. v. Name Administration Inc. (BVI) Claim Number: FA0806001204907 PARTIES Complainant is The Great Atlantic & Pacific Tea Company, Inc. (“Complainant”), represented by Arlana S. Cohen, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, Pennsylvania, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <foodemporium.com>, registered with Domain Name Sales Corp. PANEL The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding. John J. Upchurch, G. Gervaise Davis, III, and Mark McCormick, Chair, as Panelists. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2008. On June 13, 2008, Domain Name Sales Corp. confirmed by e-mail to the National Arbitration Forum that the <foodemporium.com> domain name is registered with Domain Name Sales Corp. and that Respondent is the current registrant of the name. Domain Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales Corp. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On June 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 10, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@foodemporium.com by e-mail. A timely Response was received and determined to be complete on July 10, 2008. Complainant submitted a timely Additional Submission on July 15, 2008 in accordance with the National Arbitration Forum’s Supplemental Rule 7. Respondent submitted a timely Additional Submission on July 21, 2008 in accordance with Supplemental Rule 7. On July 28, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed John J. Upchurch, G. Gervaise Davis, III, and Mark McCormick, Chair, as Panelists. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant asserts rights in THE FOOD EMPORIUM mark through use of the mark in its supermarket and food store business since 1986, through two trademark registrations and through registration of the domain name <thefoodemporium.com> on February 6, 1998. Complainant contends that Respondent’s domain name <foodemporium.com> is confusingly similar to Complainant’s THE FOOD EMPORIUM mark because it appropriates the dominant portion of Complainant’s mark and simply deletes the term “the.” Complainant also contends that Respondent has no rights or legitimate interests in the mark, that Respondent had actual or constructive notice of Complainant’s prior use of the mark, and that Respondent has not used the disputed domain name for any bona fide offering of goods or services but merely to divert Internet users searching for Complainant’s website to Respondent’s website offering links to third-party commercial websites. Complainant accuses Respondent of bad faith registration and use of the mark largely on the ground that Respondent should be charged with knowledge of Complainant’s rights in the mark and that Respondent’s registration and use of the “identical mark” is inherently deceptive and likely to confuse Internet users and cause disruption of Complainant’s business. B. Respondent Respondent contends that Complainant’s trademark registrations must be narrowly construed because its first registration merely consists of common words in a stylized rendering and its second registration post-dates registration of the disputed domain name, following five previous refusals of applications. Respondent asserts that the registrations should not be deemed to establish for Complainant a global monopoly on use of the mark. In addition, Respondent contends that at least a fact question exists regarding whether Complainant’s THE FOOD EMPORIUM mark conveys a different impression from that created by the widespread third-party use of the term “food emporium.” Respondent contends that it made bona fide use of the domain name for five years without notice of a dispute and that Respondent operates a network of domain names containing common and descriptive terms through which it seeks to obtain paid search results. Respondent alleges that no evidence exists that it has sought to pass itself off as Complainant or even to use the term “food emporium” as a mark. Respondent asserts that the term is widely used and that any rights Complainant has should not be considered applicable globally. Finally, Respondent contends that the evidence would not support a holding that Respondent registered the domain name with an intent to usurp the goodwill of Complainant, denies that it had actual or constructive knowledge of Complainant’s registration of the mark, and asserts that its registration of the disputed domain name was aimed at exploiting the ability of the term itself to attract Internet users and not to take advantage of Complainant’s registration or trademark. C. Additional Submissions In its Additional Submission, Complainant contends that THE FOOD EMPORIUM mark had secondary meaning that was well established prior to its first trademark registration, and Complainant identifies many examples of its use in articles in national publications and on the Internet. Complainant points to its growth in sales revenues as evidence of its use of the mark. Complainant contends that the parties’ websites compete for the same consumers and that the term “food emporium” is not merely descriptive. Complainant contends that Respondent’s use of the term in connection with a “link farm” is not a bona fide offering of goods and services and that it is “inconceivable” that Respondent lacked notice of Complainant’s rights prior to its registration of the disputed domain name. Complainant asserts that the evidence shows consumers associate THE FOOD EMPORIUM mark solely and exclusively with it. In its Additional Submission, Respondent contends that Complainant’s assertion of secondary meaning is questionable beyond Complainant’s local market and that the record does not support Complainant’s assertion that Respondent had actual or constructive notice of its use of the term, given that Respondent is located in the Cayman Islands and has no connection with or operations in Complainant’s local market. FINDINGS Complainant owns supermarket stores in New York, New Jersey and Connecticut. Included are more than thirty stores in New York and Connecticut operated under THE FOOD EMPORIUM name. Complainant also maintains an online site under the name THE FOOD EMPORIUM through which it sells food and grocery products in New York and Connecticut for home delivery. Complainant holds two trademark registrations for THE FOOD EMPORIUM mark. Registration of a stylized version was granted February 11, 2003. Registration of a block print version of THE FOOD EMPORIUM mark was issued to Complainant on July 29, 2005, pursuant to an application filed January 16, 2002. Both of Complainant’s trademark applications asserted a first use of the mark in 1980. Respondent registered the disputed domain name <foodemporium.com> on March 23, 2003. Respondent is located in the Cayman Islands. It operates a network of domain names, using common and descriptive terms on websites on which it posts related links and seeks to obtain paid search results. The record does not show that Respondent at the time it registered the disputed domain name had actual knowledge of Complainant’s claim to THE FOOD EMPORIUM mark. Moreover, the record does not reflect that Respondent has sought to pass itself off as Complainant in order to direct Internet users to its site. No evidence exists that Respondent registered the disputed domain name in an effort to exploit Complainant’s good will. The term “food emporium” has been used extensively by third-parties in offering food and food-related products. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled 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 relies on its trademark registrations and claim of secondary meaning in asserting its rights in THE FOOD EMPORIUM mark and relies on the similarity of its mark with Respondent’s <foodemporium.com> domain name in asserting that it has satisfied Policy ¶ 4(a)(i). Respondent relies on its contention that Complainant’s mark contains common terms, that Complainant’s trademark registrations should not be given global effect, and that the word “the” sufficiently distinguishes Complainant’s mark from Respondent’s domain name in the circumstances of this case. When small differences exist in terms that are descriptive, the differences may be sufficient to distinguish domain names. See Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002). Elimination of the space between the words and the addition of the generic top-level domain “.com” ordinarily does not sufficiently distinguish a domain name. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007). In the circumstances of the present case, the issue under Policy ¶ 4(a)(i) is very close, but the Panel finds that Complainant has marginally established its right in THE FOOD EMPORIUM mark and met its burden to demonstrate that Respondent’s domain name is confusingly similar to Complainant’s mark. Rights or Legitimate Interests The record shows the term “food emporium” is widely used and is descriptive. The record does not show that Respondent had actual knowledge of Complainant’s rights in THE FOOD EMPORIUM mark when it registered its domain name. The Panel finds that the term “food emporium” is generic and descriptive. Moreover, Respondent’s use of the generic term in its domain name as a means of attracting Internet users to its website to access hyperlinks that offer goods and services related to the generic term is legitimate. Complainant has not met its burden to prove that Respondent lacks rights and interests in the disputed domain name within the meaning of Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006). Respondent’s use of the disputed domain name as a generic term in operating its website as a portal to businesses that offer related products constitutes a bona fide offering of goods and services within the meaning of the Policy. See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002). Registration and Use in Bad Faith Because the Panel holds that Complainant has failed to prove Respondent has violated Policy ¶ 4(a)(ii), the Panel finds that it is unnecessary to reach or decide Complainant’s contention of bad faith registration and use under Policy ¶ 4(a)(iii). DECISION Because Complainant has failed to establish the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the request for transfer of the <foodemporium.com> domain name from Respondent to Complainant is DENIED. Panelists Dated: August 26, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.