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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
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
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,
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.
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
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,
5. Parties’ Contentions
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.
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
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;
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
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
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
Dated: July 17, 2003
1. See Middletown, Rhode Island
Community Profile, at "www.riedc.com/MCDS/middletown.html".