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Arbitration and Mediation Center
Pneumo Abex Corporation dba MAFCO Worldwide Corporation v. Wixon Fontarome
Case No. D2003-0860
1. The Parties
The Complainant is Pneumo Abex Corporation dba MAFCO Worldwide Corporation, Camden, New Jersey, of United States of America, represented by Fox Rothschild LLP, United States of America.
The Respondent is Wixon Fontarome, St. Francis, Wisconsin, of United States of America, represented by Kelley Drye & Warren, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mag-nifique.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2003. On October 30, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 30, 2003, Tucows 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 November 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2003. The Late Response was filed with the Center on November 25, 2003. On November 26, 2003, Respondent filed a supplement to its Response explaining the basis for the timing of its filing.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 4, 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.
4. Factual Background
Complainant has registered the word trademark "MAG" on the Principal Register of the United States Patent and Trademark Office ("USPTO"), reg. no. 1469567, dated December 22, 1987, in International Class (IC) 1, covering "industrial food additive in the nature of a flavor enhancer", claiming date of first use and first use in commerce of August 14, 1986. Complainant has registered the stylized word trademark "MAGNASWEET" on the Principal Register of the USPTO, reg. no. 2331742, dated March 21, 2000, in IC 30, covering "natural sweeteners", claiming date of first use and first use in commerce of December 12, 1972. (Complaint, para. 12 & Annexes 3 & 4).
Complainant uses "MAG" and "MAGNASWEET" to identify in commerce its licorice extract and licorice extract derivative products, which are used as additives in products manufactured and sold by third parties, such as confectioners, pharmaceutical producers and tobacco product producers.
According to the Registrar’s Verification, Respondent is the registrant of the disputed domain name. According to a Network Solutions WHOIS database report submitted by Complainant, the record of registration for the disputed domain name <mag-nifique.com> was created on November 22, 2002 (Complaint, Annex 1).
Respondent promotes and sells a range of industrial flavoring products under the "Mag-nifique" name.
Respondent has filed an application for registration for the word trademark "MAG-NAFIQUE" [sic] on the Principal Register at the USPTO, ser. No. 76312516, dated September 14, 2001, in IC 1, covering "licorice derivative for use in the manufacture of foods", claiming date of first use and first use in commerce of June 30, 2001. Respondent indicates that a typographical error was made in submission of the aforesaid application, and it intends to correct the application to refer to "MAG-NIFIQUE". The application was published for opposition on October 22, 2002. The application has been allowed and registration will issue in due course. (Response, para. 10, and Annex 1 (USPTO TESS printout of November 22, 2003))
Respondent has since November 2002, operated a commercial Internet website at URL "www.mag-nifique.com" At that website it offers information concerning a variety of industrial flavoring products. (Response, para. 12; Complaint, para. 12 & Annex 5)
Respondent has submitted a printout from Complainant’s website that states, inter alia,
"Magnasweet, Mono-Ammonium Glcyrrhizinate (MAG) is one of the natural substance [illegible] the FDA list of GRAS food additives…
A white crystalline powder, Magnasweet (MAG) is the mono-ammonium salt of a triterpernoid saponin derived from the licorice root. MAG consists of an aglycone of glycyrrhetinic acid and a sugar moiety of two glucuronic acid units." (Response, Annex 5, printout from <www.magnasweet.com> dated November 24, 2003)
Complainant has concurrently with the initiation of this proceeding filed a trademark infringement proceeding against Respondent in U.S. federal district court in New Jersey, USA. In addition, Complainant has brought suit against Respondent for trade secret misappropriation and misuse of confidential information in the state courts of New Jersey. (Complaint, para. 16; Response, para. 42)
The Registration Agreement in effect between Respondent and Tucows, 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
Complainant asserts rights in the word trademark "MAG" and the stylized word trademark "MAGNASWEET" based on use in commerce in the United States and as evidenced by registration at the USPTO (see Factual Background, supra).
Complainant asserts that the disputed domain name <mag-nifique.com> is confusingly similar to its MAG and MAGNASWEET trademarks because it uses the term "MAG" and deliberately sets this off from the remaining portion of the domain name with a hyphen. Complainant states the similarity is "obvious and readily apparent". Complainant states that Respondent’s confusingly similar use of its marks is not an innocent coincidence.
Complainant states that is has not authorized Respondent to use its marks, and that Respondent deliberately adopted its marks to sell its products in competition with Complainant. For these reasons, Respondent is alleged not to have rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent registered and used the disputed domain name in bad faith because Complainant’s marks are very well known, Respondent was aware of its marks, and that persons in the industry would be believe that the entity using the disputed domain name is associated with Complainant in some way. Complainant alleges that Respondent registered and is using the disputed domain name intentionally to divert Internet users for commercial gain.
Complainant requests the Panel to direct the registrar to cancel the disputed domain name.
Respondent contends that Complainant has failed to establish rights in the "MAG" trademark because the term is merely an acronym for the product "Mono-Ammonium Glcyrrhizinate", and is the "name of the genus of products manufactured using ‘MAG’ (Mono-Ammonium Glcyrrhizinate) sweeteners". Respondent asserts that Complainant’s own website uses the term "MAG" generically.
Respondent asserts that Complainant has failed to establish rights in the trademark "MAGNASWEET" because the term is merely descriptive of Complainant’s products. It argues that Complainant has not shown that the mark has acquired secondary meaning, and has only identified the existence of a trademark registration. Respondent acknowledges that registration establishes a rebuttable presumption of validity, which it says can be overcome by evidence of descriptiveness.
Respondent alleges that even if Complainant has rights in the MAG marks, the disputed domain name is not confusingly similar. Respondent alleges that when a common term such as "MAG" is claimed as the principal basis for confusion, the remainder of the domain name, such as "-nifique", must be very closely associated with the alleged mark to cause Internet users to associate Respondent’s website with Complainant.
Respondent argues that it made a bona fide offering of goods under the dispute domain name prior to notice of a dispute with Complainant, and that is commonly known by the domain name because it has rights in an identical mark through common law use. Respondent asserts that filing a trademark application is "persuasive evidence of a Respondent’s rights to a domain name".
Respondent claims that it did not register and use the disputed domain name in bad faith because knowledge of Complainant’s marks is not evidence of bad faith, and Respondent’s website clearly advises visitors that its products are supplied by "Wixon’, and not Complainant.
Respondent asserts that Complainant initiated this proceeding to bring pressure in relation to litigation in other forums.
Respondent alleges that Complainant has engaged in 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 Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.
Respondent filed its Response the day following the due date for filing set out by the Center in the Notification of Complaint and Commencement of Administrative Proceeding. That date was calculated by the Center on the basis of Paragraph 5(a) of the Rules that provides, "Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider."
Respondent states that because the Rules are silent as to whether the provision regarding the filing date for a Response refers to calendar days or business days, it consulted the WIPO Arbitration Rules. Those rules provide that if the final date for a submission falls on a non-business day, the final date will be extended to the next following business day (Article 4(e), WIPO Arbitration Rules).
The Rules (associated with the Policy) in several provisions specifically refer to "calendar days" (see, e.g.ё paras. 4(a), 6(b), (d) & (e), 16(a) and 19(c)). Paragraph 5(a) of the Rules addressing the due date for a Response refers only to "days". This difference in treatment is not explained by the Rules, or by the Supplemental Rules. The WIPO Arbitration Rules do not apply to dispute settlement under the Policy. The due date for a Response had been expressly notified to Respondent by the Center in accordance with its consistent interpretation of the Rules. However, Respondent did not act unreasonably in construing the time period for filing a Response to include the next day following a non-business day in the United States. There are no special circumstances here that argue for rejecting the Response. It is therefore accepted.
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 asserts rights in two trademarks, "MAG" and "MAGNASWEET". Respondent challenges Complainant as to its rights in each asserted mark.
"MAG" and "MAGNASWEET" are each registered on the Principal Register of the USPTO, thereby establishing for each a presumption of validity and rights in Complainant to exclusive use in the United States.
Respondent asserts that the term "MAG" is generic, being an acronym commonly used in the industrial food industry in reference to "Mono-Ammonium Glcyrrhizinate", a sweetening substance derived from licorice root. Respondent has provided evidence that Complainant uses MAG in this commonly descriptive or generic sense in its promotional literature (stating, e.g., "Magnasweet, Mono-Ammonium Glcyrrhizinate (MAG) is one of the natural substance [illegible] the FDA list of GRAS food additives…")(see Factual Background, supra).
When the validity of a registered mark is challenged on the basis of genericness, the burden is on the challenger to demonstrate that fact. Respondent has presented evidence sufficient to raise serious question as to whether Complainant’s asserted "MAG" mark is generic or commonly descriptive, and therefore unenforceable. However, in light of the Panel’s determination regarding confusing similarity, it need not make a determination regarding this question. Complainant has commenced trademark litigation against Respondent, and the parties in that litigation may develop a more complete factual record on the question of genericness. To the extent that Complainant might have trademark rights in the term "MAG", those rights are very thin.
Respondent argues that Complainant does not have rights in the term "MAGNASWEET" because Complainant has not presented adequate evidence of secondary meaning or distinctiveness. Respondent in a footnote to its Response acknowledges that federal registration creates a presumption of validity (which, the Panel notes, includes a presumption of secondary meaning for marks that are not inherently distinctive). It thus acknowledges that it carries the burden of proving that Complainant’s mark lacks secondary meaning. Yet virtually all of Respondent’s evidence on the question of the generic or commonly descriptive character of Complainant’s alleged marks goes to the term "MAG", and not to "MAGNASWEET". It states that "MAGNASWEET" is "merely descriptive of [Complainant’s] products sold thereunder, namely, sweeteners made from "MAG". If Respondent considers that it has adequately rebutted the presumption of validity of "MAGNASWEET" it is mistaken. This term is materially different in visual impression, sound and meaning from "MAG", and does not automatically convey the association suggested by Respondent. The fact that Complainant uses "MAG" – connected by the additional syllable "NA" -- with "SWEET" does not establish common descriptiveness. Respondent has not demonstrated that "MAGNASWEET" is invalid as commonly descriptive or generic, nor has it raised serious doubt on this point. The Panel determines that Complainant has rights in the trademark "MAGNASWEET".
Yet Complainant must also demonstrate that the disputed domain name is identical or "confusingly similar" to a mark in which it has rights. The disputed domain name <mag-nifique> uses the term "MAG" (with a hyphen) in combination with the term "nifique" to create a French word that translates into English as "magnificent". It is, in fact, a French word so commonly used by speakers of English as to need no translation. Without the hyphen present, there is modest commonality between the terms "MAGNASWEET" and "magnifique", and not so much, in view of the Panel, to result in confusing similarity.
However, the comparison between terms is complicated here because Respondent has set the term "MAG" off with a hyphen, thus created a visually isolated impression of "MAG" in "mag-nifique". The disputed domain name must in its hyphenated form be compared with "MAG" and MAGNASWEET". The Panel has previously noted that if Complainant has rights in the term "MAG" those rights are very thin, based on Respondent’s evidence, inter alia, of Complainant’s own use of the term in a descriptive sense. To the extent that Respondent has added the term "-nifique" it has created a new combination term which distinguishes its use of "MAG" from that of Complainant. It has not added a common descriptive term such as "sweetener" to MAG, such as might appear to deliberately take advantage of Complainant’s asserted mark, but has instead added a unique identifier "-nifique". Moreover, Respondent’s website makes clear that it is not selling or promoting "MAGNASWEET" or a product of Complainant, but is instead promoting a product of another enterprise.
The Panel further notes that mono-ammonium glcyrrhizinate products are not of interest to the casual Internet user. From the evidence presented, the products appear to be purchased and used in bulk by industrial food processors. Such industrial consumers are more likely than retail Internet customers to draw a distinction between suppliers, and not to inadvertently submit an order to the wrong supplier.
Finally, the Panel is influenced by the USPTO’s decision to allow registration of Respondent’s "MAG-NAFIQUE" [sic] mark in the same class as Complainant’s asserted "MAG" mark. The trademark examiner at the USPTO should have considered whether there is confusing similarity with an existing registered mark, and the examiner did not reject Respondent’s application. While such decision is not binding on this Panel, it is further evidence of absence of confusing similarity.
Complainant might in the course of its trademark infringement litigation against Respondent be able to provide evidence of actual confusion, survey evidence or other evidence sufficient to persuade a trier of fact of confusing similarity among purchasers of mono-ammonium glcyrrhizinate products. However, the Panel is not persuaded of confusing similarity on the weight of the evidence here.
The Panel determines that the disputed domain name <mag-nifique.com> is not confusingly similar to "MAG" or "MAGNASWEET" within the meaning of Paragraph 4(a)(i) of the Policy.
Having determined that Complainant has not established rights in a trademark which is identical or confusingly similar to the disputed domain name, the Panel need not determine whether Respondent has rights or legitimate interests or has registered or used the disputed domain name in bad faith.
The Panel rejects Respondent’s request for a finding of reverse domain name hijacking. Complainant has demonstrated rights in a least one registered trademark as to which it has made a plausible case (even if rejected) of confusing similarity with the disputed domain name. It has not evidenced bad faith by initiating this proceeding.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: December 17, 2003