DECISION

 

Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co. Ltd.

Claim Number: FA0303000149188

 

PARTIES

 

Complainants are Schouten Industries B.V. and Schouten Products B.V., NETHERLANDS (“Complainants”) represented by R. Peter Spies, of Dineff Trademark Law Limited.  Respondent is Canadian Soylife Health Co. Ltd., Vancouver, BC, CANADA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <soylifeca.com>, registered with Tucows, Inc.

 

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.

 

Houston Putnam Lowry (chair), Tom Arnold and David H. Bernstein as Panelists.

 

PROCEDURAL HISTORY

 

Complainants submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 12, 2003; the Forum received a hard copy of the Complaint on March 14, 2003.

 

On March 13, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <soylifeca.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 March 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 7, 2003 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@soylifeca.com by e-mail.

 

A timely Response was received and determined to be complete on June 9, 2003.

 

Complainants’ timely Additional Submission was received on June 16, 2003.

 

Respondent’s timely Additional Submission was received on June 23, 2003.

 

On July 2, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Houston Putnam Lowry (chair), Tom Arnold and David H. Bernstein as Panelists.

 

RELIEF SOUGHT

 

Complainants request that the domain name be transferred from Respondent to Complainants.

 

PARTIES’ CONTENTIONS

 

A. Complainants

 

[a.]            The disputed domain name is identical to Complainants' trademarks; ICANN Rule 3(b)(ix)(1); ICANN Policy  4(a)(i).

 

(i)            Complainants, Schouten Industries B.V. and Schouten Products B.V. are sister corporations, which are both owned by the Royal Schouten Group.

 

(ii)            Complainants own a registered and pending trademark in the United States, a registered trademark in Canada as well as numerous registrations world wide for SOYLIFE (hereinafter "the mark").

           

(iii)            Complainants own a registration for the domain name “soylife.com.”

 

(iv)            Complainants have been using the mark in commerce since September of 1995.  During this period, the mark has acquired distinctiveness and holds, for Complainants, substantial goodwill.  The mark has been used on direct promotional materials, on customer packaging, at trade shows and has been advertised in professional trade magazines.  Complainants have spent an estimated $ 750,000.00 to $ 1,000,000.00 in marketing expenses to promote its mark, SOYLIFE.

 

(v)            The disputed domain name, soylifeca.com, and Complainants' trademarks are identical.  The domain name is identical to Complainants' trademarks in appearance sound and connotation.  See Restatement (Third) of Unfair Competition §21(a) (1995).  Viewed in its entirety the domain name differs from Complainants' trademark solely by the suffix "ca", identifying the country code abbreviation for Canada, which, as such, has no distinguishable character, and may therefore be considered generic.  The mere addition of a geographic prefix or suffix to a registered mark does not prevent the domain name from being found to be confusingly similar. See Texaco, Inc. v. Texaco Domain Canada, FA94869 (Nat. Arb. Forum June 27, 2000); BPM Productions, Inc. v. Bog, FA125814 (Nat. Arb. Forum Nov. 14, 2002).

 

Complainants' mark, SOYLIFE, is the dominant element of Respondent's soylifeca.com domain name and thereby will cause damaging confusion in the market.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)

 

 

[b.]            Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint.  ICANN Rule 3(b)(ix)(2); ICANN Policy  4(a)(ii).

 

(i.)            Respondent's use of the domain name before prior to this dispute can not be considered a bona fide offering of goods or services.

 

A bona fide offering of goods and services requires that the Respondent had no knowledge of Complainants' prior rights in the trademark SOYLIFE and the domain name soylife.com.  A bona fide offering further requires that the Respondent has engaged in a good faith attempt to establish its business.   

 

Complainants' US trademark registered on June 24, 1997 with a priority date of December 29, 1995; the Canadian trademark registered on February 24, 1998 with priority of December 20, 1995.  Complainants' domain name soylife.com was registered on July 31, 1997.

 

Respondent commenced its business activities in January 2000 and the company was registered pursuant to Canadian federal law in July of 2001.  Respondent filed an Intent-to-Use application for the mark SOY LIFE with the Canadian Intellectual Property Office on July 18, 2001 and an Intent-to-Use application for the mark SOYLIFE with the USPTO on October 17, 2001.  The domain name soylifeca.com was created on June 29, 2001.

 

Prior to Respondent's commencement of business, Complainants had already used and registered its mark SOYLIFE in commerce.  Consequently, Complainants had already created and established goodwill in the mark before Respondent registered the disputed domain.

 

Respondent is not only using Complainants' trademark as a domain name, Respondent has also filed a separate Intent to Use application in Canada and the United States that are identical to Complainants' prior trademark registrations.  A review of the US Patent and Trademark Office's on-line database shows that Complainants own the only Registration for the mark SOYLIFE.  The US search result shows only two additional marks, namely, a pending application for SOYLIFE in the name of Complainants and a pending application in the name of Respondent.

 

A search of the Canadian Trademark Office's on-line Register mirrors the aforementioned finding.  Complainants own the only registration for the mark SOYLIFE on the Canadian Register. The only other mark on the Canadian Register is a pending application for SOY LIFE in the name of Respondent.

 

The search results underline the strength of Complainants' mark in both countries.  The results also suggest that it is unlikely that a third party would create the exact same mark for an accessory or related product without the intention to benefit from the goodwill that is associated with the senior mark.

 

In light of the above, it is apparent that Respondent had notice of Complainants' trademarks and domain name prior to starting its own business.  The registration of Complainants' trademarks prior to Respondent's registration and use of the domain name soylifeca.com should have provided Respondent with public notice of Complainants' ownership and rights in the same. 

 

Respondent has no overriding or superior rights or legitimate interests in the domain name nor does he enjoy a license or is otherwise authorized to make any use of the SOYLIFE mark for any purpose.  Respondent is simply exploiting the fact that consumers and potential; customers may include a geographic term, e.g. the country code "ca" when searching for consumer products on-line.  See Hewlett-Packard Company v. Alvaro Collazo, FA144628 (Nat. Arb. Forum March 5, 2003).

 

(ii.)            Respondent has not been commonly known by the domain name soylifeca.com.

 

At the time Respondent registered the domain name soylifeca.com, Respondent had just commenced its business activities.  It registered its company under Canadian federal law one month after the registration of the domain name.  Consequently, Respondent was not commonly known under the disputed domain name at the time of the filing.

 

Complainants' further investigation has not uncovered any evidence that Respondent has been commonly known by the disputed domain name.  An on-line search for the key word "soylife" utilizing the search engines "Google", "Altavista", "Lycos" and "Yahoo", has revealed only web sites and articles related to Complainants' trademark and products.

 

In light of these results, Complainants conclude that Respondent was not at the time of filing, nor is now, commonly known by the domain name soylifeca.com.

 

(iii.)            Respondent is not making a legitimate noncommercial or fair use of the domain name, but rather has shown a clear intent to commercially gain from misleading and diverting consumers and/or an intent to tarnish the trademark or service mark at issue.

 

Respondent is using the domain name soylifeca.com for its own commercial benefit, using the site to sell its soymilk maker.  Respondent registered and used the soylifeca.com domain name to promote the sale of this product.  It is neither a bona fide offering of goods or services nor an example of a legitimate noncommercial use when the holder of a domain name uses it to divert Internet users to its own unrelated site.  See AM. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).  Respondent is not making a legitimate non-commercial or fair use of the domain name, since it clearly is seeking commercial gain by misleadingly diverting consumers to its own website.  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000).  Respondent's use of the domain name to sell competing goods or goods that relate to Respondent's products is an illegitimate use and not a bona fide offering of goods.  See The Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000).

 

In addition, the goods that are covered by Complainants' marks and the goods that are marketed under the disputed domain name stand in close proximity as Respondent's goods are accessory to those of Complainants. Respondent is taking advantage of the similarity between Complainants' registered mark and the disputed domain name to market its soymilk maker.  See Princeton University Press v. Good Domains, FA 124993 (Nat. Arb. Forum Nov. 4, 2002)

 

Respondent markets an electronic device that enables consumers to produce soymilk from soybeans.  Respondent's product uses Complainants' product (soy beans) in order to produce soy milk (non-alcoholic soy based beverages).  Based upon the aforementioned, Respondent's product is clearly complementary to Complainants' products.  The products stand in close proximity, which will cause consumers to likely associate Complainants' products with those of Respondent's.  Both, Complainant and Respondent, target the same audience, namely, health conscious consumers or consumers with special dietary needs. 

 

Respondent opportunistically uses Complainants' SOYLIFE mark to generate interest in its soylifeca.com domain name and corresponding website.  Such commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use.  See Arrow Electronics, Inc. v. Vitty, Inc., FA140637 (Nat. Arb. Forum Feb 18, 2003); Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum March 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant's trademarks).

Importantly, the site that an Internet user is accessing when they enter soylifeca.com offers Respondent's product, which relates to Complainants' products.  Respondent's use of another organization's trademark to attract business is not a bona fide offering of goods.  Diverting consumers to Respondent's competing site is incompatible with a legitimate noncommercial or fair use of a domain name. See Best Western Int'l, Inc. v. Sepia, FA 113984, at 3 (Nat. Arb. Forum June 26, 2002)

 

[c.]            The disputed domain name has been registered and used in bad faith; ICANN Rule 3(b)(ix)(3); ICANN Policy  4(a)(iii).

 

By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.

 

As mentioned herein above, [5][b](i), a registered trademark operates as constructive notice of the existence of a mark.  Yet, when a Respondent registers a domain name that is identical to a trademark, despite actual or constructive notice, this constitutes bad faith.  See Singapore Airlines Ltd. v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000; Princeton University Press v. Good Domains, FA124993 (Nat. Arb. Forum Nov. 4, 2002). 

 

In the year 2002, the on-line auction house www.auctionmart.canada.com linked to the AuctionMart Edmonton (edmontonauction.canada.com), which offered Respondent's soymilk maker for bid.  On that same page, the Internet user could find a link to Complainants' web site www.soylife.com, which was posted right next to a picture of Respondent's product.

 

Respondent uses the SOYLIFE mark in the soylifeca.com domain name to divert Internet users to a website that sell accessory and related products.  This is a commercial purpose for which Complainant has no legitimate reason to use the name or mark SOYLIFE or soylifeca.com.  See Hewlett-Packard Company v. Alvaro Collazo, FA144628 (Nat. Arb. Forum March 5, 2003).  By diverting consumers to sites selling related products, Respondent is opportunistically attempting to trade on and to profit from the goodwill in Complainants' mark. 

 

It is evidence that a domain name has been registered in bad faith when a Respondent registers a domain name that is identical to a trademark despite actual or constructive notice of the mark.  See Princeton University Press v. Good Domains, FA124993 (Nat. Arb. Forum November 4, 2002).  Registration of a domain name, despite knowledge of Complainants' rights, is evidence of bad faith registration pursuant to Policy Section 4(a)(iii).  See HP Company v. Avaro Collazo, FA144628 (Nat. Arb. Forum March 5, 2003); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000); America Online, Inc. v. Fu, D2000-1374 (WIPO December 11, 2000) (finding a suggestion of opportunistic bad faith where a mark was obviously connected with the complainant and its products and where respondent had no connection with the complainant or its products).  The use of Respondent's product in connection with Complainants' trademark and domain name clearly indicates Respondent's bad faith. 

 

When Complainant learned of Respondent's existence, Complainants sent a Cease & Desist letter requesting Respondent to cease all use of its mark SOYLIFE.  Respondent has ignored these communications. 

 

Respondent's use of Complainants' trademarks as a domain name does not constitute a bona fide offering of goods and services and shows Respondent's bad faith in registering the disputed domain name.  See The Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000)

 

The domain name at issue is so confusingly similar to Complainants' trademarks SOYLIFE and domain name soylife.com that reasonable Internet users will assume that the domain name is somehow affiliated with Complainants.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000).  Internet users intending to access Complainants' web site will think that an affiliation of some sort exists between the Complainants' and the Respondent, when in fact, no such relationship exists.

 

B. Respondent

 

Respondent's Soymilk Maker Business

In or around January 2001, Respondent traveled to China seeking products to import for resale.  On this trip Respondent found a product that makes fresh milk from soy beans (the "Soymilk Maker").  Respondent signed an agreement with the manufacturer to import and distribute the Soymilk Maker in North America.  Respondent returned to Canada around March 2001 and commenced efforts to establish its business to sell the Soymilk Maker.  As part of its business plan, Respondent planned to sell the machine under its own proprietary name under which the manufacturer would provide customized labeling and packaging.  Respondent needed to create a name for its company and selected Soylife after researching the names used by other competing sellers of soymilk makers.  It learned that the names of some competitors were Soy Love, Soyajoy, Soy Club, Soy Wonder, Soy Toy,  Soy 'n Joy, and Soy Wonder.  Believing that the company and product needed to have the word "soy" in it, Respondent simply paired this word with other common words having positive health connotations and arrived at the Soylife automatic soymilk maker for the machine and Canadian Soylife Health for its company name.  Because Respondent was aware of no other soymilk distributor operating under the name Soylife, it concluded that it could operate under this name, and made this decision in the third week of June 2001.

 

To date, Respondent has invested over $300,000 in its business operations and marketing.  It has marketed the Soymilk Maker at numerous trade shows, advertised in newspapers and health magazines.  Respondent's product is carried by over 200 retailers in North America.  Sales revenue for 2002 was $197,000.00 and is over $120,000 so far in 2003.  To date, Respondent has shipped approximately 4,000 total machines.

 

Respondent’s Trademarks and Domain Name

On June 29, 2001, Respondent registered the domain name <soylifeca.com> because <soylife.com> was unavailable and the addition of the "ca" related to both the fact that Respondent is a Canadian company and that its company name contained the word "Canadian."  On July 18, 2001, Respondent filed an application for a Canadian trademark for SoyLife, which was approved by the Canadian Intellectual Property Office on November 26, 2002.  Respondent established Canadian Soylife Health Co. Ltd., which was federally registered under the Canadian Business Corporations Act as of July 19, 2001.  In or around October 2001, Respondent placed an initial order for eight hundred soymilk makers, and began marketing them to stores, with the first shipment arriving in December 2001.

 

On October 17, 2001 Respondent filed an application to register SOYLIFE as a trademark with the U.S. Patent and Trademark Office ("PTO").  In a letter to Respondent dated January 18, 2002, the PTO trademark examiner reported that there were "NO CONFLICTING MARKS.  Specifically, the trademark examiner stated:

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. 1052(d). TMEP section 1105.01.

 

The letter from the PTO further stated that Respondent could rely on its Canadian trademark application as a further basis for registration, something that Respondent desired to do in order to rely on its earlier priority date.  On March 17, 2002 Respondent wrote to the PTO advising that it wished to rely on the Canadian trademark registration as a further basis for registration.

 

Complainant's SOYLIFE Trademarks and Business

Contrary to the allegations in the Complaint, Complainant does NOT have any registered trademark for the term SOYLIFE.  To the contrary, both of Complainant's U.S. trademarks and its Canadian trademarks are "design" marks which all include an elliptical pattern in front of the term soylife in stylized lettering.  Moreover, Complainant's Canadian trademark contains an express disclaimer which states:

 

The right to the exclusive use of the word SOY is disclaimed apart from the trademark

 

Complainant does not market soymilk makers.  To the contrary, Complainant sells food ingredients.  Complainant's web sites expressly states:

 

Our range of soy gem concentrates and extracts rich in isoflavones.  These well-researched ingredients are used all over the world in foods and supplements to make our diets healthier

 

Complainant's Objection to Respondent's Use of its Trademark

On or about March 9, 2002, Complainant's counsel wrote to Respondent objecting only to its Canadian trademark application - and not to the Disputed Domain.  Because Respondent had already made substantial investments in product and promotional materials in connection with its marketing of the Soymilk Maker, it could not comply with Complainant's request.  Complainant also noted that an advertisement for Respondent's products on a Canadian auction web site listed Complainant's web site URL soylife.com, instead of Respondent's web site soylifeca.com.  Of course, this was simply a typographical error made by the web site, since Respondent had no interest to send traffic to Complainant's web site.  Respondent corrected this error.  Respondent believed it had no obligation to comply with any of Complainant's other requests because i) Complainant was not engaged in the business of marketing soymilk machines or appliances of any kind; and ii) the PTO had already concluded that Complainant's mark was not a bar to registration of Respondent's mark and iii) the Canadian Intellectual Property Office had approved its mark.  It would cause a tremendous hardship to Respondent if it had to now abandon the soylifeca.com domain name because the web site is listed on the written product materials enclosed with every Soymilk Maker that has been distributed, and the domain name is used for the technical support email address.  If the Disputed Domain were transferred, thousands of consumers would not be able to contact Respondent to resolve customer service issues.

 

In April 2003, Complainant filed an opposition to the registration of Respondent's Canadian trademark.  Because of the opposition filed by Complainant, it was likely that the U.S. trademark would be approved for registration prior to the registration of the Canadian trademark.  To eliminate this potential problem, Respondent contacted the trademark examiner in May 2003 to request suspension of the application until registration of the Canadian mark was complete.  The trademark examiner complied with this request and issued a Notice of Suspension on May 19, 2003.

 

C.  Complainants’ Additional Submission

 

1.            Complainants own the exclusive right to use the mark SOYLIFE in commerce in the United States and Canada as afforded to them by federal registration.  As demonstrated in the Complaint, Complainants own two registrations for the mark SOYLIFE in the United States, namely,

 

SOYLIFE, US Reg. No. 2073367, Reg date: June 24, 1997 covering "preserved soybeans" in International Class 29 and "soybean parts used as foods supplements; preserved soybeans used as nutritional supplements" in International Class 5. 

 

SOYLIFE, US Reg. No. 2705007 (US Serial. No. 75878899 in the Complaint has registered in the meantime) covering "Soy -based meals, powders and flour preparations for use as ingredients in food" in International Class 30 and "Non-alcoholic soy based beverages, non-alcoholic soy based beers and smoothies; concentrates, syrups and powders used in the preparation of non-alcoholic drinks" in International Class 32. 

 

Complainants further own Canadian Registration No. TMA490433 for SOYLIFE covering "Preserved soybeans for nutritional purposes; parts of soybeans to be used as food supplements". 

 

These marks are word marks as evidenced by the printouts of the official US Patent and Trademark Office's (USPTO) and Canadian Trademark Office's online databases and afford Complainants full and exclusive rights to any and all uses of the mark.  As is apparent, the Complainants' marks are registered as composite marks, which entail the word SOYLIFE and a simple spiral design.  The addition of the simple design portion of these marks along with the word mark do not render them design marks nor does the addition of a design portion diminish Complainants' exclusive right in the term SOYLIFE.  Respondent's allegation, repeated throughout the Response, that Complainants’ marks are design marks is wrong and misleading.  In addition, the fact that Complainants have disclaimed exclusive ownership of SOY apart from the mark as registered in Canada is irrelevant to this dispute as Complainants, in this matter, object to Respondent's use of their trademarks SOYLIFE.  The term SOY is free to be used by any interested party, including Respondent.

 

2.            Respondent's trademark applications in the US and Canada have neither issued nor have these applications been approved for registration in either country.  Throughout their response, Respondent has stated that the Canadian mark has issued, has been approved and that they have acquired rights in these marks.  The truth is that the Canadian application has been published and has subsequently been opposed by Complainants.  The opposition proceeding is currently pending.

 

In this respect, Respondent's allegation that he had requested the suspension of the US application in light of the pending opposition in Canada is wrong and misleading since the US application had been based on Section 44(d) (foreign application) as well as Section 1(b) (intent to use) and it is common USPTO practice to suspend applications pending the receipt of a copy of the Certificate of Registration of the foreign base registration.

 

3.            The disputed domain name is identical to Complainants trademarks.  The dominant part of the disputed domain name, SOYLIFE, is identical to Complainants marks.  The Respondent is outright using Complainants' registered marks.  The mere addition of a generic or descriptive term to the trademark does not render the disputed domain name distinguishable.  Respondent's attempt to label the generic abbreviation "ca", as part of soylifeca.com, as an abbreviation of their company name and therefore somehow unique and protectable, is unimpressive since such an abbreviation is on its face a geographic and generic term.  In this respect, and contrary to Respondent's claims, Complainants supporting case law cited on this particular issue is relevant and on point since these cases deal with the issue of similarity of the disputed domain names with established trademarks.

 

4.            Complainants stress that by copying Complainants' marks in their entireties for goods that are earmarked for use along with Complainants' goods, Respondent's pending trademark applications are clearly confusingly similar to Complainants' prior registered trademarks.  The fact that the Examiner may not have cited Complainants' marks as an obstacle to registration against Respondent is not dispositive of whether the marks are, in fact, confusingly similar in the market place.  Federal registration procedure in the US and Canada include publication of the respective application and the possibility for third parties to file oppositions against any mark that may be seen as confusingly similar.  The issue of likelihood of confusion is rather subjective, which is why the registration procedure allows for third party intervention in the form of oppositions and cancellation actions.  There is ample case law to illustrate the many, many instances where an Examiner has failed to cite a prior registered mark against a newly pending trademark application, but where the pending mark was deemed confusingly similar by the decision of the Trademark Trial and Appeal Board (TTAB) and related judicial venues.  This is plainly illustrated by the number of marks approved for publication, thereafter opposed and litigated by a third party in the TTAB and found to be confusingly similar.  Therefore, it goes to reason that every decision rendered in favor of an opposing party would demonstrate the amount of times an Examiner's decision was not, in fact, controlling.  Similarly, Respondent's argument that because an Examiner may have approved their mark for publication is controlling evidence of no confusion, is simply inaccurate and wrong.

 

5.            Complainants have shown the confusing similarity of their respective marks and domain name soylife.com with the disputed domain name.  Further, Complainants have demonstrated in the Complaint an actual incident of confusion in the market by showing that the Canadian auction house www.auctionmart.canada.com had provided a link to Complainants' homepage, which is located at www.soylife.com.  This cite was intended to lead to Respondent, but instead merely highlights the confusing similarity between Complainants' trademarks and the disputed domain name and can not be discarded as a simple typographical error. 

 

6.            Not only is the disputed domain name identical to Complainants' trademarks, the Respondent has used the identical mark to offer related goods in association with the disputed domain name, only exacerbating the risk of confusion and further demonstrating its bad faith.  In addition to Complainants' statements in the original Complaint, Complainants stress that the goods of the parties need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from the same source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984)

 

Related goods are those "products which would be reasonably thought by the buying public to come from the same source if sold under the same mark." See Standard Brands, Inc. v. Smidler, 151 F.2d 34, 37 (CA 2 1945).  For related goods, the danger presented is that the public will mistakenly assume there to be an association between the producers of the related goods, though no association exists.  See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 350 USPQ 808 (CA, Cal, 1979).  Respondent markets an electronic device which enables consumers to produce soymilk from soybeans.  Respondent's product uses Complainants' product (soy beans) in order to produce soy milk (non-alcoholic soy based beverages).  Respondent's product is clearly complementary to Complainant's products.  The products could not stand in closer proximity, which will cause consumers to likely associate and confuse Complainants' products with those of Respondent's.  Both Complainant and Respondent target the same audience, namely, health conscious consumers or consumers with special dietary needs. 

 

Therefore, Respondent's claim that the parties market completely different products is, in the least, inaccurate.  As a side note, Complainants' point out that the cited case Lockheed Martin Corp. v. Dan Parisi, No. D2000-1015 (Jan. 26, 2001) citing Bally Total Fitness v. Faber, 29 F. Supp. 2d. 1161 (CD Cal 1998) as the source of Respondent's argument is distinguishable on its face as the panel in that case found the domain names to clearly not be confusingly similar since it was apparent that consumers would not look to the disputed domain names, i.e., lockheedsucks.com and lockheedmartinsucks.com, for purchasing goods offered by Lockheed on their own web site.  In the instant case, however, consumers clearly can be and are confused about which domain name might offer information for each parties' goods and/or services as the disputed domain name is identical to Complainants' trademarks. 

 

D.  Respondent’s Additional Submission

 

1.            Complainant's Marks Are Not Identical to the Disputed Domain

Regardless of whether Complainant's mark is characterized as a design mark or composite word and design mark, the fact remains that the cylindrical design is a part of the mark and, together with that design, the mark is not identical to SOYLIFECA.COM. 

 

2.            Respondent DID NOT state that its Canadian mark has "Issued"

Complainant has attempted to malign Respondent by suggesting that Respondent dishonestly represented to the Panel that its "Canadian mark has issued."  Respondent made no misrepresentation, whatsoever.  .  Nowhere in the Response does Respondent state, or even suggest, that the mark "issued." Respondent simply reports the truth: The mark was approved by the Canadian Intellectual Property Office which issued its "APPROVAL NOTICE" on November 26, 2002; and the U.S. Patent and Trademark Office reported that there were "no similar registered or pending mark which would bar registration."  Moreover, Respondent expressly referred to the opposition proceeding filed by Complainant with the Canadian trademark office.  It hid nothing.

 

3.            Respondent Truthfully Stated that it Requested Suspension of its U.S. Trademark Application Until its Foreign (Canadian) Trademark Would Issue

Complainant again attempts to malign Respondent before this Panel suggesting that Respondent misled the Panel with respect to the suspension of its U.S. Application.  The truth is that Respondent suspended the application so that it could rely on the earlier filing date of its Canadian mark, the registration of which was being held up by Complainant's opposition.  A letter from U.S. Patent and Trademark Office ("PTO"), was provided which expressly states: "action on this application is suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration." The letter from the PTO even goes on to state: "Please inform the examining attorney when the foreign application has been registered in Canada."  Accordingly, the fact that Respondent requested the suspension in light of the pending opposition to the Canadian trademark cannot credibly be questioned.

 

4.            Respondent's Use of its Trademark is Not Related to Complainant's Goods and Services but this Trademark Issue is not Relevant in a UDRP Proceeding in any Event.

Of course Respondent uses the disputed domain SOYLIFE in connection with Soy.  But its product is a machine that makes soy milk, and Complainant does not make any kind of machine, its products and services being food additives and ingredients.  Moreover, Complainant was required to disclaim the exclusive right to use the word "soy" for the very reason that it is descriptive of what Complainant sells.  Accordingly, Respondent was, and is, entitled to use the Disputed Domain and the trademark SOYLIFE - a position vindicated by the U.S. PTO and the Canadian Trademark Offices which both found no confusingly similar trademarks which would bar registration.  It is true that the trademark offices are not the final word on registration, because of Complainant's ability to oppose the marks.  Nevertheless, the findings of not one, but two, trademark examiners should go a long way in demonstrating for this Panel that Respondent's use of the mark SOYLIFE for a machine that makes "soy" milk was lawful and in good faith.  Moreover, the UDRP deals with abusive domain name registration, not with trademark claims.  The extent of protection to which Complainant's trademark is entitled is not an issue for a UDRP Panel to decide.  Bridgestone Firestone, Inc. et al. v. Myers, No. D2000-0190 (WIPO July 6, 2000) (<bridgestone-firestone.net>) ("the Panel does not have jurisdiction to decide claims of trademark infringement, dilution, unfair competition or other statutory or common law causes of action.")  A proper application of the UDRP must lead to a ruling in favor. Respondent has indisputably used soylifeca.com in connection with the bona fide distribution of its Soylife Automatic Soy Milk Maker - a fact which clearly establishes both Respondent's legitimate interest in the Disputed Domain and the lack of bad faith registration and use.

 

FINDINGS

The Panelists find by a majority vote:

Respondent’s <soylifeca.com> domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

the Respondent has no rights or legitimate interests in respect of the domain name; and

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

 

 

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 a Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

the Respondent has no rights or legitimate interests in respect of the domain name; and

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

 

Identical and/or Confusingly Similar

 

Complainants have rights in the SOYLIFE mark by virtue of their registration of the mark in over 17 countries worldwide, including Canada, Respondent's nation of domicile. Complainants also have established common law rights in the mark due to use of the mark in commerce since 1995.  In some jurisdictions, the registration is owned by Schouten Industries, in others it is owned by Schouten Products.  Complainants have not explained why they have filed this proceeding jointly, but given that Respondent has not objected, the Panel will simply treat them as one entity.

 

Respondent's <soylifeca.com> domain name is confusingly similar to Complainants’ SOYLIFE mark. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to complainant's famous mark); see also Broadcom Corp. v. Myers & Myers; K Myers, FA 100136 (Nat. Arb. Forum Oct. 24, 2001) (finding the domain name <broadcomusa> is confusingly similar to complainant's BROADCOM mark).  The domain name contains Complainants’ entire registered mark.  Wal-Mart Stores, Inc. v. MacLeod, Case No. D2000-0662 (WIPO Sept. 19, 2000) (a domain name is similar to a trademark for purposes of the first factor if it incorporates the mark in its entirety).  The addition of the “ca” suffix (a two letter designation for Canada under the country code top level domain system) does not remove the confusion.  The lack of the graphic to the left of the SOYLIFE mark is not meaningful in the domain name context because there is no way to display such graphics.  Letters and characters that cannot be displayed must be ignored in determining whether or not a domain name is confusingly similar to a mark.  See General Machine Prods. Co. v. Prime Domains, Nat. Arb. Forum File No. 92531 (Jan. 26, 2002).

 

Respondent claims that it also has trademark rights in the name SOYLIFE.  Any such rights, though potentially relevant to the issue of the legitimacy of Respondent’s interest, are irrelevant to the analysis with respect to the first factor, which looks only at Complainants’ rights.  See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (Policy ¶ 4(a)(i) does not require complainant to demonstrate 'exclusive rights,' but only that complainant has a bona fide basis for making the complaint in the first place); see also The Men's Wearhouse, Inc. v. Brian Wick, FA No. 117861 (Nat. Arb. Forum Sept. 16, 2002) ("Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning").  In any event, the Complainants are currently contesting Respondent’s applications in both Canada and the United States to the SOYLIFE mark, and no prima facie evidence of validity attaches until registration.  Therefore, Respondent does not have any present registered rights to the mark and the Panel will not speculate on whether or not Respondent will acquire such rights in the future.

 

In sum, while we note that the Respondent’s domain name is different from Complainants’ in some details (e.g., the absence of the design element and the addition of the letters “ca”), the Panel unanimously concludes that, in the key operative parts – SOYLIFE – the Respondent’s domain name and the Complainants’ trademark are confusingly similar for purposes of this first factor of the Policy.

 

Rights or Legitimate Interests

 

Respondent asserts that it has a legitimate interest in the <soylifeca.com> domain name because it has used the domain name and SOYLIFE trademark in connection with a bona fide offering of goods.  Policy ¶ 4(c)(i).

 

The Panel agrees with Respondent’s contention that it has been selling SOYLIFE soy milk makers since prior to the commencement of this dispute.  The critical question under the Policy, though, is whether that use was “bona fide.”

 

Respondent vociferously claims that its use was bona fide because it selected the SOYLIFE name to identify its soy milk machine, it adapted the mark with the good faith belief that no other distributor of soy milk machines used this mark, it has invested hundreds of thousands of dollars into its business, and it has sold significant quantities of machines.  Those facts are relevant to the analysis, and, with other evidence, are persuasive to one of the Panelists, Mr. Arnold.

 

The majority of the Panel, though, while acknowledging the closeness of this issue, finds by a preponderance of the evidence that Respondent’s use was not “bona fide.”  All three Panelists agree that, on this record, it appears that Respondent adopted the SOYLIFE mark with actual knowledge of Complainants’ SOYLIFE mark.  Respondent says that it was unaware of anyone else using this mark for soy milk distribution; the clear implication of this carefully crafted contention is that Respondent was well aware of Complainants’ use of the mark for its soybean products.  Building on this finding, a majority of the Panel finds the parties’ goods are closely related:  “soy beans” versus “a machine that makes soy milk from soy beans.”  Given this similarity in the goods, the identicality of the marks, and the Respondent’s adoption of the mark with actual knowledge of Complainants’ rights, the majority concludes that Respondent’s use of the SOYLIFE mark is likely to confuse consumers into believing that its products come from the same source as Complainants’, or that there is some other relationship or affiliation between the two.  Indeed, Complainants have submitted evidence of actual confusion:  a website selling Respondent’s SOYLIFE machines provided a link to Complainants’ web address (www.soylife.com), evidencing its belief that Respondent’s machine comes from Complainants.  Because Respondent’s adoption and use of the SOYLIFE mark was thus infringing, the majority holds that it cannot qualify as “bona fide” for purposes of establishing a legitimate interest under the Policy.  Universal City Studios v. G.A.B. Enters., WIPO Case No. D2000-0416 (Nov. 4, 2000); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to complainant's mark and that respondent's use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

 

Further supporting this conclusion is that Complainants acted with appropriate dispatch in challenging Respondent’s use, once they became aware of it.  Although Respondent registered its corporate name in 2001, it did not start to sell the SOYLIFE machines until January 2002.  Complainants contacted Respondent just two months later to register their concerns over the use of that mark.  Any sales and investment that Respondent made after that point was at its peril, and a majority of the Panel concludes that Respondent cannot avoid transfer by citing the growth of its business since then.  Rather, it was on notice of a potential problem; by ignoring the challenge, it alone bore the risk that its investment in the business might be undermined by a later, adverse ruling.  This is thus not a situation where a trademark owner waited years before challenging a domain name, during which period the registrant innocently built up substantial good will in the domain name and related business.

 

The majority acknowledges Mr. Arnold’s view that Complainant has not shown that the parties or their products compete with each other.  The majority concedes that the record is thin on this point, but it seems to be a fair inference that machines that process soy beans into soy milk do trade in the same channels as the soy beans themselves, and that consumers viewing beans and machines that use the same mark would believe them to be connected.  By analogy, consumers would similarly believe there to be a connection between STARBUCKS espresso machines and STARBUCKS coffee beans.

 

In sum, a majority concludes that Complainants have made in a prima facie showing that Respondent lacks a legitimate interest, and Respondent has failed to rebut that showing.  Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).  The majority expressly recognizes, though, that this is a close question, and, when the parties contest the underlying facts, it is difficult to make these kinds of factual findings in the absence of discovery, cross-examination, and live testimony, at which credibility determinations can be made.  Accordingly, should Respondent disagree with this finding, it is free, pursuant to Policy ¶ 4(k), to initiate litigation in a court of competent jurisdiction where it would be able to develop a fuller evidentiary record for presentation to the trier of fact.  EAuto LLC v. Triple S Auto Parts, Case No. D2000-0047 (WIPO Mar. 24, 2000); Jones v. Gregory, FA No. 125747 (Nat. Arb. Forum Dec. 2, 2002).

 

 

Registration and Use in Bad Faith

 

Having concluded that Respondent lacks a legitimate interest, the majority finds it somewhat easier to adjudicate the claim that Respondent registered, and is using, the domain name in bad faith.  For the reasons discussed in the proceeding section, a majority of the Panel concludes that Respondent is using the disputed domain name to attract Internet users to its website for commercial gain by capitalizing on the goodwill of Complainants’ SOYLIFE mark and on the likelihood of confusion between that mark and the disputed domain name.  This finding is sufficient to show bad faith under the paragraph 4(b)(iv) of the Policy.  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as complainant); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to respondent's site). 

 

Mr. Arnold dissents because he believes Complainants have failed, albeit narrowly, to make their case for bad faith.  He credits Respondent’s assertion that it adopted the SOYLIFE mark in good faith on the belief that the soy bean and soy milk machine markets are diverse, and that, therefore, right or wrong, Respondent possible in good faith believe that consumers looking for Complainants’ products are not likely to be diverted to Respondent’s.  In support of this conclusion, Mr. Arnold notes that both the Canadian and United States trademark offices apparently approved Respondent’s SOYLIFE applications (though those applications are now subject to oppositions by Complainants).  In any event, Mr. Arnold believes that the UDRP’s fast-track process, which provides no opportunity for discovery or cross-examination, is not the proper vehicle for deciding an issue like this one, against a Respondent whose intent has not been subject to discovery or cross examination, where Respondent perhaps without knowledge of legal wrong has made an initial investment of $300,000, sold thousands of units, and marketed at numerous trade shows.  Rather, Respondent should be found to be within the Policy’s “safe harbor” of having conducted a substantial and non-sham business using the domain name.  This safe harbor should preserve the status quo unless and until Complainants elect to take the issue to court.

 

DECISION

 

Having established all three elements required under ICANN Policy, the Panel concludes (by a 2 to 1 vote, Mr. Arnold dissenting) that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <soylifeca.com> domain name be TRANSFERRED from Respondent to Complainants.

 

 

Houston Putnam Lowry (chair), Tom Arnold and David H. Bernstein, Panelist
Dated:  July 19, 2003

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