DECISION

 

MGW Group, Inc. v. Rick Janus d/b/a AAH! Cookies! a/k/a Cookie Bouquets

Claim Number: FA0305000158160

 

PARTIES

Complainant is MGW Group, Inc., Plano, TX (“Complainant”) represented by Priscilla L. Dunckel of Baker Botts LLP. Respondent is Rick Janus d/b/a AAH! Cookies a/k/a Cookie Bouquets, Mt. Laurel, NJ (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cookie-bouquet.com> registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Certified Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2003; the Forum received a hard copy of the Complaint on May 21, 2003.

 

On May 21, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <cookie-bouquet.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 May 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 16, 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@cookie-bouquet.com by e-mail.

 

A timely Response was received and determined to be complete on June 16, 2003.

 

Complainant submitted a timely and complete Additional Submission on June 19, 2003.

 

On June 26, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

MGW is the franchisor for its well-known COOKIE BOUQUET® and COOKIES BY DESIGN® franchise shops, which produce and sell gourmet cookies, decorated cookies and specialty cookie gift arrangements.  MGW established its cookie business and first began using its COOKIE BOUQUET® mark in 1983.  MGW now has over 240 shops throughout the United States which advertise and sell cookie products in connection with the COOKIE BOUQUET® mark and logos featuring the mark

 

MGW sells its cookie products at these brick-and-mortar shops and over the Internet at cookiebouquet.com and cookiesbydesign.com.  Gross sales for the year 2002 were approximately $57,000,000.  MGW and its franchisees spend approximately $1,750,000 to $2,000,000 per year on advertising, marketing and public relations.  MGW's franchise system has won numerous awards for excellence and is consistently ranked as one of the nation's best franchises.  MGW's decorated cookies are so professionally designed and decorated that Disney granted MGW a license to feature Disney® characters on its decorated cookies.  As a result of extensive advertising and promotion by MGW and its ever-growing family of franchisees, the COOKIE BOUQUET® mark is well-known among consumers and in the retail cookie business.

 

MGW filed four federal trademark applications for the marks ORIGINAL COOKIE BOUQUET® and COOKIE BOUQUET® on January 10, 1994 for cookies and retail and mail order services in the field of cookies.  The first mark registered on March 7, 1995 (Reg. No. 1,882,398) on the Principal Register and has become incontestable.  To date, MGW owns ten U.S. federal trademark registrations for its family of COOKIE BOUQUET® marks.  Due to extensive advertising and long, continuous use of the family of COOKIE BOUQUET® marks, the mark COOKIE BOUQUET® has acquired secondary meaning in the minds of the consuming public such that consumers associate the mark with MGW, its franchise system and its delicious and professional cookie products.

 

Respondent established his retail cookie business under the name Aah! Cookies! and registered cookie-bouquet.com on September 7, 2000.  Respondent operates a retail store in Mt. Laurel, New Jersey where he produces and sells cookies, and he also sells cookies over the Internet at cookie-bouquet.com.

 

MGW became aware of Respondent's business and domain name early in the year 2001. On March 16, 2001 MGW sent a cease and desist letter to Respondent.  The letter set forth MGW's rights in the COOKIE BOUQUET® trademark, attached copies of MGW's trademark registration certificates, objected to Respondent's use of “cookie bouquet” in the text and hidden code of the cookie-bouquet.com domain name and in the domain name itself.  Respondent agreed in writing to remove references to "cookie bouquet" from the Internet site, but, to date, the cookie-bouquet.com domain name is still connected to an active site and the term "cookie bouquet(s)" appears in the text and the hidden code of the site.  Despite MGW's repeated demands, and Respondent’s agreement to cease use of MGW’s trademarks Respondent is still using MGW's registered trademark in his domain name and in the hidden code of the associated Internet site.  Respondent renewed the registration for the cookie-bouquet.com domain name on or about September 2002, after receiving MGW’s correspondence and becoming fully aware of MGW’s trademark rights.

 

 

B. Respondent

AAH! Marketing! Inc. (AAH) is an internet marketing company that sells products primarily over the internet.  AAH sells different products over the internet including cookie bouquets.  AAH has developed multiple sites with various domain names for the purpose of selling these products.  Two separate sites were created specifically for the sale of cookie bouquets.  One site is aahcookies.com and the other site was cookie-bouquet.com.  These sites were built in 2000 and were done without any knowledge of any existing mark and were certainly not done in bad faith.

 

[a.]      

The complainant, who was formerly known as Cookie Bouquet Franchising Corporation, claims to have a well-known name of cookie bouquet.  However, this name is extremely generic and merely descriptive in nature. The trademark held by the complainant is contestable by petition to the USPTO and would likely be overturned if contested.  The term “cookie bouquet” has no secondary meaning or association.  It is a generic descriptive term similar to “balloon bouquet” or “flower arrangement”.

 

Several searches were done on the internet for the term cookie bouquet and the term “cookie bouquet” (which is a more defined search).  These searches were done on Yahoo, Lycos and Altavista, which are three of the most widely used search engines on the internet.  The searches returned the following results for these terms:

 

                                                cookie bouquet                       “cookie bouquet”

Lycos                                                  185,908                                  26,165

Yahoo                                                   37,500                                    7,220

Altavista                                                21,380                                    8,188

 

These results show that the term “cookie bouquet” is extremely generic and descriptive in nature.  Thousands of businesses utilize this descriptive term associated with their products.

 

It is also apparent from these results that the complainant is promoting their name “Cookies by Design” and URL of cookiesbydesign.com and not cookiebouquet.com. The afore-mentioned name and URL are returned in each of the searches for the term “cookie bouquet”.

 

Also, in paid advertising by the complainant, they promote the domain name cookiesbydesign.com and not cookiebouquet.com.  The paid Yahoo listing for the category of  >Baked Goods>Cookies in Yahoo’s directory lists the complainant as “Cookies by Design / Cookie Bouquet”.  It also utilizes the URL of cookiesbydesign.com and not cookiebouquet.com. In fact, they do not even utilize the domain in the alphabetical listing.  However, a domain name for cookiebouquets.com (“s” is added at end of URL) is listed.  This is for another company, which is not associated with complainant.  This company has a trademark for the term “cookie bouquets”.  This company operates a competing web site at cookiebouquets.com.  It is apparent these two trademarks are both generic and descriptive and makes it even more likely that the petition to the USPTO would likely result in these trademarks being overturned.

 

When checking link popularity for the URLs cookiesbydesign.com and cookiebouquet.com the following results were returned from linkpopularity.com (this shows the relevancy of links to a URL):

 

cookiesbydesign.com had 3576 links on Altavista

cookiebouquet.com had only 114 links on Altavista.

 

Once again this shows that the complainant promotes their name of Cookies by Design and URL of cookiesbydesign.com .  This is further shown by going to the complainants website. They show that the store names of their franchises are called “Cookies by Design” and not “Cookie Bouquet”.  Also, a search on a popular internet directory Infospace.com shows that their franchised retail stores are also named “Cookies by Design” and not “Cookie Bouquet”.

 

It is apparent the focus of MGW’s advertising is in promoting their name of “Cookies by Design”.  This is clearly indicated in their brochure which headlines “Cookies by Design”.  No other mention of the term cookie bouquet is included other than as a secondary domain name.  It is also clear that the complainant’s primary web address is cookiesbydesign.com .  This has been shown in several manners.   Therefore, there is no likely confusion since the complainant obviously promotes themselves as “Cookies by Design”.  The complainant has established no secondary meaning of the term “cookie bouquet” and therefore the disputed domain name is not confusing.

 

The term “cookie bouquet” is descriptive of types of products that both AAH and Cookies by Design sell.  See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May12, 2000) (stating that  “common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis”); see also Rollerblade, Inc v. CBNO and Redican, UDRP Policy ¶4(a)(i) defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”).

 

[b]       

Respondent has actually developed a site specifically for the domain name cookie-bouquet.com. However, the Complainant simply uses the name cookiebouquet.com as a secondary name for their primary site of cookiesbydesign.com . 

 

AAH built this separate site cookie-bouquet.com to promote and sell cookie bouquets. This is NOT the same site as aahcookies.com.

 

Please note:  The domain name cookie-bouquet.com was transferred from its original store location to its sister store aahcookies.com on March 26, 2003.  The transfer was done for various business reasons not relating to this dispute.  The store can still be accessed at the URL:  http://store.yahoo.com/aah-fruit

 

AAH purchased this domain before being aware of any claim of the disputed term by Complainant. The term is so generic and descriptive it is inconceivable that anyone would even attempt to make claim to this name.  The domain name was purchased for a legitimate and fair purpose.  It was not registered to create any user confusion for its own commercial gain but simply to describe the business and the products being sold.  AAH has paid for advertising for this domain name and has established the use of this domain name.  Therefore, AAH has used the disputed name in order to make a bona fide offering of goods and services. See Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000)(finding that Respondent has rights and legitimate interests in the domain name where Respondent is using the domain name for a legitimate and fair purpose and there is evidence that it is known by the disputed domain name).

 

[c.]       

The <cookie-bouquet.com> domain name was registered on September 7, 2000.  The domain was registered in good faith and was done well before any knowledge of the Complainant or any claims they have made.  AAH’s first knowledge of the Complainant was not until March 16, 2001.  AAH could not have registered its domain name in bad faith if it were not even aware of the Complainant or any of its claims at the time. 

 

The domain name was registered and site was built in order to promote the business and the products sold by AAH.  This was based on the recommendation of internet consultant Rob Snell of Snell Brothers Consulting. 

 

AAH paid for consulting with Snell Brothers in an effort to increase sales on their web sites.  It was suggested during this consultation that several things be done.  Some of these suggestions included building a separate spin-off store that would be more keyword specific to the products being sold.  This would help with search engine positioning.  It was also suggested that the URL of the domain name have the primary keywords of the product included in it.  Furthermore, it was recommended that a domain name with a “hyphen” in it would also get better search engine positioning.  Based on these recommendations, AAH developed the sister site and utilized the disputed domain name.

 

AAH did not register the domain name in bad faith and did not intend to sell the domain name or disrupt the Complainant’s business.  See PRIMEDIA Special Interest Publ’n. Inc v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding Respondent did not register the domain to disrupt the Complainant’s business); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17 2000) (finding no bad faith where Respondent has an active website and where no intent to cause confusion with Complainant’s website or business).

 

AHH clearly registered the domain name in relation to a legitimate business interest and was selected in good faith for its website, and was offering goods and services under the domain name prior to the initiation of the dispute or knowledge of the Complainant and their claims. See DJF Assoc. Inc. v. AIB Communications, FA 95612 (Nat. Arb Forum Nov. 1, 2000); see also Lowersfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolutions Sept. 9, 2000)(finding no bad faith where Respondent was using the descriptive domain name to lead consumers to a source of lowest fares in good faith); see also Lumena s-ka zo.o v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).

 

It is obvious that AAH registered the name in good faith and that the Complainant has no rights to the domain name cookie-bouquet.com.  Respondent respectfully requests that the domain name rightfully remain with AAH and relief requested by Complainant be denied.

 

C. Additional Submissions

Complainant submitted additional information, which pointed out some of its trademarks were incontestable and the “cookie bouquets” trademark registration had been abandoned.

 

FINDINGS

The salient facts are fairly clear and not really in dispute.  Complainant established its cookie business and first began using its COOKIE BOUQUET® mark in June 1983.  The mark was filed with the United States Patent and Trademark Office on January 10, 1994 and the registration (for the principal register) was issued on August 13, 1996.  Through the passage of time, the primary mark has become incontestable.

 

Respondent (from New Jersey, USA) registered the domain name <cookie-bouquet.com> on September 7, 2000.  Respondent and/or its agent sells cookie products at the <cookie-bouquet.com> domain which directly complete with Respondent’s 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:

 

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

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

 

Complainant has provided evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the COOKIE BOUQUET mark, including Reg. No. 1,992,298 (registered on August 13, 1996) in relation to cookies and Reg. No. 1,994,339 (registered on August 20, 1996) in relation to retail store and mail order services in the field of cookies.  These registrations with the USPTO establish Complainant’s rights in the COOKIE BOUQUET mark with regard to Policy ¶ 4(a)(i). See The Men’s Wearhouse, Inc. v. Brian Wick, FA 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”).

 

Respondent’s <cookie-bouquet.com> domain name is identical to Complainant’s mark because the domain name incorporates Complainant’s mark and simply separates the two words of the mark with a hyphen and adds the generic top-level domain (gTLD) “.com” to the end of the mark.  Neither the addition of a punctuation mark such as a hyphen nor a gTLD such as “.com” significantly distinguishes Respondent’s domain name from Complainant’s mark, rendering the disputed domain name confusingly similar to the mark under Policy ¶ 4(a)(i). See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

 

 

Rights or Legitimate Interests

 

Respondent has no rights to or legitimate interests in the <cookie-bouquet.com> domain name because Respondent is not commonly known by either COOKIE BOUQUET or <cookie-bouquet.com>.  The name of Respondent’s business is actually “Aah! Cookies!”.  Respondent has no rights to or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

Moreover, Respondent is using the <cookie-bouquet.com> domain name in connection with a competing retail cookie business.  Respondent’s use of a domain name confusingly similar to Complainant’s mark to compete directly with Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); 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).

 

 

Registration and Use in Bad Faith

 

Respondent registered and is using the <cookie-bouquet.com> domain name to attract consumers seeking Complainant’s goods and services.  Respondent has used the disputed domain name intentionally to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Complainant’s COOKIE BOUQUET mark, which evidences bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also 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).

 

Respondent had actual or constructive knowledge of Complainant’s rights in the COOKIE BOUQUET mark when it registered the <cookie-bouquet.com> domain name on September 7, 2000 because Complainant’s mark and franchise system are well-known among the consuming public and by members of the retail cookie business.  Respondent registered the disputed domain name with knowledge of Complainant’s rights, which is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

 

It should be noted Respondent’s internet consultant (Snell Brothers) chose the <cookie-bouquet.com> domain name based, in part, upon the popularity of the COOKIE BOUQUET® mark without realizing it was a registered trademark.  That cannot provide a defense to the claim the domain name registration was made in bad faith.

 

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cookie-bouquet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Houston Putnam Lowry, Chartered Arbitrator and Panelist
Dated: July 8, 2003

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  Some of the applications were filed and the registrations were issued  in the name of Cookie Bouquet Franchise Corporation and became registered under this name.  Cookie Bouquet Franchise Corporation changed its name to MGW Group, Inc. in 1996.  The name change has been filed for recordation with the USPTO.  MGW Group, Inc. is the owner of all registrations issued in the name of Cookie Bouquet Franchise Corporation.