This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

Complainant submitted its complaint in this proceeding on November 3, 2000. Respondent submitted its Response on November 30, 2000.

WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as panelist on January 5, 2001.

On January 19, 2001, the Panel issued Procedural Order No. 1 instructing Respondent to submit evidence to support the claims made in its Response. Respondent's submission in response to that Order were received on January 27, 2001. Complainant's reply was submitted on February 14, 2001.

4. Factual Background

HomeGrocer.com, Inc., a wholly owned subsidiary of Complainant, began using the mark HOMEGROCER in February, 1998. It filed applications for registration of the marks HOMEGROCER and HOMEGROCER.COM on October 9, 1997, and

May 7, 1998, respectively and now owns registrations for each.

HomeGrocer.com, Inc. provides online ordering and home delivery service of groceries and other products in various parts of the country. The HOMEGROCER mark has enjoyed substantial sales and extensive media recognition since its first use in

February, 1998. On November 9, 1999, media articles appeared in Dallas, Texas, that referred to the expansion of the HOMEGROCER services into the Dallas area.

Respondent registered the Domain Name on November 13, 1999, and has used it for an online grocery delivery service in the Dallas area. In his response, he candidly acknowledges the possibility that confusion might exist between the terms HOMEGROCER.COM and INTERNET HOME GROCER. Respondent insists, however, that the Domain Name was selected without knowledge of Complainant's plan to move into the Dallas market. In June, 2000, Respondent discontinued its services in the Dallas area .

Respondent first had knowledge of this dispute when notified of the Complainant in November, 2000.

The Procedural Order issued in this case called for Respondent to submit documentation supporting Respondent's assertions that:

1. It selected the name "internet home grocer" before Complainant made public use of the name "home grocer."

2. It made demonstrable plans to make bona fide use of name "internet home grocer" prior to knowledge of this dispute.

3. It has made bona fide use of the name "internet home grocer" to provide grocery delivery services.

4. Any other documentation it deems relevant to show that it adopted the name "internet home grocer" in good faith.

The materials submitted by the Respondent included the following:

- An invoice dated March 1, 2000, regarding server certification for the www.internethomegrocer.com site.

- Letter from Network Solutions, Inc. regarding the registration of the domain name.

- A certified Assumed Name Certificate for "Internet Home Grocer" dated January 14, 2000.

- A transaction report for orders placed with Respondent by four customers from March to November, 2000.

- A DUNS number issued by Dun & Bradstreet.

5. Parties’ Contentions

Complainant contends that the Domain Name is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith.

Respondent contends that it made bona fide use of the domain name prior to notice of this dispute and did not register or use the Domain Name in bad faith.

6. Discussion

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interest in the domain name; and

(iii) the domain name has been registered and used in bad faith.

A. Confusing Similarity

Complainant has nationwide rights in its marks as of the filing date of its federal trademark applications, which predate the registration of the Domain Name.

While the marks are not identical, it is obvious that the Domain Name includes Complainant's mark in its entirety. Thus, the question is whether the addition of "Internet" avoids confusingly similarity. In general, the addition of a generic term to a distinctive trademark will not avoid a finding of confusing similarity when the generic term is an apt term for the good or services associated with the mark. For example, "walmartcanada.com" has been deemed confusingly similar to the WAL-MART mark. Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO, May 2, 2000). However, when the mark is a relatively weak, non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion.

Here, HOMEGROCER seems to be descriptive or at least highly suggestive of a service that provides home ordering and delivery of groceries. As a descriptive term, the mark should receive limited protection even though it is a registered mark. This weakness, however, seems to be offset by the promotion and media attention that the mark has received. Moreover, given that both business are Internet-based, Internet users are likely to believe that <internethomegrocer.com> is related to <homegrocer.com>. Indeed, Respondent has acknowledged that such confusion may exist. Therefore, based on the record before me, I find that <internethomegrocer.com> is confusingly similar to <homegrocer> or homegrocer.com>.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by a showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Here, the relevant question is whether Respondent made bona fide use of the domain name, or had plans to do so, prior to notice of the dispute. Of course, the fact that a domain name has been used prior to notice of the dispute is not itself sufficient to show bona fide use, otherwise the Policy could be circumvented in nearly every case. As prior decisions have noted, deliberately infringing use should not be viewed as bona fide use. See Ciccone v. Parisi, D2000-0847 (WIPO, October 12, 2000). However, a plausible, non-infringing explanation for selection of the domain name is evidence that the use is bona fide.

The evidence submitted by Respondent shows some effort to engage in business under the name "Internet Home Grocer" prior to notice of this dispute and it appears that a small number of transactions occurred. The name used by Respondent is an apt choice for the services rendered and it is not identical to Complainant's prior trademark. It is plausible that Respondent selected the name based on its descriptive meaning without any intent to trade on Complainant's goodwill. The bona fide nature of Respondent's use is confirmed by the fact that Respondent registered its assumed name and obtained a DUNS number before notice of this dispute. These actions evidence a demonstrable plan to engage in a bona fide business under the name INTERNET HOME GROCER and add credibility to Respondent's claim that it selected the name for the purpose of doing business.

Complainant does not challenge the validity of the Respondent's sales records. Rather, Complainant contends that four orders is insufficient to demonstrate prior bona fide use. While I agree that the amount of use is minimal, I cannot say that it is insufficient to meet the standard set by the Policy.

Based on the record presented, I find that Complainant has failed to prove that Respondent's lacks any legitimate interest in the Domain Name as required by Paragraph 4(a)(ii) of the Policy.

C. Bad Faith Registration and Use

I also find that Complainant has failed to show bad faith registration and use under the Paragraph 4(a)(iii). There is no indication that Respondent registered the Domain Name with the intent of selling it for profit. Rather, the evidence indicates that Respondent registered the Domain Name for the purpose of engaging in the Internet grocery business.

Respondent's domain name registration does not prevent Complainant from reflecting its marks as a domain name or disrupt the business of a competitor.

A closer question is whether Respondent intentionally attempted to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with the complainant's mark. Policy 4(b)(iv). The evidence in support of this contention is the confusingly similarity of the names, the fact that Complainant's mark was in use at the time the Domain Name was registered, and the fact that an announcement about Complainant's expansion plans to Dallas appeared in Respondent's local press a few days prior to registration of the Domain Name.

Respondent denies knowledge of Complainant's expansion plans, stating: "At no time did we ever obtain our name because we were aware of "homegrocer.com's" plan to penetrate the [Dallas] market. It was purely coincidental." That claim is plausible. The Dallas news article submitted by Complainant is primarily about another online grocery business, GroceryWorks.com and only mentions HomeGrocer in passing. The reference could easily have gone unnoticed. At the time Complainant registered the Domain Name, it is admitted that HomeGrocer was not yet providing services in the Dallas area.

Respondent's stated reason for adopting the Domain Name is also plausible: "The term 'internet home grocer,' which is how we advertised our services in the Dallas area, was adopted in order for us to identify ourselves as an online grocery delivery service. Because of the nature of our business, we felt the work 'internet' was needed in order for us to identify and market ourselves as an online entity."

7. Conclusion

I conclude that Complainant has failed to prove that Respondent lacks rights or legitimate interest in the Domain Name, or that Respondent registered and used the Domain Name in bad faith. Therefore, I find in favor of Respondent and deny Complainant's request for transfer of the <internethomegrocer.com> Domain Name.

Mark V B Partridge
Sole Panelist

Dated: February 20, 2001