fishsciences.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

S.P. Cramer & Associates, Inc. d/b/a Cramer Fish Sciences v. Doug Demko / DomainsByProxy.com

Case No. D2007-1116

1. The Parties

The Complainant is S.P. Cramer & Associates, Inc. d/b/a Cramer Fish Sciences, of Gresham, Oregon, United States of America, represented by The DuBoff Law Group, LLC, United States of America.

The Respondent is Doug Demko / DomainsByProxy.com, of Chico, California, United States of America, represented by James B. Berglund, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fishsciences.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on July 31, 2007. On August 2, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 3, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2007. The Response was filed with the Center on August 24, 2007.

The Center appointed Prof. Frederick M. Abbott as the sole panelist in this matter on September 3, 2007. 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.

By e-mail dated September 5, 2007, Complainant requested permission to submit a supplemental filing in response to Respondent’s Response, based on the “voluminous” character of Respondent’s documentation. In the specific circumstances of this proceeding, and in the absence of any specific suggestion from Complainant regarding matters that may have been raised by Respondent and which could not reasonably have been anticipated by Complainant in its Complaint, the Panel did not consider it appropriate to invite additional submissions.

4. Factual Background

Complainant asserts common law service mark rights in the term “cramer fish sciences” which it claims to have used in commerce continuously since as early as January 2006 in connection with providing “environmental consulting services”. Complainant operates a website at Internet address “www.fishsciences.net”. On that website it describes itself as “Serving Oregon, California, Washington, Idaho and Alaska, we are a group of multidisciplinary professionals that provide innovative scientific solutions for fisheries and environmental challenges.” (Panel visit of September 15, 2007) Complainant has not furnished documentary evidence supporting the January 2006 date as of which it claims to have commenced using the claimed CRAMER FISH SCIENCES mark in commerce.

Respondent was an employee of Complainant from on or about February 1992 until August 2006. Respondent was terminated by Complainant following a lengthy employment-related dispute. Correspondence between Respondent and Complainant indicates common agreement that there was some factual predicate for Respondent’s claim, with the parties in disagreement concerning the scope of appropriate remedies. (Response, Annex 1). The contours of this employment-related dispute, while important to the parties, are not material to determining the outcome of the proceeding, and the Panel does not find it necessary to elaborate further regarding this aspect of the proceeding.

According to the Registrar’s Verification Report, Respondent is registrant of the disputed domain name, <fishsciences.com>. According to a GoDaddy.com WHOIS database report furnished by Complainant, the record of registration of the disputed domain name was created on November 4, 2005.

Complainant asserts that Respondent purchased the disputed domain name in the course and scope of his employment and relies in support upon a credit card statement for November 2005 showing a charge of $15 dated November 4, 2005 from “POWWEB HOSTING MONTEREY PARK CA”. Complainant asserts this credit card statement evidences a business card held in the name of Complainant and used by Respondent. However, on the credit card statement there is no evidence of ownership by Complainant or Respondent, nor is there any explanation of the relationship of POWWEB HOSTING to the disputed domain name. The statement includes a number of charges from POWWEB HOSTING (Complaint, Annex 3).

Respondent has asserted that it owned the disputed domain name “approximately four years prior to Complainant’s assertion of ownership’, but has not provided any evidence to support that claim (Response, paragraph 5). As noted above, the WHOIS database record as to the present registrar Go Daddy Software shows that the record of registration for the disputed domain name was created on November 4, 2005.

According to Complainant, Respondent on or about November 2, 2005, suggested that Complainant change its company name to “Integrated Fish Sciences”. Complainant has furnished an e-mail of that date from Respondent to certain employees of Complainant forwarding a logo which includes that proposed name (Complaint, Annex 4). Said e-mail does not indicate from whom the logos were forwarded.

Respondent has submitted evidence in the form of various website print outs showing the term “fish sciences” in use by third parties to describe a field of academic study and scientific research (at a number of universities), and use of the term in the title of several books (Response, Annex 2).

It is common ground among the parties that the disputed domain name is not currently being used by Respondent (i.e., it is “parked” with the registrar). There is no evidence from either party to suggest that the disputed domain name has previously been used by Respondent.

The Registration Agreement in effect between Respondent and Go Daddy Software 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

A. Complainant

Complainant alleges that it is the owner of common law service mark rights in CRAMER FISH SCIENCES based on use in commerce in the field of environmental consulting since as early as January 2006.

Complainant contends that the disputed domain name <fishsciences.com> is confusingly similar to its service mark. According to Complainant the disputed domain name “incorporates two keywords from Complainant’s CRAMER FISH SCIENCES mark”.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that it did not authorize Respondent to use the disputed domain name in a personal capacity, that Respondent has not been commonly known by the name and that Respondent did not use or make legitimate preparations to use the name prior to notice of this dispute. Complainant states that Respondent is not making legitimate noncommercial or fair use of its service mark.

Complainant alleges that Respondent registered and is using the disputed domain in bad faith, principally as a means to disrupt Complainant’s business. Complainant argues that Respondent registered the disputed domain name at Complainant’s request and using Complainant’s funds, but improperly registered the disputed domain name in his own name. Following his termination, Respondent refused to transfer the disputed domain name to Complainant. This, according to Complainant, constitutes bad faith.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

Respondent contends that Complainant’s registered business name is “Cramer Fish Sciences”, and that the term used within the disputed domain name, <fishsciences.com>, is distinct from that business name and is generically used to describe a field of study. Respondent argues that the disputed domain name is not confusingly similar to Complainant’s alleged service mark.

Respondent argues that he has rights and legitimate interests in the disputed domain name because he registered the name for his own personal use, only subsequently offering to allow Complainant to use it if a suitable arrangement could be made pursuant to which Respondent would retain ownership. Respondent argues that Complainant registered the <fishsciences.net> domain name only after Complainant rejected Respondent’s proposal to use the disputed domain name.

Respondent alleges that Complainant asserted ownership of the disputed domain name, and initiated this proceeding, only subsequent to Complainant’s wrongful termination of Respondent’s employment.

Respondent rejects Complainant’s assertion that he registered the disputed domain name to divert business away from or otherwise injure the business of Complainant. Respondent points to the fact that Complainant only demanded ownership and transfer of the disputed domain name after it had wrongfully terminated his employment as evidence that he did not earlier register the disputed domain name to injure Complainant.

Respondent requests the Panel to reject Complainant’s request to direct the Registrar to transfer the disputed domain name to Complainant.

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 has 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)).

Complainant and Respondent have each filed submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.

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 has asserted common law service mark rights in the term “cramer fish sciences” arising out of use in commerce commencing as early as January 2006. In order to demonstrate rights in a common law service mark, that mark must either be inherently distinctive or have acquired secondary meaning (see Two Pesos v. Taco Cabana, 505 U. S, 763 (1992)).

Complainant has not provided documentary evidence showing when it commenced using the asserted common law service mark in commerce.

The term “cramer” is distinctive as the surname of a person. The terms “fish” and “sciences” are not inherently distinctive as further discussed below. The Panel assumes for present purposes that Complainant has common law service mark rights in the mark CRAMER FISH SCIENCES, taken as a whole, because the term CRAMER renders the combination term inherently distinctive.

Respondent has registered the disputed domain name <fishsciences.com>. Respondent has provided evidence that in combination this term (using ordinary spacing) is used by third parties to describe a field of academic or scientific research, i.e., “fish sciences”.

Complainant has not established common law service mark rights in the term “fish sciences”. Respondent has established to the satisfaction of the Panel that this term is generic or commonly descriptive, and not a proper subject matter for service mark protection. The term taken as a whole commonly describes a field of academic or scientific research. (Standing separately, the terms “fish” and “sciences” without doubt are generic or commonly descriptive.) Even if, for the sake of argument, the term “fish sciences” is merely descriptive, and remains capable of achieving service mark status by acquiring secondary meaning (associating it in the public mind with a particular service provider), Complainant has provided no evidence to suggest that the public uniquely associates it with the term “fish sciences”.

The Panel rejects Complainant’s attempt to establish that the disputed domain name, <fishsciences.com>, incorporating only a generic or commonly descriptive term (or, at most, a merely descriptive term), is confusingly similar to its claimed common law service mark, CRAMER FISH SCIENCES. Complainant’s service mark is distinctive only because it affixes the distinctive surname, CRAMER, to FISH SCIENCES. Complainant does not enjoy exclusive rights to use of the term “fish sciences” standing alone. If Complainant were permitted to establish confusing similarity by eliminating the distinctive portion of its service mark and comparing the disputed domain name only to a generic or commonly descriptive term, this would frustrate the well-recognized trademark law objective of preserving generic or commonly descriptive terms for use by the public (see, e.g., Sidamsa-Continente Hipermercados, S.A. v. Rose Communications, S.L.,WIPO Case No. D2000-1748). Even if the term “fish sciences” is merely descriptive and remains capable of acquiring secondary meaning, Complainant has failed to demonstrate that secondary meaning in the term is associated with it. Complainant does not secure exclusive rights in that term, opposable to Respondent, by dropping the distinctive portion of its common law service mark.

The disputed domain name is not identical or confusingly similar to a service mark in which Complainant has rights. Complainant has failed to establish the first element necessary for a finding of abusive domain name registration and use under the Policy.

Based on this finding, the Panel does not address whether Respondent has rights or legitimate interests in the disputed domain name, or whether Respondent registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Frederick M. Abbott
Sole Panelist

Dated: September 16, 2007