Owner of PEACHES mark fails to obtain transfer of 'peaches.com'
United States of America
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In Peaches Uniforms Inc v 24-7 Outdoors Inc (Case FA0812001238992, February 9 2009), a National Arbitration Forum panel has refused to transfer the domain name 'peaches.com' to Peaches Uniforms Inc.
Peaches (located in Texas, United States) is a leader in fashion-driven uniforms and scrubs for women in the healthcare industry. On April 3 2007 Peaches registered the trademark PEACHES with the US Patent and Trademark Office for a wide range of goods, including surgical equipment such as scrubs, caps, aprons, gowns and masks, as well as a variety of clothes and foot and headwear in general. Peaches also owned the trademark PEACHES UNIFORMS, which was registered on August 15 1989 in association with nurses' uniforms.
24-7 Outdoors Inc (located in Pennsylvania, United States) had registered many descriptive domain names and owned a portfolio of over 2,500 domain names. 24-7 registered the domain name 'peaches.com' in 1995. Some time after it was registered, the website under the domain name featured links to adult sites. Subsequently, the domain name was parked and began referencing uniforms.
To succeed under the Uniform Domain Name Dispute Resolution Policy (UDRP) and obtain the transfer of the domain name, Peaches had to prove all three of the requirements set out in Paragraph 4(a) of the UDRP - namely, that:
- the domain name registered by 24-7 was identical or confusingly similar to a trademark or service mark in which Peaches had rights;
- 24-7 had no rights or legitimate interests in the domain name; and
- the domain name had been registered and was being used in bad faith.
The three-member panel immediately turned to the question of whether the third element of the UDRP had been established. Peaches argued that 24-7's intention at the time of the registration was irrelevant. Peaches pointed out that some time after it was registered, the domain name resolved to a parking website that displayed various links to the websites of its competitors. Some of the links purported to offer Peaches' products without its permission. Peaches argued that 24-7 likely gained revenue from the use of the disputed domain name through pay-per-click referral fees. According to Peaches, the use of the domain name was likely to cause confusion among internet users by giving the false impression that the website was operated by or affiliated with Peaches. Peaches thus argued that the domain name had been registered and was being used in bad faith.
Peaches had to show that 24-7 had Peaches and its business in mind when it registered the domain name in 1995. However, 24-7 contended that Peaches' submission demonstrating that a uniform-related link appeared on the website linked to the domain name in 2004 was insufficient.
The panel considered that the term 'peaches' was descriptive or generic and that, when 24-7 registered the domain name in 1995, it did not appear to be targeting Peaches or its trademarks. In this regard, the panel also remarked that the PEACHES mark was registered in 2007, some 12 years later. Moreover, Peaches' exhibits did not support common law rights in the term 'peaches' in 1995. Therefore, the panel concluded that when registering the domain name, 24-7 had not acted in bad faith under Paragraph 4(a)(iii) of the UDRP. Given that the third element of the UDRP could not be established, it was not necessary to address the other two elements. Transfer of the domain name to Peaches was thus denied.
This case shows the hurdles that owners of generic brands may face under the UDRP where their brands have been registered as domain names years ago and bad faith has occurred only some time thereafter. Undeniably, the UDRP requires complainants to prove both registration and use in bad faith. In the absence of sufficient evidence to establish these cumulative factors, any action brought under the UDRP must fail accordingly. This may lead to painful results for parties who have seen their generic brands registered as domain names, the use of which has changed to target the brand connotation of such terms for commercial gain in due course.
David Taylor, Lovells LLP, Paris
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