The Complainant is Crop’s NV of Ooigem, Belgium.
The Respondent is DigiMedia.com, L.P. who was represented by John Berryhill.
Here are the relevant facts of the case:
“The Complainant was established in 1948 and is doing business in the field of growing and freezing fruits and vegetables.. In 2008 through 2009, the Complainant achieved a consolidated turnover of over 180 million Euros.”
“The Complainant is registered holder of numerous trademark applications and registrations containing the term “Crop’s” in various countries, including the U.S., where the Respondent is located.”
The Complainant’s first trademark was applied for in 1993 and has been registered in the Benelux countries (Belgium, Netherlands and Luxembourg), Austria, Germany, Switzerland, Spain, France and Portugal. ”
“Furthermore, the Complainant is the holder of registered rights in CROP’S The natural choice in the European Community since 2005 and applied for registration of CROP’S The natural choice in the U.S. on November 16, 2006. The U.S. trademark is not registered and no first use in commerce is claimed in the application. The Complainant’s trademarks (the “CROP’S Marks”) mainly cover food and beverages.”
“The disputed domain name was first registered on April 17, 1998, and is currently used to redirect Internet users to the website at “www.yeah.com”.”
The panel found as follows:
“The disputed domain name is also confusingly similar to the Complainant’s “CROP’S The natural choice” marks. The fact that some of the Complainant’s trademarks contain additional elements, namely the additional words “The natural choice” and graphical elements, does not preclude a finding of confusing similarity.”
“Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s word marks “Crop’s” and confusingly similar to the Complainant’s “CROP’S The natural choice” marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.”
“On the balance of evidence in this case, the Panel is not convinced that the Respondent registered the disputed domain name in bad faith.”
“The Complainant provided evidence of trademark rights based on its European trademark registrations, and the Complainant’s rights in some of the CROP’S Marks predate the Respondent’s registration of the disputed domain name by five years.”
“However, the Complainant did not demonstrate business activities in the U.S., neither at the time of the registration of the disputed domain name nor at present. It applied for the registration of the trademark CROP’S The natural choice with the USPTO in 2006, however, without claiming any use in commerce.”
“The Panel’s view, the Complainant’s submissions are not sufficient to establish that the Respondent knew of the Complainant’s trademark rights (or the Complainant’s existence, e.g. through its website) in 1998 and that it registered the disputed domain name in bad faith.”
“As a result, it seems to be more likely than not to this Panel that the Respondent acquired the disputed domain name because of its generic meaning and not with a view to the Complainant and its CROP’S Marks.”
“For all the foregoing reasons, the Complaint is denied.”
So another nice win for Mr. Berryhill, but as usual the decision at least in my eyes is a little troubling.
After all this is a generic term.
Everyone reading this knows what the word Crops means, and its a farming term.
If this trademark holder had done business in the US and filed its trademark earlier, the language of this case seems to indicate the ruling could have gone the other way.
As trademarks continue to push the GAC to push ICANN for broader trademark protection like a global database of all trademarks, what happens when these pure generics are registered in such a database?