Vitamin Shoppe Indus., (Complainant) the owners of the trademark THE VITAMIN SHOPPE in the U.S. (and all over the world) lost a UDRP decision before the National Arbitration Forum (“NAF”) over the domain name www.koshervitaminshoppe.com which is owned by Kosher Vitamin Express.
The domain name resolves to the www.koshervitaminexpress.com website which is run by the Respondent and has been registered/owned by the Respondent for approximately thirteen (13) years.
Overall, the panel found that the Complainant failed to prove any of the three required elements under UDRP law, even falling short on the issue of “Similarity” that is usually a gimme and often noted by panels as having a “low threshold” to establish. Complainant did manage to avoid being found guilty of Reverse Domain Name Hijacking on the basis that the panel thought the Complaint was ill-advised, but not totally unreasonable.
The decision is instructive in that it points out the difficulty of bringing a UDRP when the trademark at-issue is a composite of descriptive terms and the Respondent’s website is using those terms in a manner which is closely linked to that description. Although Complainant cited supportive UDRP decisions the panel distinguished those decisions on the basis that they concerned unique marks that were not subject to the same narrow band of protection as a descriptive mark.
At its core, the decision reflects that the panel did not believe the THE VITAMIN SHOPPE mark was strong enough to cover a variation where the term KOSHER was added and the THE was not used. The panel explained its reasoning with a quote from a decision rendered by the Australian Hight Court (the first time I have seen a UDRP panel use an Australian Court decision to support its reasoning) in the case of Hornsby Building Information Centre Pty. Ltd. v. Sydney Building Information Centre Ltd (1978) 140 C.L.R. 216 at 229, where it stated:
“[t]here is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds)”.