Sesame Snaps are a type of cookie

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On September 18, 2016, Agros Trading Confectionery S.A. "Agros Trading" filed a UDRP complaint with WIPO against David Michaels to gain ownership of his sesamesnaps.org and four other Sesame Snaps domain names. Agros Trading is asserting rights over David Michaels' Sesame Snaps domain names, first registered by his predecessor-in-interest since 2003, using its 2008 Canadian trademark registration for the words Sesame Snaps.

In the UDRP, Agros Trading failed to mention that:

WIPO UDRP: (JK) D2016-1827

The Respondent and Registrant,

David Michaels Has Legitimate Interests in the Domains: SesameSnap.com,  SesameSnaps.com, SesameSnaps.net, SesameSnaps.org and SesameSnaps.biz

  1. David Michaels is the owner of the SESAME SNAPS trademark in USPTO SN 86966284. The USPTO published the Respondent’s SESAME SNAPS application for opposition on September 6, 2016. The Complainant has not opposed any of David Michaels’ applications for registration of his trademarks in the SESAME SNAPS designs that he owns. USPTO SN 86966284 will issue as a US registered trademark in due course. Annex 1
  2. David Michaels operates a USA-based on-line retail store featuring sesame based food products and a computerized on-line retail store services in the field of sesame based food products at sesamesnaps.com. Annex 2
  3. Complainant’s 2008 trademark registration for the words SESAME SNAPS is territorial; it only covers Canada. The Complainant registered it in Canada three years after the 2005 registration date Respondent’s sesamesnap.com domain name. Moreover it is about 50 years after the Respondent’s predecessor-in-interest began using various SESAME SNAPS designs as trademarks in Canada and the USA.
  4. Admits 4, 8, 10, 18, 19, 29, 30
  5. Denies 1, 2, 5, 6, 7, 9, 12, 14, 16, 17, 21, 22, 23, 24, 25, 26, 27, 28, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44  
  6. Has no knowledge of: 3, 7, 13, 15
  7. David Michaels registered sesamesnaps.com by being the high-bidder on a Godaddy auction on January 22, 2014. The prior registrant registered it in 2009. K-Max registered sesamesnaps.com in 2003, which transferred its rights in the Sesame Snaps trademark to David Michaels in 2012.


COMPLAINANT’S USPTO REGISTRATIONS REFUSED – MARK IS MERELY DESCRIPTIVE OF THE GOODS

  1. The wording SESAME SNAPS identifies a specific type of cookie.
  2. A USPTO examiner rejected Complainant’s 2009 application SN 77778406, for the words SESAME SNAPS, for “cookies, namely sesame bars,” stating:
    Registration is refused because the applied-for mark merely describes the nature of the applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.  As seen from the attached evidence, the word “snaps” describes a type of cookie.  Furthermore, there are a number of recipes for “sesame snaps” that are accessible on the Internet (several relevant examples found during an Internet search conducted on October 15, 2009 are attached for the applicant’s review).
    A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
    Annex 3 Bates 000024
  3. Complainant abandoned its 2009 application SN 77778406 and it didn’t contest the examining attorney’s findings. Annex 3 Bates 000021
  4. Undeterred, another USPTO examiner issued a final action rejecting Complainant’s 2011 application SN 85331386, for the words Sesame Snaps in a stylized font, for “Cookies, namely, sesame bars, sesame snaps,” stating:
    Annex 3 Bates 000062        
    The examining attorney has read and carefully considered the applicant’s arguments in favor of registration, but is unpersuaded.  For the reasons previously set forth, and set forth below, the refusal is continued and made FINAL.
    SECTION 2 (E)(1) REFUSAL-MARK GENERIC
    Registration is refused because the applied-for mark is generic and thus incapable of distinguishing applicant’s goods.  Trademark Act Section 23(c), 15 U.S.C. §1091(c); see TMEP §§1209.01(c) et seq.
    The examining attorney  has attached evidence from the internet showing use of the terms in recipes for the type of snaps applicant sells and for articles exploring the health benefits of different brands of sesame snaps.

    In this case the mark is the commonly used name for the goods and is used in applicant’s list of goods.  
    Annex 3 Bates 000066 - 000067

Complainant Admits that Sesame Snaps is Merely Descriptive and Generic

  1. The Complainant’s USPTO two registrations:
    A.
    4227082 for AMKI ORIGINAL SESAME SNAPS design claims the goods “Cookies, namely, sesame snaps,” includes a disclaimer: "ORIGINAL SESAME SNAPS," Annex 4 Bates 000075
    and
    B.
    4315517 for SESAME SNAPS DELICIOUS TRY ONE SEZME BRAND design claims the goods, “Cookies, namely, sesame bars, sesame snaps,” includes a disclaimer:        "SESAME SNAPS" AND "BRAND"  Annex 4 Bates 000079 and 000083
  2. In 2015, the Complainant even disclaimed the words SESAME SNAPS from its SESAME SNAPS wrapper design in its failed USPTO application SN 86411335 that a third USPTO examining attorney refused. Annex 4 Bates 000098
  3. Although the Complainant has disclaimed the right to the exclusive use of the words SESAME SNAPS in their USPTO registration for their sesame snaps products, they have failed to disclose this material fact in their WIPO UDRP Complaint.

Complainant Fraudulently Claims Use in Canada Since 1971

  1. The Complainant never made use of the “Sesame Snaps” trademark and associated trademarks in Canada since at least 1971.
  2. The Complainant is a Polish entity; in its Annex 1, it claims to be registered as a joint stock company in 2002. It also claims to be a limited liability company in its USPTO filings. Annex 3 Bates 000020
  3. The Complainant is not an operating company with respect to the use of the brands it registers; it is apparently a shell company invented to dodge taxes in the EU and elsewhere. It is a subsidiary holding company.
  4. In its website, it claims: “Agros Trading Confectionery is an export representative for Polish confectionery producers (main products are: sesame snaps, cream fudge and wafers).” http://www.agrostc.com.pl/en/index.aspx  Annex 5 Bates 0000109
  5. The Complainant’s representatives attend trade shows in the USA portraying itself as a private label manufacturer.
  6. The Complainant didn’t exist before 2002. No private corporations existed in Poland before 1995. Poland privatized starting in 1998.
  7. Poland was a communist country between 1945 and 1989. The Polish government devolved state owned enterprises in 1998.
    http://ec.europa.eu/enlargement/archives/pdf/key_documents/1998/poland_en.pdf
  8. In September 1998, the Complainant’s predecessor-in-interest, AGROS HOLDING SA, applied to register a SESAME SNAPS box design in Canada, in CIPO application number 0889167. CIPO refused the application, which claimed use in Canada “since at least as early as May 1998,” and it was abandoned.

Dalimpex Ltd Owned the Sesame Snaps Trademarks in Canada and the USA 

  1. Dalimpex Ltd “Dalimpex” was a Canadian corporation incorporated in 1965. Annex 6 Bates 000110
  2. Dalimpex was an import and export business operating in Canada and exporting to the USA, and elsewhere, primarily dealing in snack foods, beverage products, durable goods and heavy machinery originating from Poland between 1965 and 2002.
  3. Dalimpex was the owner of the Sesame Snaps brand and many other brands in Canada and in the USA. DALIMPEX used the “Sesame Snaps” trademark and associated design trademarks in Canada and in the USA from about 1966 until 2002.
  4. Dalimpex applied to register its trademark for its SESAME SNAPS design mark in Canada on Aug 31, 1998, in CIPO application number 0888860. Dalimpex’s Sesame Snaps design:   Annex 6 Bates 000113

                

  1. Dalimpex applied to register its SESAME SNAPS design trademark in the USPTO SN 76214332 on Feb. 22, 2001. US Registration number 2627618 issued on Oct 1, 2002 for the trademark:                Annex 6 Bates 000116
  2. K-Max Corp. lent money to Dalimpex Ltd on January 2, 2001; the loan agreement was secured by Dalimpex Ltd’s intellectual property, including its  trademark rights in SESAME SNAPS mark and designs. Annex 7 Bates 000125
  3. Dalimpex defaulted on the loan and in turn relinquished its ownership of the SESAME SNAPS trademarks on Feb 6, 2002. Annex 7 Bates 000127
  4. K-Max Corp. was the owner of the SESAME SNAPS brand in both Canada and the USA between 2002 and 2012.
  5. K-Max Corp aquired the sesamesnaps.com domain in 2002 or 2003. In 2003, K-Max Corp published a landing page using the SESAME SNAPS same font as Dalimpex used. Annex 8
    sesamesnaps.com-screenshot-2003-08-28-by-archive.org-cut.png
  6. K-Max Corp. assigned its entire interests and goodwill in the SESAME SNAPS trademark around the world to David Michaels on July 4, 2012. The assignment was filed with the USPTO in application SN 85045757 on August 16, 2012 and it is a matter of public record. Annex 9
  7. Respondent invokes the tacking doctrine: David Michaels is the senior user of the Sesame Snaps trademark, by virtue of the use of the trademark by his predecessors-in-interest. Hana Financial, Inc. v. Hana Bank, 2015 USSC.

Legitimate Business Interest in Domains with Generic Landing Pages: SesameSnaps.net, SesameSnaps.org and SesameSnaps.biz

  1. Having generic landing pages with Google Ads, for SesameSnaps.net, SesameSnaps.org and SesameSnaps.biz, constitutes a legitimate business interest. Carpenter v myschool.com, US Fed. Ct. Eastern District of Virginia Civil Action No. 1:15cv212 http://www.utahpatentattorneys.com/file/0a88ce6f-47fc-4ae9-a910-4a382f3e1545

Complainant Misrepresents its Claims in Its Canadian Trademark Registrations

  1. The Complainant makes a false claim regarding its SESAME SNAPS & DESIGN, Registered, 0564513, TMA332105 on September 18, 1987:
    A.  The registration is not “for the exclusive use of the words SESAME SNAPS and design logo in relation to confectionery products, namely, sesame bars.”
    B. The registrant, PRZEDSIEBIORSTWO HANDLU ZAGRANICZNEGO AGROS, applied for the trademark with the following disclaimer text:
            
    The right to the exclusive use of the words SESAME SNAPS is disclaimed apart from the trade-mark.
  2. The Complainant makes a false claim regarding its Trademark: SESAME SNAPS DESIGN, Registered, 0564511, TMA332104 on September 18, 1987:
    A.  The registration is not “for the exclusive use of the words SESAME SNAPS and design logo in relation to confectionery products, namely, sesame bars.”
    B. The registration for  SESAME SNAPS DESIGN has DISCLAIMER TEXT:
            
    The right to the exclusive use of all the reading matter is disclaimed apart from the trade-mark.

Complainant’s registration is an assignment of a Non-Legal Entity’s Registration

  1. The Complainant didn’t register the mark in 1987 in Canada.
    A. An applicant called PRZEDSIEBIORSTWO HANDLU ZAGRANICZNEGO AGROS “PHZA” registered the mark for sesame bars, based on a fraudulent claim that it used the mark in CANADA since at least as early as January 01, 1971.
    B. The PHZA name comprises common words in the Polish language that translate to: “
    Foreign trade company Agros,” according to Google translate. Annex G
    C. Such an entity never legally existed during communist Poland.
    D. The Complainant obtained the registration pursuant to an assignment filed on 2007-06-11, based on a back dated assignment dated February 16, 1989.
    E. No Polish State property was ever legally assigned to anyone before 1998.

  1. The Complainant’s 2008 registration of the words SESAME SNAPS for sesame bars:
    a. was based on its fraudulent claims of use in Canada since 1971.
    B. It is also currently the subject of a cancellation proceeding before the Canadian Intellectual Property Office:
    Trademarks: SESAME SNAPS, Registered, 1373036, TMA728997

Complainant’s Misstatements About the Respondent and K-Max

  1. The Complainant falsely claims in it paragraph 7 that Classic Sesame and Sesame Snaps are confusingly similar. The Canadian Intellectual Property Office registered K-Max Corp for CLASSIC SESAME, Registered, 1464507, TMA830204.

Complainant’s Misstatements About Its Other Litigation

  1. The Complainant falsely states that the Respondent attempted to set aside the Complainant’s January 2015 Default Judgment against K-Max Corp. Only Exclusive Candy and Novelty Distributing Limited and K-Max (2013) Corporation attempted to set aside the Complainant’s Judgment.

No Res Judicata

  1. David Michaels was not a party to the Complainant’s prior proceedings in the Ontario Superior Court of Justice. Nor was he a privy in interest to those parties.
  2. While the Respondent was aware of the Complainant’s 2012 Complaint in the Ontario Superior Court of Justice, it did not name him, nor was he an officer or director of K-Max Corp. in 2012.
  3. The Respondent sent an email to the Complainant’s lawyer in 2012 to open discussions and inform him how the Superior Court of Justice didn’t have the jurisdiction to stop K-Max Corp from using its Federally registered CLASSIC SESAME trademark, under sections 19, 20 and 57 of the Canadian Trademarks Act.
  4. The Complainant falsely claims that its 2012 action resulted in a default judgment. In fact, the court dismissed the action on its own accord for failure to prosecute it within two years.
  5. The Respondent was not aware of Complainant’s 2014 action against K-Max Corp. in the Ontario Superior Court of Justice. The Respondent didn’t have any active business relationship with K-Max Corp in 2014. The Respondent is informed and believes that K-Max Corp was not served with Complainant’s 2014 action.
  6. There is no sufficiency of interest or identity between the Respondent and the Complainant’s 2014-2015 proceeding such that the decision in the Ontario Superior Court proceedings ought to be binding upon him. The Respondent did not participate on his own behalf in the Ontario Superior Court proceedings. It would be unfair and unjust to prevent the Respondent from having his defences fairly and fully adjudicated upon. Planon Systems Inc. v. Norman Wade Co., 2005 CanLII 33027 (ON CA)
  7. The Complainant’s lawyer misstated the law in its 2014 action against K-Max Corp., in the Ontario Superior Court, where Complainant obtained a judgment preventing K-Max Corp from using its Canadian registered trademark for the words Classic Sesame for its sesame snaps bars, CLASSIC SESAME, Registered, 1464507, TMA830204.
  8. Specifically, Mr. Melconian mislead the Ontario Superior Court of Justice about the law about injunctions and jurisdiction. He failed to point out that the court does not have the jurisdiction to enjoin a registered trademark holder from using its valid and existing trademark registration in respect of those goods or services for which it is registered, under Sections 19 and 57 of the Trade-marks Act, Revised Statutes of Canada.
  9. In 2002, the Ontario Court of Appeal confirmed that the court does not have the jurisdiction to enjoin a registered trademark holder from using its valid and existing trademark registration in respect of those goods or services for which it is registered, in Molson Canada v. Oland Breweries Ltd., 2002 CanLII 44947 (ON CA), stating:
    [16] My conclusion from this review of the case law is that the respondent is entitled to use its mark throughout Canada in association with its beer. If a competitor takes exception to that use, its sole recourse is to attack the validity of the registration. If it were otherwise, a plaintiff complaining of confusion caused by a competitor's registered mark would himself be infringing on the mark by establishing that confusion. This follows from s. 20 of the Act, which provides that a registered mark is deemed infringed by a person who sells wares with a confusing trade-mark or trade name.
  10.  And now Mr. Melconian and the Complainant are trying to use their ill gotten 2015 default judgment against the K-Max Corp., in this WIPO proceeding, which is unfair and unjust to prevent the Respondent from having his defences fairly and fully adjudicated upon.

SesameSnaps.ca CDRP Decision Not Relevant to Non-.ca Disputes

  1. The Complainant tries to paint the Respondent as a squatter and casts aspersions about what other domains the Respondent is associated with and whether he has legitimate rights in those domains with a partial summary printout of domains associated with various David Michaels, a common name throughout the USA and Canada.
  2. The Respondent is not associated with most of the domains in the Complainant’s list. Some of the domains are owned by clients of the Respondent.

Affirmative Defense of Laches

  1. The Respondent pleads the affirmative defense of laches.
  2. The limitation period is two years in Ontario and two to four years in most of the USA. The USPTO recognizes an affirmative defense of laches after 3 years.
  3. The Respondent’s sesamesnap.com registration date is December 18, 2005; that is more than 10.7 years ago. SesameSnaps.com was previously registered since at least 2003 by the Respondent’s predecessor-in-interest. The limitations act
  4. The Respondent will suffer prejudice after having invested time and money in building a functional eCommerce website and spending years in developing his business retailing sesame based products.  

RDNH: Find Reverse Domain Name Hijacking

  1. The Complainant filed false and misleading information and left out material information in order to hijack Respondent’s five sesame snap related generic domains. Respondent asks the Panel to make a finding of reverse domain name hijacking.

Table:

Current Search:

(sesame snaps)[COMB]

docs: 10 occ: 45

 


Serial Number

Reg. Number

Word Mark

Check Status

Live/Dead

1

86966284

SESAME SNAPS

TSDR

LIVE

2

86411335

SESAME SNAPS

TSDR

DEAD

3

86570617

SESAME SNAPS

TSDR

DEAD

4

85045757

SESAME SNAPS

TSDR

DEAD

5

85378422

4227082

AMKI ORIGINAL SESAME SNAPS

TSDR

LIVE

6

85331534

4315517

SESAME SNAPS DELICIOUS TRY ONE SEZME BRAND

TSDR

LIVE

7

85331386

SESAME SNAPS

TSDR

DEAD

8

77778406

SESAME SNAPS

TSDR

DEAD

9

76214332

2627618

SESAME SNAPS CANDY/ FRIANDISE

TSDR

DEAD

10

72366432

0930266

SEZME BRAND SESAME SNAPS

TSDR

DEAD








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