Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Rollerblade, Inc., a Delaware corporation located in Bordentown, New Jersey.

Respondent is CBNO and Ray Redican Jr., located in Lowell, Massachusetts.

The disputed domain name is <rollerblading.com>

The registrar is Network Solutions, Inc., Herndon, Virginia, USA

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The complaint was filed on May 12, 2000. The response was filed on June 24, 2000. Complainant requested leave to file a Reply on June 24, 2000. An unsolicited Reply was filed on July 31, 2000, and Respondent has objected.

On August 7, 2000, the matter was referred for decision to a three-member panel consisting of Mark V.B. Partridge, presiding panelist, Dennis A. Foster and Edward G. Poplawski. After the referral, the Panel concluded that additional time was required to complete the decision due to exceptional circumstances in accordance with Paragraph 15 of the Rules.

Complainant is engaged in the manufacture and sale of in-line skates and related products and services. It is the owner of several federal registrations for the trademark ROLLERBLADE. The earliest registration was issued on March 19, 1985.

Respondent registered the domain name <rollerblading.com> and operates a web site at that address relating to the sport of in-line skating. The content of the web site does not originate with Complainant. Respondent’s web site seeks subscribers and investors, but there is no indication that Respondent seeks to sell the domain name for profit. See Complaint, Exhibit A.

Complainant claims that Respondent uses ROLLERBLADE as a "metatag" to attract Internet users to its site, but Complainant has not submitted any evidence of the html source document for Respondent’s site.

Complainant also claims that Respondent’s application to register ROLLERBLADING.COM as a trademark was rejected by the U.S. P.T.O. due to conflicts with Complainant’s prior registrations for ROLLERBLADE.

Respondent has submitted evidence of third-party use of "rollerblading" as a term for the sport of in-line skating. See Response, Exhibit F.

Complainant contends that the disputed domain name is virtually identical to the substantive part of its famous mark, that the Respondent has no rights or legitimate interests in the domain name, and that the domain name is registered and used in bad faith in an intentional attempt to attract Internet users to Respondent’s web site for commercial gain.

Respondent contends that "rollerblading" is a generic term of the sport of in-line skating, that the domain name and trademark are not the same, that Respondent operates a legitimate business at its web site, and that there is no showing that Respondent registered and used the domain name in bad faith.

The first issue is whether the Panel will grant Complainant’s request to file a reply. Complainant argues that it should be permitted to respond to Respondent’s attack on the validity of its mark, which it could not have anticipated in its complaint.

Rules 10(a) and (b) requires that the proceeding be conducted in accordance with the Policy and Rules and that each party is given a fair opportunity to present its case.

Rule 12 permits the Panel in its sole discretion to request further statements or documents from either party.

Although the Rules do not provide for a reply as of right, some Panels have considered unsolicited replies. See, e.g., Cedar Trade Associates, Inc. v. Ricks, ICANN Case No. FA0002000093633; Aero-Turbine, Inc. v. Mcayman, Ltd., ICANN Case No. FA000200093675; Travel Services, Inc. v. Tour COOP of Puerto Rico, ICANN Case No. FA0001000092524; Heelquick!, Inc. v. Goldman, et al., ICANN Case No. FA0001000092527. Other Panel’s have refused to consider such submissions. See, e.g. Easyjet Airline Co., Ltd. v. Steggles, ICANN Case No. D2000-0024; J.P.Morgan v. Resource Marketing, ICANN Case No. D2000-0035; Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc., ICANN Case No. D2000-0166; Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN Case No. D2000-0270.

We side with the decisions that have not considered additional submissions, and deny Complainant’s request to file a reply. The Policy and Rules demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances. We believe this is a wise procedure given the nature of these proceedings. Although Complainant may have been surprised by the breadth of Respondent’s response, we do not find this to be an extraordinary circumstance.

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interest in the domain name; and

(iii) the domain name has been registered and used in bad faith.

In this case, we find that the domain name <rollerblading.com> is confusingly similar to Complainant’s mark ROLLERBLADE. This comparison is based merely on the terms at issue, without considering the manner in which they are actually used.

Although Complainant’s trademark rights in ROLLERBLADE long predate this dispute, respondent argues that Complainant lack rights in the mark because it has become generic. Indeed, genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration. See Windsurfing International, Inc. v. AMF, Inc., 613 F.Supp 933 (S.D.N.Y. 1985), aff’d in part and reversed in part [1986] USCAFED 87; 782 F.2d 995 (Fed. Cir. 1986). However, because of our findings below, it is not necessary for us to determine whether or not Complainant’s mark has become generic. Instead, we focus on the domain name itself, <rollerblading.com>, which is similar but not identical to Complainant’s mark.

Under Paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in the domain name:

(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(3) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Here, Respondent has operated as a business and paid for advertising under the name RollerBlading.com (CIS) since 1997, well prior to this dispute. Response, Exhibit G.

Complainant contends that Respondent’s use cannot be bona fide because it is derived from and trades upon Complainant’s famous mark. However, the evidence appears to support Respondent’s claim that it is merely seeking to trade on the popularity of a term used generically by many people for a popular sport. This is not a case where the defendant has converted a famous mark into a verb to benefit from association with the mark. Instead, this appears to be a case where the public created a generic term derived from Complainant’s mark, and Respondent has used that term in a manner consistent with common public use.

Based on the evidence, we find that the requirement of Paragraph 4(a)(ii) of the Policy has not been proved by Complainant.

Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use includes:

(1) circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;

(2) a pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

(3) registration of the domain name for the purpose of disrupting the business of competitor; or

(4) "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark . . ."

Here, there is no evidence that Respondent registered and used the domain name to profit from resale. Respondent’s use of the domain name to find investors for its business does not satisfy this element.

There is also no evidence that Respondent has engaged in a pattern of conduct of warehousing the names of others or has registered the disputed domain name to disrupt the business of a competitor.

The claim of bad faith registration and use rests on the claim that Respondent has intentionally attempted to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant’s mark. The element of intent is a critical aspect of this claim. The mere presence of a likelihood of confusion or dilution is not sufficient to find bad faith under the Policy. Based on the evidence presented, we do not believe that Complainant has met its burden on this point. Although it is apparent that the term "rollerblading" is a derivative of Complainant’s mark ROLLERBLADE, Respondent has presented ample evidence that the term "rollerblading" is now commonly used by third parties as a generic term for the sport of in-line skating. Thus, the evidence supports a finding that Respondent registered and used the domain name <rollerblading.com> in an intentional attempt to attract Internet users by using the common name for a popular sport, not by creating confusion with Complainant’s mark.

Complainant suggests that Respondent has improperly used Complainant’s mark in metatags for its site. Although such evidence could be relevant to determining Respondent’s intent in selecting its domain name, we have no specific evidence before us. Further, the use another’s mark in metatags is beyond the scope of issues this Panel is authorized to address in this proceeding.

For these reasons, we find that the requirement of Paragraph 4(a)(iii) of the Policy has not been proved by Complainant.

We note that this decision should not be interpreted as stating that Complainant’s mark is generic or that Respondent’s use is not likely to dilute or cause confusion with Complainant’s mark. Those issues are beyond the scope of this proceeding and would require resolution by a court based on a full record of the evidence.

For the reasons stated above, we find in favor of the Respondent regarding the domain name <rollerblading.com> and deny the relief requested in the Complaint.

Dennis A. Foster Edward G. Poplawski
Panelists

Date: August 24, 2000