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Mountain Gear, Inc. v. Damir Kruzicevic [2001] GENDND 232 (1 February 2001)

Under the ICANN Uniform Domain Name Dispute Resolution Policy

366 Madison Avenue P New York, NY 10017-3122 P Tel. (212) 949-6490 P Fax (212) 949-8859 P cprneutrals@cpradr.org P www.cpradr.org

Before James P. O’Shaughnessy, Arbitrator

PROCEDURAL HISTORY

The Complaint was filed with CPR on December 21, 2000 and, after review for administrative compliance, served on the Respondent on December 27, 2000. The Respondent did not file a Response on or before the required response date of January 16, 2001. I was appointed Arbitrator pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP") and Rules promulgated by the Internet Corporation for Domain Names and Numbers (ICANN). Upon the written submitted record, including the Complaint and correspondence to Respondent, I find as follows:

DEFAULT RULING

The Complaint was served by CPR on Respondent pursuant to ICANN procedures. The correspondence was addressed to Respondent at the E-mail address he provided to the Registrar, BulkRegister.com. The CPR Administrator later confirmed the accuracy of Respondent’s contact information in an E-mail communication to BulkRegister.

When the response date passed, CPR advised Respondent that the time for filing his response had lapsed and that these proceedings would continue based on the allegations contained in the Complaint. On the date of this ruling, Respondent remains in default. Despite the fact that this default award is rendered without the benefit of Respondent’s response to the allegations in the verified Complaint, I enter findings showing that Complainant has presented a prima facie case of its entitlement to the remedy of cancellation of Respondent’s registered domain name, "mountaingear.com."

FINDINGS

Respondent’s registered domain name, "mountaingear.com," was registered with BulkRegister.com, Inc. on November 20, 2000. In registering the name, Respondent agreed to submit to this forum to resolve any dispute concerning the domain name, pursuant to the UDRP.

The UDRP provides, at Paragraph 4(a), that each of three findings must be made in order for a Complainant to prevail:

i. Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. Respondent’s domain name has been registered and is being used in bad faith.

IDENTITY/CONFUSING SIMILARITY: Complainant alleges that the domain name, "mountaingear.com," is identical or confusingly similar to Complainant’s tradename, Mountain Gear, Inc., under which the Complainant sells specialized sporting goods. Complainant describes its products as "high-end backpacks, climbing equipment, cross-country skis, boots, backpacking, kayaking, and all related items, with all accessories and clothings [sic] related thereto." Complaint at ¶ 2.8. Complainant alleges its first use of this tradename in commerce to have occurred as early as 1981. Id. Complainant further alleges that its sales through catalog and Internet outlets reach international markets. Id. Because Respondent is in default, I take these verified allegations to be true.

I conclude that the registered domain name, "mountaingear.com," is identical to Complainant’s protectible tradename, Mountain Gear. Moreover, because the common formative terms-mountain and gear-admit of limited logical use outside the channels of trade within which Complainant’s goods are distributed and sold, I further conclude that the identity between Respondent’s registered domain name and Complainant’s tradename is likely to cause confusion within that channel of trade were that term to be used by each of them.

RIGHTS AND LEGITIMATE INTERESTS: Complainant conclusorily avers that Respondent has no rights or legitimate interests with respect to the domain name at issue. Complaint at ¶ 2.9. Complainant goes on to allege that Respondent’s rights in and to the domain name are inferior to Complainant’s. Id. at 2.11. In support of this allegation, Complainant relies on Respondent’s refusal to communicate with Complainant when it sought to acquire the domain name from him and Respondent’s failure to date to make commercial use of the registered domain name as a URL, such as launching a website under it. Id. This stands in contradistinction to Complainant’s operation of its business for many years under the Mountain Gear banner.

UDRP Paragraph 4(c) provides that Respondent’s rights or legitimate interests in a domain name may be demonstrated, without limitation, by showing that (a) before notice to Respondent of the dispute, Respondent has used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (b) Respondent has been commonly known by the domain name; or (c) Respondent is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

I do not accept Complainant’s position that the facts recited in its Complaint are sufficient to support the conclusion that Respondent is a "cyber-squatter." Respondent was under no obligation to communicate with Complainant when it wrote to him. Respondent is under no obligation to make commercial use of the domain name within the relatively short period of time between registration in mid-November 2000 and Complainant’s initiation of these proceedings in mid-December 2000.

Moreover, the issue before me is not a question of whose rights are superior or inferior, but whether Respondent possesses "rights or legitimate interests in respect of the domain name," vel non. The UDRP provisions applicable here do not create a balancing contest between the legitimate interests of two parties laying claim to the same domain name, as Complainant’s pleadings would invite. Paragraph 4(a)(ii) is explicit in focusing the inquiry sharply: Complainant prevails if Respondent has no rights or legitimate interests in the domain name.

Respondent’s default deprives me of any basis on which to conclude he possesses any such interest, in the face of verified allegations that he does not. While Respondent is under no obligation to respond to Complainant’s inquiries, he is obliged to respond in these proceedings if he intends to preserve the registered domain name. For example, each of the ways UDRP Paragraph 4(c) suggests one might establish the existence of a legitimate interest in a domain name requires some evidence be adduced by or on behalf of the Respondent.

Along these lines, I am mindful that parties in the position of Mountain Gear may be unable to develop proof of the proposition set up by the UDRP, that a Respondent such as Mr. Kruzicevic enjoys no rights or legitimate interests. Proof of such a negative proposition is almost always difficult. For these reasons, it is appropriate to take as proven the unrebutted allegations in Complainant’s verified Complaint.

Accordingly, on the basis of the written record before me, I conclude that Complainant has adequately established this element of its case, that Respondent lacks rights or legitimate interests with respect to the domain name, "mountaingear.com." To find otherwise would reward a Respondent’s choice to default under circumstance where a Complainant lacks evidence, direct or circumstantial, essential to prove this element of its case.

BAD FAITH: In support of the contention of Respondent’s bad faith registration of the disputed domain name, Complainant’s case looks much like its contentions on the previous element. Complainant broadly avers that Respondent registered the domain name "in bad faith," meeting the wording of Paragraph 4(a) of the UDRP. See, Complaint at ¶ 2.9. Complainant then alleges in support of this contention the same facts summarized above. Id. at 2.11.

Paragraph 4(b) of the UDRP provides that indications of bad faith include, without limitation, (a) registration for the purposes of selling, renting or transferring the domain name to the Complainant for value in excess of Respondent’s cost; (b) a pattern of registration in order to prevent Complainant from reflecting the mark in a corresponding domain name; (c) registration for the primary purpose of disrupting the business of a competitor; or (d) an intentional attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or location, or of a product or service on Respondent’s web site or location.

I resolve this element of Complainant’s case in the same fashion as that regarding Respondent’s rights to the disputed domain name. Because Respondent is in default, I accept as true the verified allegations of the Complaint and find for Complainant on this issue. I therefore conclude that Respondent did register the domain name in bad faith, as that term is defined in the ICANN Policy.

CONCLUSION

In light of my findings above that (a) the registered domain name is identical and confusingly similar to Complainant’s protectible tradename; (b) Respondent has not established that he has rights or legitimate interests with respect to the domain name at issue; and (c) Respondent did register the domain name in bad faith, as that term is defined in the ICANN Policy, I find in favor of the Complainant.

This award is entered in Complainant’s favor because Complainant has made the necessary factual averments required by the UDRP and they stand unrebutted. Under these circumstances, I believe the appropriate remedy is cancellation of Respondent’s registration, not its transfer to Complainant. This action permits Complainant to seek its own registration of the disputed domain name on the basis of its common law rights in its tradename, while preserving any rights of others not a party to these proceedings. It is my purpose only to clear the register so parties with legitimate interests, such as Complainant, may act unimpeded by the existing registration.

REMEDY

Complainant’s request to transfer the domain name, "mountaingear.com," is hereby DENIED.

Respondent’s domain name, "mountaingear.com," is hereby CANCELLED.

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Signature of Arbitrator Date