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Generic Top Level Domain Name (gTLD) Decisions |
Eskimos, Inc. v. William Phillips d/b/a
ezcoldcash.com
Claim Number: FA0203000105950
PARTIES
The
Complainant is Eskimos, Inc.,
Barrow, AK (“Complainant”) represented by Erin
Rose, of Arctic Slope Regional
Corporation. The Respondent is William Phillips d/b/a ezcoldcash.com,
Barrow, AK (“Respondent”) represented by Stephen
L. Anderson, of Anderson &
Shippey.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <eskimosinc.com>,
registered with BulkRegister.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
M.
Scott Donahey, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on March 19, 2002; the Forum received
a hard copy of the
Complaint on March 25, 2002.
On
March 20, 2002, BulkRegister confirmed by e-mail to the Forum that the domain
name <eskimosinc.com> is
registered with BulkRegister and that the Respondent is the current registrant
of the name. BulkRegister has verified
that Respondent is bound by the BulkRegister registration agreement and has
thereby agreed to resolve domain-name
disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
March 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 15,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@eskimosinc.com by e-mail.
A
timely Response was received and determined to be complete on April 15, 2002.
Pursuant
to Forum Supplemental Rule 7, Complainant submitted a timely additional
submission on April 19, 2002.
Respondent also submitted a timely additional submission on April 19,
2002, in which Respondent objected to the filing of the additional
submission
of Complainant.
On May 3, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed M. Scott Donahey
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that it has a common law trademark in the mark ESKIMOS, INC.
owing
to its long use in the Arctic Slope Region of Alaska and Canada and in the town
of Barrow, Alaska, in connection with its business
of wholesale and retail fuel
sales, and sales of auto parts and snowmobiles. Complainant contends that Respondent's domain name is identical
to its common law mark. Complainant
contends that Respondent has no rights or legitimate interests in respect of
the domain name at issue, nor has Respondent
attempted to make any use of the
domain name since its registration.
Complainant contends that Respondent registered and is using the domain
name in bad faith, since as a long time resident of Barrow,
Alaska, Respondent
must have known of Complainant's common law trademark, and since Respondent
effectively offered to sell the domain
name at issue to Complainant for an
unstated amount in excess of Respondent's out-of-pocket costs.
B.
Respondent
Respondent
contends that there are no common law copyrights recognized in Alaska. Respondent contends that he is married to an
Eskimo and that he registered the domain name at issue "with the intent of
hosting
digital content relating to his family's culture and heritage as well
as local, historical, political business or other editorial
content related to
[Respondent's] family, the Eskimo culture and residents of Alaska
generally." Respondent intends to
conduct an unspecified "Internet business," although problems with
service providers have prevented
Respondent from establishing any web site to
date. Respondent denies he ever made
any offer to sell the domain name at issue.
Respondent contends that Complainant is engaged in Reverse Domain Name
Hijacking.
C.
Additional Submissions
Complainant
submitted an additional pleading in the form of a Supplemental Affidavit. Respondent submitted an additional pleading
entitled "Response and Objection to Complainant's Supplemental
Affidavit." Both documents were
apparently filed pursuant to National Arbitration Forum Supplemental Rule 7,
which purports to permit parties
to submit additional statements so long as
such statements are filed within five days of the filing of the Response and
are accompanied
by a $250 additional submission fee. While the supplemental rules of the providers may permit the
filing of such pleadings, they cannot mandate that the Panel consider
such
submissions. Uniform Rule 12 gives the
Panel the "sole discretion" as to the acceptance and consideration of
additional submissions. As neither
party sought the Panel's permission to file additional submissions, the Panel
declines to accept either submission.
FINDINGS
Complainant has produced evidence that it
has used the mark ESKIMOS, INC. in commerce in the North Slope Region of Alaska
and Canada
and especially in and around Barrow, Alaska, since 1974. The mark has been used in a unique stylized
form, accompanied by a unique stylization of the initials "e" and
"i." The mark has been used
continuously in conjunction with Complainant's retail and wholesale fuel sales,
and sales of automobile parts
and snowmobiles.
The distinctive mark is used on company letterhead, in advertisements,
business cards, community service promotions, and promotional
materials,
including pens, calculators, calendars, work gloves, thermometers, and
jackets. Accordingly, the panel finds
that Complainant has established common law rights in the trademark ESKIMOS,
INC. in the North Slope
Region and in Barrow Alaska.
Respondent is a resident of Barrow,
Alaska. Respondent is a retired bus
driver who used to purchase fuel from Complainant's station, the only filling
station in Barrow, Alaska. Respondent
contends that he was unaware of Complainant's name when he registered the
domain name at issue on June 21, 2000.
The Panel finds Respondent's professed ignorance incredible, in light of
the facts of continuous purchases by Respondent from Complainant
and
Complainant's community promotions.
Accordingly, the Panel finds that Respondent must have been aware of
Complainant's common law trademark at the time that Respondent
registered the
domain name at issue.
Respondent's claimed plans for the use of
the domain name at issue are contradictory.
Initially Respondent claims that he intends to use the domain name to
promote family and cultural matters.
Then Respondent alleges that he intends to use the domain name to start
an "Internet business" of unspecified type. Respondent has made no use of the domain name at issue.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint
on the basis of the statements and documents submitted in accordance with the
Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the following
three elements to obtain an order that
a domain name should be cancelled or
transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Respondent's domain name is identical to
Complainant's common law trademark. See
EFG Bank European Fin. Group SA v. Jacob
Foundation, D2000-0036 (WIPO Mar.22, 2000) (graphic elements, which cannot
be reproduced in domain name, not considered for purposes of assessing
identity).
Rights or Legitimate Interests
Complainant contends that Respondent has
no rights or legitimate interests in respect of the domain name at issues. This shifts the burden to Respondent to show
such rights or legitimate interests. See
Document Techs, Inc. v. Int’l Elec.
Communications, Inc., WIPO Case No. D2000-0270; See Also Inter-Continental
Hotel Corp. v. Soussi, D2000-0252 (WIPO Jul. 5, 2000). Respondent has failed to show that
Respondent has rights or legitimate interests in respect of the domain name at
issue.
Registration and Use in Bad Faith
In evaluating the question of bad faith
registration and use, the Panel can only look at the facts and circumstances
surrounding the
parties before it. See First American Funds, Inc. v. Ult.
Search, Inc., D2000-1840 (WIPO Apr 20, 2001) (Donahey dissenting). The issue of bad faith registration and use
will necessarily vary when the interests of particular parties vary. Had Respondent been a resident of Texas who
registered the domain name at issue to promote a brand of ice cream, it would
be difficult
to find that the Texas resident had knowledge of the common law
mark or that he had acted in bad faith.
Where, as here, a Respondent has registered a domain name which is well
known in the very small community in which both Complainant
and Respondent
reside and are engaged in commerce, Respondent's registration of the mark can
only have been done with knowledge of
the mark and was, therefore, in bad
faith. See Finter Bank Zurich v.Olivieri, D2000-0091 (WIPO Mar. 23,
2000). The fact that Respondent has not
used the domain name to resolve to a Web Site in the more than two years that
he has held the registration
rights tends to show bad faith use. See,
e.g., CBS Broadcasting Inc. v. Bert Groves, D2000-0254 (WIPO May 8,
2000). However, here Respondent made a
use of the domain name off the Internet that was designed to create
confusion. Respondent admittedly posted
an opinion on the controversial subject of an upcoming election on the bulletin
board of Complainant's
parent corporation.
In expressing the view, Respondent averred the view was that of <eskimosinc.com>.
and indicating that the posting was sponsored by <eskimosinc.com>. This was clearly intended to confuse readers
into believing that Complainant was the sponsor of the views. Such conduct could well have damaged
Complainant in the conduct of its business.
Accordingly, the Panel finds that Respondent has used the domain name at
issue in bad faith.
Reverse Domain Name Hijacking
Since
the Panel finds that Respondent has acted in bad faith, there can be no reverse
domain name hijacking.
DECISION
The Panel finds that the domain name at
issue is identical to Complainant's common law trademark, that the Respondent
has no rights
or legitimate interests in respect of the domain name, and that
Respondent has registered and is using the domain name at issue in
bad
faith. Accordingly, pursuant to
Paragraph 4(i) of the Policy, the Panel orders that the domain name <eskimosinc.com>
be transferred to the Complainant.
M. Scott Donahey, Panelist
Dated: May 13, 2002
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