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United States of America Department ofthe Navy NAVSEA v. NAVYWEB [2002] GENDND 744 (21 May 2002)


National Arbitration Forum

DECISION

United States of America Department of the Navy NAVSEA v. NAVYWEB

Claim Number: FA0203000105977

PARTIES

Complainant is United States of America Department of the Navy NAVSEA, Washington, DC (“Complainant”), Respondent is NAVYWEB, San Diego, CA (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates, PC.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <navsea.com>, <navsea.org>, and <navsea.net> registered with Tucows, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

Carolyn M. Johnson, G. Gervaise Davis III, and Irving H. Perluss (presiding) are the Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 21, 2002; the Forum received a hard copy of the Complaint on March 21, 2002.

On March 21, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <navsea.com>, <navsea.org>, and <navsea.net> are registered with Tucows, Inc. and that the Respondent is the current registrant of the names.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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@navsea.com, postmaster@navsea.org, postmaster@navsea.net by e-mail.

A timely Response was received and determined to be complete on April 15, 2002.  Complainant and Respondent each made a timely additional submission.

On May 2, 2002, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Carolyn M. Johnson, G. Gervaise Davis, III, and Irving H. Perluss as Panelists.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

            1.         Complainant, NAVSEA, is a famous organization, well known throughout the world, particularly throughout the worldwide naval and maritime communities.  The largest of the United States Navy’s five systems commands, Complainant designs, builds and supports the entire U.S. Navy fleet of ships and combat systems.

            2.         Complainant accounts for nearly one-fifth of the U.S. Navy’s annual budget (approximately $20 billion) and provides services for more than 130 acquisition programs, all requiring extensive dealings with the worldwide naval and maritime communities.  Complainant’s approximately 50,000 uniformed and civilian personnel presently serve nationwide in four shipyards, two naval warfare centers, nine major commercial shipyards, and at its corporate headquarters located in Washington, D.C.

            3.         Complainant is commonly known throughout the world as “NAVSEA.”  Complainant is also the owner of two federally registered service marks for “NAVSEA,” both registered at the U.S. Patent and Trademark Office on February 27, 2001.  Complainant has continuously used the NAVSEA marks in interstate commerce since at least 1981.  Complainant also owns and operates several Internet websites for providing information and advertising its services to the public.  Complainant’s websites have been operated and freely accessible to the public since at least 1994.

            4.         Respondent is an unincorporated business, operating under the fictitious name “NAVYWEB” in San Diego, California.  NAVYWEB is owned by Andy Breece.  Andy Breece is an employee of the U.S. Navy’s Space and Naval Warfare Systems Command (SPAWAR) in San Diego, California.  As two of the Navy’s major system commands, SPAWAR and Complainant often have overlapping missions and cooperate in several major acquisition and research and development programs.  Therefore, Respondent was aware, or should have been aware, of Complainant’s use of the NAVSEA mark prior to registering the disputed domain names.  Neither Complainant nor SPAWAR authorized or agreed to the registration of the disputed domain names or to the operation of websites under the disputed domain names by Mr. Breece.

            5.         Respondent is the registered owner of the disputed domain names <navsea.com>, <navsea.org> and <navsea.net>, all registered by Tucows, Inc. on October 9, 1998.  Respondent operates websites at <navsea.com> and at <navsea.org>. At both of these websites, Respondent offers to sell “vanity” e-mail addresses to members of the public within the same industries in which Complainant has continuously provided services for decades, e.g.. Respondent offers to sell shipbuilder@NAVSEA.COM>, and Complainant provides services to shipbuilders worldwide.

            6.         Respondent does not advertise vanity e-mails for sale at its <<navsea.net> website.  But Respondent is offering to sell the <<navsea.net> domain for $11,000.00, or lease it for $90.00/month or $990.00/year.

            7.         Respondent has also aggressively and systematically purchased numerous other domain names that use the marks of other naval commands closely associated with Complainant, including SPAWAR <spawar.com>; <spawar.org>, Naval Supply Systems Command (NAVSUP) <navsup.net>; <navsup.net>, and Naval Air Systems Command (NAVAIR) <navair.org>.  At most of these websites Respondent repeatedly offers vanity e-mail addresses for sale.  Moreover, just as it does for <navsea.net>, Respondent offers <navsup.net> domain for sale to anyone for $11,000.00.

            8.         The disputed domain names incorporate Complainant’s mark “NAVSEA” in its entirety.  Therefore, the disputed domain names are identical to Complainant’s federally registered NAVSEA mark and satisfy ¶4(a)(i) of the ICANN Policy.

            9.         Respondent has no rights or a legitimate interest in the disputed domain names.  This is because Respondent had not used, before any notice of a dispute, the disputed domain names in connection with a bona fide offering of goods or services.  (ICANN Policy, ¶4(c)(i).)

                        Respondent’s owner is a Navy employee and should have been aware of Complainant’s use of the NAVSEA mark when it registered the disputed domain names.  Respondent knew that Complainant had long-established trademark rights in the word NAVSEA and would likely dispute its unauthorized use by others.  Indeed, Complainant used its mark long before Respondent registered the disputed domain names.  During Complainant’s existence, having roots dating back over one hundred years, it has had extensive commerce with commercial industry in furtherance of the nation’s defense.  Since at least 1981, such commerce has been conducted under the NAVSEA mark.  Although Complainant’s mark was federally registered in 2001, it is actual use of a mark in commerce that creates legal rights.

            10.       Respondent is not commonly known by the disputed domain names, nor is Respondent licensed or authorized to use Complainant’s mark (ICANN Policy, ¶4(c)(ii).)  Respondent uniformly conducts its business under the fictitious trade name NAVYWEB, and Respondent is known by that name as evidenced by its statement to that effect on websites it operates under the disputed domain names.  Respondent identifies itself as NAVYWEB, not by Complainant’s mark or the mark in combination with any other words or shape.  Therefore, Respondent has no need or legitimate interest to use Complainant’s mark in conducting its business.

            11.       Respondent’s use of the disputed domain names is not a legitimate non-commercial or fair use (ICANN Policy, ¶4(c)(iii).)  Under two of the disputed domain names Respondent is offering to sell vanity e-mail addresses incorporating Complainant’s mark, and under the third is offering to sell the domain name outright.  Respondent’s attempts to sell vanity e-mail addresses and the domain name, in addition to the many other addresses and domains it is offering, indicates that Respondent is using the disputed domain names as part of a larger business enterprise; one in which Respondent is profiting on the goodwill and recognition of the marks of others.

            12.       Respondent’s offered services confusingly overlap the same services provided by Complainant.  Under the disputed domain names, Respondent offers a private e-mail service for civilian and military personnel, family and friends.  But since at least 1994, Complainant has continuously operated a much larger nationwide e-mail service for civilian and military personnel. Most e-mail addresses in Complainant’s e-mail service contain its registered service mark.

            13.       Respondent’s registration and use of the disputed domain names demonstrate bad faith with the intent to gain commercially by attracting Internet users to its websites by creating a likelihood of confusion with Complainant’s mark (ICANN Policy, ¶4(b)(iv).)  An unwitting member of the relevant public, seeking information about Complainant or attempting to access Complainant’s website, is more likely to type in the common “.com,” “.org,” or “.net” to level domain names rather than the less common “.navy.mil” extension used at Complainant’s current website.  When that person does, he or she will be taken directly to Respondent’s website, where Respondent immediately offers to sell, for commercial gain, the domain name itself or e-mail addresses incorporating Complainant’s mark.

            14.       Respondent is systematically registering multiple names of various U.S. government organizations, including variations of Complainant’s mark, for the purpose of attracting more such traffic.  For instance, Respondent is warehousing a wide variety of U.S. Navy domain names, including the names of many famous Navy commands, and is presently encroaching into source-indicating marks of the U.S. Air Force and U.S. Army.  Respondent advertises selling e-mail addresses for “Armyweb, AFWeb, NAVSUP, NAVYJAG, BuMed, etc.”  Respondent’s systematic registration, use, and sale of domain names and vanity e-mail address incorporating the marks of others demonstrate bad faith.

            15.       Respondent has made an ineffective attempt to inform the relevant public that is not associated with Complainant’s mark.  Thus, Respondent posts sponsorship disclaimers at the bottom of several of its websites.  Respondent also tries to distinguish its e-mail services as “not-for-profit” and “private.”  Yet, Respondent’s significant fees and offers to sell domain names at high prices belie such claims.  Complainant’s e-mail service, however, is genuinely “not-for-profit” and “private” for civilian and uniformed employees.  Respondent’s tactic of placing sponsorship disclaimers at the bottom of websites misleads the public by forcing them to scroll through the homepage to learn, to their confused dismay, that Complainant is not the owner or operator of the disputed domain names.

            16.       Respondent was aware, or reasonably should have been aware, of Complainant’s mark prior to registering the disputed domain names.  This also constitutes bad faith.  There is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s trademarks when it registered the disputed domain names.

            17.       If Respondent registered a domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name, this also may demonstrate bad faith.  Complainant “is presently working to integrate all NAVSEA Activities into a single integrated NAVSEA Corporation, with a single NAVSEA Strategic Plan.”  http://www.crane.navy.mil/Corp/Strategicplan/Default.htm.  As part of its evolution towards efficient corporate business processes, Complainant needs to reflect its services in public websites operating under commercial top-level domain names.   Yet Respondent, by systematically buying up commercially valuable domain name variants of Complainant’s mark, including the new <navsea.biz> domain name, acts to prevent Complainant from reflecting its registered mark in any commercial top-level domain name.

B. Respondent[1]

            1.         The UDRP was established to permit the expedited disposition of clear abuses.  A clear abuse is certainly not present in the instant case.

            2.         The disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights, because Complainant does not provide conclusive proof, evidence or substantiation to prove that the Complainant had any trademark rights in the names in question at the time of Respondent’s registrations...

                        Although Complainant obtained a trademark registration on February 27, 2001, Respondent registered the domains on October 9, 1998 – substantially earlier than Complainant’s application for a trademark.  Since Complainant did not have a registered trademark prior to February 27, 2001, Complainant must prove that it had common law trademark rights prior to the date of registration.  However, Complainant has failed to provide any proof of any common law trademark rights of any entity.  Complainant has not met the legal test for proving a common law trademark, i.e., Complainant has not established recognition of the words as being associated with any services or products that Complainant may market or provide.

            3.         Since Complainant has not provided any conclusive proof of trademark rights prior to the registration of the domain names, it fails to prove the first element that is required to obtain the transfer of a domain name.

            4.         Complainant also has failed to sustain its burden of proving that Respondent did not have any legitimate interest in the disputed domain names.  The statements and arguments of Complainant do not constitute proof that is sufficient to justify the taking away of Respondent’s valuable domain names that Respondent has registered for use in its business.

            5.         Although the Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain name, and the Respondent does not have the burden of proving that it does have legitimate rights in the domain name, Respondent has provided evidence to prove that Respondent does have legitimate rights in the domain name.

                        The Uniform Domain Name Dispute Resolution Policy provides a listing of several circumstances which, if proved, demonstrate that a respondent has rights or legitimate interests to the domain name.  Section 4c of the UDRP provides as follows [emphasis added]:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4a)(ii) [emphasis added]:

(i) before any notice to you of the dispute, your use of, or 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 * * *

                        Respondent does, in fact, have rights in the domain name for purposes of Paragraph 4(a)(ii) since Respondent has satisfied the conditions of section (i) above by engaging in the preparation for the use and the use of the domain names in connection with a bona fide offering of goods and services; before any notice of the dispute.  There has been the “use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services” as required by the UDRP.

            6.         Respondent’s business plan is to use the domain name NAVSEA to establish an e-mail service for NAVSEA employees, thereby providing them with a NAVSEA domain name that can be used for personal use as opposed to the “.mil” extension that is subject to strict restrictions, regulations and monitoring.  It is to be a community domain, including chat rooms and special interest pages for employees only.  Respondent’s business plan also included the use of the domain name <navsea.net> as the domain name serving, hosting “.com” and “.org.”  The plan also included the use of the domain name <navsea.com> to provide e-mail addresses for Navy contractors’ personnel, allowing them a distinctive e-mail address separate from the <navy.mil>.  <navsea.com> would additionally provide tertiary level domain opportunities for contractors.  For example, Respondent’s plan includes the possibility of using tertiary level domain such as <XYZ.NAVSEA.com> for all of the company XYZ’s business related to NAVSEA.  All of these services would be on a server totally independent from the “.mil” network.

            7.         The reason that the Respondent’s plans have not been fully developed and implemented is that the Respondent has not yet retired from his current employment and wishes to have no apparent conflict of interest.  Permission was granted by his employer to engage in his proposed business on retirement, and the current use has been limited.

            8.         Although Complainant asserts that Respondent is intentionally attracting, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark, this is not so because the reference to “attracting for commercial gain” in the UDRP is for the purpose of permitting the transfer of a domain name if the domain name is being used to attract Internet users by creating a likelihood of confusion with a trademark for the purpose of drawing business from the owner of the trademark.  In the instant case, the Respondent is not engaged in that activity.  Respondent’s business plan is to offer e-mail addresses to non-governmental entities and individuals for non-governmental purposes.  This is not a business activity of the Complainant.  Consequently, Internet users are not being attracted for this prohibited type of activity.  Respondent’s services are markedly different from those provided by the Complainant.  The Complainant does not provide any personal e-mail services to its employees.  Complainant monitors e-mail on “.mil” sites to prevent personal use.  Respondent’s private e-mail services in no way overlap those provided by the Complainant.  Current Navy instructions specifically require that any <NAVY.mil> address used by contractor personnel clearly identify the person as being a contractor in the e-mail address, e.g., john.doe.contractor@hg.navy.mil.

            9.         Complainant asserts that Respondent was aware of Complainant’s alleged trademark rights prior to registering the domain name and that shows bad faith.  This is not so because Complainant has not conclusively proven that Complainant did, in fact, have common law trademark rights prior to Respondent’s registration.  Consequently, since there were no trademark rights at the time of Respondent’s registration, this argument fails to prove that Respondent has registered and has used the domain name in bad faith.

            10.       Complainant asserts that there was a demonstration of bad faith when a “for sale” designation was put on a couple of domain names.  This is not so because there are legitimate circumstances, such as the attempt to raise capital, for a Respondent to consider selling a domain name.

            11.       Complainant asserts that Respondent registered the domain name in order to prevent Complainant from reflecting the alleged mark in a corresponding domain name.  This is not the purpose and intent of Respondent.

            12.       Although Respondent does not have the burden of proof in this matter, none of the circumstances set forth in the Policy Section 4(b) are present, as follows:

(a)        Neither Respondent, his company, his business activities nor any of his associates have had any intent for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark/service mark.

                        (b)        Neither Respondent, his company, his business activities nor any of his associates have registered or acquired the domain names in question for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is alleged to be the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

                        (c)         Neither Respondent, his company, his business activities nor any of his associates have registered the domain name in question in order to prevent the owner of any trademark or service mark from reflecting the mark in a corresponding domain name (and neither he, his company, his business activities nor any of his business associates have engaged in a pattern of such conduct).

                        (d)        Neither Respondent, his company, his business activities nor any of his associates have registered the domain name for the purpose of disrupting the business of Complainant or any competitor.

(e)        By using the domain names in question, neither Respondent, his company, his business activities nor any of his associates have attempted to attract, for commercial gain, Internet users to their websites or other on-line location, by creating a likelihood of confusion with any alleged mark as to the source, sponsorship, affiliation, or endorsement of a website or location or of a product or service on a website or location.  Respondent points out that the website contains a clear, prominent disclaimer explaining that the site is not the official U.S. government site.

                        There has been absolutely no evidence presented by Complainant before the Panel to show one of the circumstances set out above or any other circumstance of bad faith.  The Complainant has therefore failed to establish this element.

In the instant case there has not been any conclusive evidence presented by Complainant to show one of the listed circumstances or any other circumstance of bad faith.  Therefore, the Complainant has failed to establish this required element.  Complainant has failed to prove that there was bad faith both at the time of registration and in the current use of the domain names.

Since Complainant has failed to prove the element of bad faith, Complainant’s request for the transfer of the domain name should, therefore, be denied.

C. Complainant’s Additional Submission[2]

            1.         Respondent’s registration of the disputed domain names was clearly abusive, and that Complainant is entitled to relief under the UDRP Policy.  It is clear that Respondent knew of Complainant’s rights in the NAVSEA mark; that Respondent intends to capitalize on the fame of the mark; and that the relevant public will be confused by Respondent’s ongoing use of the mark in the disputed domain names.

            2.         The burden of proof is “preponderance of the evidence.”  Conclusive proof is not required.

            3.         Complainant has provided documentary proof of ownership of two federal trademark registrations that are identical to the disputed domain names.  Further, Complainant has provided sworn affidavits by senior NAVSEA officials, averting personal knowledge of Complainant’s continuous use of the NAVSEA mark in interstate commerce since 1981 and on the Internet since at least 1994.  Thus, documentary evidence submitted by Complainant meets the preponderance standard of proof, establishing common law rights.

            4.         Respondent is incorrect in asserting that “[t]he word NAVSEA is only recognized by a very limited audience throughout the world.”  According to Respondent’s own evidence, Complainant accounts for over 70% of the national shipbuilding revenues and 95% of the revenues of the “Big Six” shipyards.  Indeed, Complainant provided over $7 billion dollars worth of construction and maintenance and modernization contracts to the U.S. shipbuilding industry in 2001.

            5.         Respondent is not commonly known by the disputed domain names and its offered services confusingly overlap the same services provided by Complainant.  Respondent admits targeting its business efforts at NAVSEA employees and Navy contractors.  It has chosen not to use its registered business name NAVYWEB, but instead uses Complainant’s federally registered mark without permission.  Complainant asserts that the purpose of this strategy is obvious:  Respondent is attempting to attract NAVSEA and Navy customers to the disputed domain names by capitalizing on the recognition and fame of Complainant’s mark.

            6.         Despite Respondent’s efforts to imply that it had permission to use Complainant’s mark in a business enterprise, the only permission Mr. Breece received was general permission to carry on an outside web server business.  This does not give rise to a legitimate business use of Complainant’s mark by Respondent.

            7.         Respondent states that its business plans are to provide e-mail addresses to NAVSEA employees and contractors, thereby “[a]llowing them a distinctive e-mail address separate from navy.mil.”  Respondent’s e-mail addresses, however, will not be “distinctive” from those offered to the same consumers by Complainant, since Respondent’s e-mail addresses incorporate Complainant’s mark in its entirety. In other words, Respondent’s e-mail addresses look confusingly similar to those provided by Complainant to the same consumers since at least 1994.  Thus, Respondent’s e-mail service confusingly overlaps with Complainant’s e-mail service because both use Complainant’s federally registered mark as part of their respective e-mail addressing system and both target the same set of consumers.

            8.         It follows that Respondent, who is registered to operate NAVYWEB as a for-profit business, registered and is using the disputed domain names in bad faith by buying up domain names that have long-standing, ubiquitous source-indicating significance to the public as trademarks of the military departments of the United States of America.  In particular, Respondent’s use and public offers for sale of domain names including Complainant’s mark will confuse the relevant public and trade off the strength of Complainant’s long-standing and significant rights in the mark.  Therefore, the domain names were registered and are being used in bad faith by Respondent.

D.  Respondent’s Additional Submission

            1.         Complainant obtained a trademark registration on February 27, 2001.  Respondent registered the domains on October 9, 1998 – substantially earlier than Complainant’s application for a trademark.  Complainant then proceeds to attempt to prove that common law trademark rights were acquired prior to Respondent’s registration.  This is a complex issue which involves factual determinations and determinations of law – which are beyond the proper scope of the UDRP arbitration process.  Complex factual determinations such as this are typically subject to extensive fact-finding processes, discovery procedures, rules of evidence, and jury determinations.  The UDRP process is designed and intended to deal only with simple, clear abuses and not complex determinations as presented in this domain name dispute.

            2.         Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain names.  Complainant has failed in sustaining its burden of proof.  Furthermore, although Respondent does not have the burden of proving that it does have legitimate rights in the domain names, it has provided substantial evidence, legal rationale, and case law support to prove that Respondent does, in fact, have legitimate rights in the domain names.

            3.         The Uniform Domain Name Dispute Policy requires that Complainant must prove bad faith both at the time of registration and in the current use of the domain name.  A close examination of Complainant’s filing does not provide adequate proof or evidence to support the allegation that Respondent acted in bad faith – both at the time of registration and in the current use of the domain name.

                        Complainant focuses on the one issue when it states that “Complainant [sic] is intentionally attracting, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with Complainant’s mark.”

                        Even if proven, the alleged activity is only one bit of evidence that may indicate that Respondent has acted in bad faith.  The UDRP provides that:

Evidence of Registration and Use in Bad Faith.  For the purpose of Paragraph 4(a)(iii), the following circumstances, in particular but with out limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The UDRP does not provide that any one circumstance is proof of bad faith.  It only states that each circumstance will provide some evidence of bad faith.

            4.         Whether Complainant had trademark rights at the time Respondent registered the disputed domain names is a complex issue beyond the proper scope of the UDRP.

            5.         Complainant has not proved that Respondent had no legitimate interest or rights in the disputed domain names and, in fact, has conceded that Respondent does have such rights and a legitimate interest in the names.

            6.         Complainant charges that Respondent is creating a likelihood of confusion with its marks.  If proven, this is only one bit of evidence that may indicate that Respondent has acted in bad faith.

FINDINGS AND CONCLUSIONS

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

      It is evident that the disputed domain names are identical and confusingly similar to Complainant’s name.

      Respondent contends, however, that it registered the disputed domain names prior to Complainant’s registration of its mark in the United States Patent and Trademark Office.

      Respondent cannot prevail on its contention.  This is because Complainant could and did acquire common law trademark rights based on its use of the name since 1981.  It is the actual use that creates legal rights to the mark, not a race to the Patent and Trademark Office.  (See, 4 McCarthy, Trademarks and Unfair Competition (updated 2000) §25:74.2; See Also Passion Group, Inc. v. Usearch, Inc. (eResolution Aug. 10, 2000)  (Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant).[3]

      The name “NAVSEA” is not generic, but very specific, and, if it were not, it would have no value to Respondent as a domain name.[4]

Rights or Legitimate Interests

      As will be seen, the Panel has found that Respondent registered and used the disputed domain names in bad faith. It follows, accordingly, that it has no rights or a legitimate interest in the disputed domain names.

      Respondent is using <navsea.com> and <navsea.org> in order to sell vanity e-mail addresses. It is not generally unlawful to conduct an e-mail service (except in instances like here), but Respondent would not have registered the disputed domain names but for the obvious connection they have with the Complainant and its operations.  Were it not for the well-known abbreviated name for the government agency, the registration and use of these domains would be valueless as an e-mail service to both the Respondent and his customers.  It is not the same at all as the use of a common surname for e-mail businesses, where the purpose is for people with the same name to have a shared domain.  Nor is it like the case of using a common collective term, such as <collies.com> for e-mail accounts for a class of dog fanciers.  Here, the Panel finds that Respondent registered and uses the domain names solely because of their clear and obvious connection with the operations of the specific government agency holding the trademark.

Registration and Use in Bad Faith

      Whether Respondent registered and used the disputed domain names in bad faith are crucial issues in this domain name dispute.

      The Panel finds that Respondent, an employee of the United States Navy, was on notice as to Complainant’s rights in the NAVSEA mark when it registered the disputed domain names.  The registration of a domain name despite actual or constructive notice of Complainant’s mark is evidence of bad faith.[5]

      The registration of domain names, by former employees (and, presumably, current employees), which contain the trademarks of their employers is evidence of bad faith.[6]

      Respondent was fully aware when he registered the disputed domain names that the Navy had this long-standing agency name and its association in the minds of the public or least the people working with or in that agency.  He registered the disputed domain names solely because he felt he could create a business that made use of the trademark of another and the association of these domains had with the agency.  Respondent’s own arguments about the purpose of the business and his selection and solicitation of people who want to be associated with the agency and its business, establish this.  Thus, it follows that Respondent has no legitimate interests in the domain names and that he registered them in bad faith in an attempt to trade on the value of the mark.

      The Panel also finds that the use Respondent is making and intends to make is in bad faith.  Respondent contends he does not have his business fully going and that he has invested much in preparation for the operation when he retires, but the fact remains, he is, and the Panel finds that he is, soliciting the use of the domain for e-mails by people who want to indirectly advertise that they are associated with NAVSEA in some way, either as a former employee or a present one or a present contractor.

      Moreover, the intended use of Complainant’s mark clearly is not a transformative nominative, or descriptive use of the mark.

      In Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) [1999] USCA9 225; 174 F.3d 1036, 1065-1066, it is said:

“Contrary to West Coast’s contentions, we are not in any way restricting West Coast’s right to use terms in a manner which would constitute fair use under the Lanham Act.  See New Kids on the Block v. News Amer. Publ’g, Inc., [1992] USCA9 2148; 971 F2d 302, 306-09 (9th Cir. 1992); see also August Storck K.G. v. Nabisco, Inc., [1995] USCA7 709; 59 F.3d 616, 617-18 (7th Cir. 1995).  It is well established that the Lanham Act does not prevent one from using a competitor’s mark truthfully to identify the competitor’s goods, see, e.g., Smith v. Chanel, Inc., 402 F.2d 562, 563 (9th Cir. 1968) (stating that a copyist may use the originator’s mark to identify the product that it has copied), or in comparative advertisements, see New Kids on the Block, 971 F.2d at 306-09.  This fair use doctrine applies in cyberspace as it does in the real world.  See Radio Channel Networks, Inc. v. Broadcast.Com, Inc., No. 98-4799, 1999 WL 124455, at *5-*6 (S.D.N.Y. Mar. 8, 1999);  Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998); Welles, 7 F.Supp.2d at 1103-04; Patmont Motor Werks, Inc. v. Gateway Marine, Inc., No. 96-2703, 1997 WL 811770, at *3-*4 & n. 6 (N.D. Cal. Dec. 18, 1997); see also Universal Tel-A-Talk, 1998 WL 767440, at *9.

In Welles, the case most on point, Playboy sought to enjoin former Playmate of the Year Terri Welles (“Welles”) from using “Playmate” or “Playboy” on her website featuring photographs of herself.  See 7 F.Supp.2d at 1100.  Welle’s website advertised the fact that she was a former Playmate of the Year, but minimized the use of Playboy’s marks’ it also contained numerous disclaimers stating that her site was neither endorsed by nor affiliated with Playboy.  The district court found that Welles was using “Playboy” and “Playmate” not as trademarks, but rather as descriptive terms fairly and accurately describing her web page, and that her use of “Playboy” and “Playmate” in her website’s metatags was a permissible, good faith attempt to index the content of her website.  It accordingly concluded that her use was permissible under the trademark laws.  See id. At 1103-04.”

      Obviously Respondent’s use of Complainant’s mark is not such a use.

      Respondent has argued both that the use of the mark has to be for-profit or in connection with a business, and that the scope of the businesses of Respondent and the Complainant are not in conflict.  Neither element is a requirement of trademark law, which only requires a commercial use, nor of the ICANN Policies and Rules.  Here, the ICANN issues are simply whether the Panel can find sufficient evidence in that presented by Complainant to find that Respondent registered the domain names and is using the domain names in bad faith, since the marks are essentially the same and Respondent is using the mark as a domain solely because of its reference to the trademark owner which provides commercial value to his operations.

      But, says Respondent, “I have placed disclaimers on my websites.”

      Such disclaimers are not sufficient to prevent initial interest confusion in cases such as this.  (See Madonna v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (citing Brookfield Comm., Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) [1999] USCA9 225; 174 F.3d 1036, “[r]espondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”).[7]

      It is to be noted in conclusion that Respondent has cited to decisions or dissents written by one of the Panelists herein.  The principles set forth therein are sound, but they are not applicable here.  This is because this case has a unique set of facts that were not present in those cases.  The sole and only value of the disputed domain names to Respondent is because of their association with Complainant and its operations.  In the Crew case,[8] for example, the purpose was to have a boating site, not to sell clothing, and this is so in many other of the cases which Respondent tries to use to defend his position.  It is only when a non-trademark use is made, that does not depend for its value on the existence of the trademark, that it is appropriate to use a trademark as another’s domain.

DECISION

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the following domain names registered by Respondent NAVWEB, shall be and the same are, transferred to Complainant United States Department of the Navy, NAVSEA:

<NAVSEA.com>

<NAVSEA.org>

<NAVSEA.net>.

                                                CAROLYN M. JOHNSON                                        G. GERVAISE DAVIS III

                                                            Panelist                                                                       Panelist

IRVING H. PERLUSS, (Presiding) Panelist
Dated:

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