DECISION

CV Ranch, L.P. v. DefaultData.com a/k/a Brian Wick

Claim Number: FA0212000139595

PARTIES

Complainant is CV Ranch, L.P., Dallas, TX (“Complainant”) represented by Christine L. Lofgren, of Jeffer, Mangels, Butler & Marmaro LLP.  Respondent is DefaultData.com a/k/a Brian Wick, Denver, CO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <carmelvalleyranch.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Irving H. Perluss (Retired) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 23, 2002; the Forum received a hard copy of the Complaint on December 26, 2002.

On January 8, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <carmelvalleyranch.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2003 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@carmelvalleyranch.com by e-mail.

A timely Response was filed electronically, but Respondent’s exhibits were received after the deadline for the Response on January 30, 2003.  The Panelist, in the exercise of his discretion, will consider Respondent’s exhibits.  The Panelist wants all parties to have a fair hearing on the merits.

On February 7, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

            1.            Complainant, C.V. Ranch, L.P., is the owner of the award-winning resort located in Carmel, California known as Carmel Valley Ranch.  Complainant asserts that it has expended substantial resources over the past fifteen years developing the Carmel Valley Ranch name and mark.  Complainant is the holder of U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,002,081 for the Carmel Valley Ranch Resort service mark.  Complainant, on September 25, 2002, requested that its mark be amended to Carmel Valley Ranch.

            2.            The Ranch is situated on a 1700-acre countryside estate in the Saint Lucia Mountains and features a world-renown 18-hole championship golf course.  The Ranch includes 200 homes built around the golf course, a golf club, a tennis club and an elegant main clubhouse with 144 suites for visitors.

            3.            Respondent DefaultData.com a/k/a Brian Wick registered the disputed domain name <carmelvalleyranch.com> on November 19, 2001.

            4.            The disputed domain name is confusingly similar to Complainant’s mark.

            5.            Respondent has no rights or a legitimate interest in the disputed domain name.  The name was registered long after Complainant’s first use of its service mark in June, 1987.

            6.            Respondent cannot defend its registration on the ground of “parody.”  The website at the URL Domain Name includes images of spinning dice, a kangaroo superimposed over the map of Australia, and a miner.  The website includes an elaborate disclaimer claiming that the website is “parody,” however, the website content never mentions Carmel Valley Ranch by name or refers to the resort, and, accordingly, is not parody.

            7.            Respondent has no affiliation with Complainant’s organization or with the Carmel Valley Ranch Mark, and Respondent is not authorized or licensed to make use of the subject mark in connection with any offering or purpose.

            8.            Respondent has registered and has used the domain name in bad faith.  Respondent has demonstrated a pattern of registering infringing domain names.

            9.            Respondent’s website has a disclaimer but the disclaimer does not dispel the initial interest confusion generated by the use of the disputed domain name at issue.  The widespread use of the Carmel Valley Ranch mark by Complainant permits the inference that Respondent was constructively aware of the mark prior to registering the disputed domain name.

B. Respondent

            1.            Respondent, and others, are entitled to use the disputed domain name in the exercise of their First Amendment rights.

            2.            The reason Complainant is amending its mark from “Carmel Valley Ranch Resort” to “Carmel Valley Ranch” is an attempt to gain control of <carmelvalleyranch.com> so they can reduce competition from independent third-party realtors who want to give “Carmel Valley Ranch” geographic subdivision home buyers and sellers more options with whom to negotiate commissions, listing and marketing of their homes, town homes and other properties.  Complainant also seeks to control directory services information and the flow of free speech information and other information within a “Carmel Valley Ranch” homeowners neighborhood association.

            3.            Complainant does not have exclusive rights in the “Carmel Valley Ranch” service mark.

            4.            Carmel Valley is the name of a town and “ranch” is a style of modern-day home, and this use of a geographic location and a generic word warrant a finding of bona fide registration and use by Respondent.

            5.            “Carmel Valley Ranch” also is the name of a horse training and racing business in San Diego, California which operates a website at <CarmelValleyRanch.net>.  This business has no relation to the Complainant and it is not even the same industry as the Complainant, yet both use the same mark.

            6.            Respondent has reserved hundreds of Internet addresses to provide a community information forum, a homeowner’s forum and a vehicle for free property listings for independent realtors and homeowners.

            7.            Complainant has failed to fulfill the burden of establishing Policy Paragraphs 4(a)(i) and (ii); therefore, an analysis under Policy Paragraph 4(a)(iii) is unnecessary.

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

      There can be no question but that the disputed domain name and Complainant’s service marks, as amended, are identical.[1]

Rights or Legitimate Interests

      Whether Respondent has a legitimate interest or rights in the disputed domain name is the crux of this proceeding.

      Apparently, Respondent does not here assert, as he has in other matters, that he has the defense of “parody” in the exercise of his First Amendment rights.[2]

      In any event, Respondent would not prevail, as he has not in other matters, because none of the content on his website mentions or makes reference to Complainant’s mark.[3]

      Here, however, Respondent does claim that the First Amendment protects his rights to the disputed domain name.

      In 1976, the United States Supreme Court did hold that “commercial speech” is within the First Amendment “free speech” clause of the Constitution.[4]  The uses that Respondent proposes for his website are “commercial,” e.g., listings of homes for sale.

      The difficulty with Respondent’s position, however, is that First Amendment protection does not apply to false, misleading or deceptive commercial speech.[5]

      The Panelist has found and has concluded that the disputed domain name is identical to Complainant’s mark, and, thus, it is confusingly similar.  It must follow that the use of the disputed domain name by Respondent would be misleading.

      Thus, Professor McCarthy teaches us that:

“. . . the traditional likelihood of confusion theory will usually insulate the remedy from First Amendment challenge because before remedies can successfully be invoked, the court must find a likelihood of confusion, mistake or deception.  As Judge Kozinski noted, ‘[s]o long as trademark law limits itself to its traditional role of avoiding confusion in the marketplace, there’s little likelihood that free expression will be hindered.’”

“For speech even to come within First Amendment analysis, ‘it at least must concern lawful activity and not be misleading.’  This is a threshold analysis, and if not passed, there need be no balance of governmental policy against the scope of the restraint.”  (Footnote omitted.)[6]

      It is of great interest to read Professor McCarthy’s comment on free speech on the Internet.  He states (McCarthy, supra, Section 31:148.1, p. 31.244.1):

“The concern for accommodating free speech has been extended to the use of the mark of a company that is the target of a critical web site in the domain name or in the metatags of the web site.”

“But domain names are different.  Most cases have held that regardless of free speech principles, a web site containing criticism of a company or an organization cannot be identified by a domain name confusingly similar to the name or trademark of the target group.  The right to disseminate criticism on the Internet cannot trump the public’s right not to be deceived by a confusingly similar domain name.  And the critic has no free speech ‘right’ to confuse web users into thinking they are entering a web site of the target in order to expose them to the defendant’s message of criticism of the target.”  (Footnote omitted.)

      Respondent next agues that Complainant’s mark consists of a geographical term and a generic term and, thus, the mark is available to all who wish to use it.  In addition, he points to a San Diego horse ranch that uses the identical domain name <carmelvalleyranch.com.>.

      With respect to composite geographic marks, Professor McCarthy states:  (McCarthy, supra, Section 14.11, pp. 14.26-27)

“If a geographical term is combined with other elements to form a composite mark, the resulting combination may not have any descriptive connotations.  The total commercial impression created by a composite mark may be merely arbitrary or suggestive even though its separate parts may be geographically descriptive.  The composite may be more than the mere sum of its parts.  The validity of a composite mark must be determined by looking at the mark as a whole.  A composite mark should not be fragmented into its various pieces.  A composite geographical mark should not be dissected into its parts to determine whether it is primarily geographical or not.  It is the likely reaction of customers to the total mark that is at issue.  A composite mark must be considered in its entirety.  For example, the Ninth Circuit analyzed the trademark CALIFORNIA COOLER for a wine-fruit juice as a composite of a geographically descriptive term and a generic term.  Applying the rule that validity is to be determined by viewing the composite as a whole, the court concluded that the composite could become a distinguishing mark even if its individual components could not.  Similarly, the combination WASHINGTON SPEAKERS BUREAU for a lecture agency in Washington, D.C. was found to be a descriptive combination:  ‘[The] addition of “Washington” to the phrase “Speaker’s Bureau” converts the generic term to a descriptive mark.’”  (Footnotes omitted.)

      The Panelist finds and concludes, accordingly, that Complainant’s mark is a descriptive mark.  This conclusion is buttressed by the presumption that the name is not generic when a mark, as here, is registered in the United States Patent and Trademark Office.[7]

      With respect to the San Diego horse farm and the domain name <carmelvalleyranch.com>, such utilization is not relevant in this proceeding.  In MGM-Pathe Communications v. Pink Panther Patrol (S.D.N.Y. 1991) 774 F.Supp. 869, 873, it was said:  “. . . the Patrol contends that another registered trademark for the words ‘pink panther’ exists, and at least 15 other establishments, including a bar and a liquor store, use the Pink Panther name.  These arguments are unavailing. . . .  The fact that there are other establishments that use the name Pink Panther does not contradict the harm suffered by MGM from the Patrol’s use of the mark.”

      But argues Respondent, “I have placed a disclaimer on my web site.”  This, however, is 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. (9^th 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.”)

      The ultimate finding and conclusion is that Respondent does not have a legitimate interest or rights in the disputed domain name.

Registration and Use in Bad Faith

      The Panelist finds and concludes that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy Paragraph 4(b)(ii).  Respondent has demonstrated a pattern of registering infringing domain names; thus, fulfilling the requirements of the Policy.[8]

      The Panelist also finds and concludes that Respondent was fully aware and was on actual notice of Complainant’s rights in its mark when he registered the disputed domain name.  The registration of a domain name despite actual or constructive notice of Complainant’s mark is evidence of bad faith.[9]

DECISION

      Based on the above findings and conclusions and pursuant to Rule 4(i), it is decided that the domain name <carmelvalleyranch.com> registered by Respondent DefaultData.com a/k/a Brian Wick, be and the same is transferred to Complainant C.V. Ranch, L.P.

JUDGE IRVING H. PERUSS (Retired), Panelist
Dated: February 21, 2003

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