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Generic Top Level Domain Name (gTLD) Decisions |
Skate House Ltd. v. Edward Wright
Claim Number: FA0210000128795
PARTIES
Complainant
is Skate House Ltd., Portland, OR
(“Complainant”) represented by Gary H.
Lau, of Stoel Rives LLP. Respondent is Edward Wright, Atlanta, GA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <skatehouse.com>,
registered with Enom.
PANEL
The
undersigned certify 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.
Hon.
Ralph Yachnin, Alan L. Limbury and David P. Miranda, Chair.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on October 30, 2002; the Forum received
a hard copy of the Complaint on October
31, 2002.
On
November 1, 2002, Enom confirmed by e-mail to the Forum that the domain name <skatehouse.com> is registered
with Enom and that the Respondent is the current registrant of the name. Enom has verified that Respondent is bound
by the Enom 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
November 1, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 21, 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@skatehouse.com by
e-mail.
A
timely Response was received and determined to be complete on November 27, 2002.
Complainant’s
additional submission was received on November 27, 2002.
On December 19, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Hon. Ralph
Yachnin, Alan L. Limbury and David P. Miranda, Chair, as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that it has developed common law trademark rights to the marks SKATE
HOUSE and SK8HOUSE.COM based upon extensive
advertising and use since 1995 with
respect to its retail services for the sale of in-line skates and related
accessories. Complainant contends that
Respondent Wright has registered and is using the domain name <skatehouse.com>
in bad faith. Visitors to the <skatehouse.com>
domain are redirected to a commercial website belonging to one of Complainant’s
largest competitors, Skatepile, LLC.
B.
Respondent
Respondent
contends that Complainant has no enforceable rights under the Policy because
the term “SKATE HOUSE” is a common descriptive
generic term, which is the
subject of substantial third party use and was in existence before Complainant
began using it. Respondent contends
that it has a legitimate interest in the disputed domain name having registered
it in connection with its plan
for a website for products, services and
information related to the field of in-line skating. Its use of the domain name, in connection with redirection to a
third party generates advertising revenue, constitutes use in connection
with a
bona fide offering of goods or services.
C.
Additional Submissions
Complainant’s
Supplemental filing is considered by the majority of the Panel, however, one
panelist objected to the additional submission
being in violation of UDRP
rules, limiting additional submissions to those sought by the panel. Am. Online v. Miles, FA 105890 (Nat.
Arb. Forum May 31, 2002).
The Panel finds that Complainant has
common law trademark rights to SK8HOUSE.COM and the domain name <skatehouse.com> is confusingly
similar to Complainant’s mark.
Complainant has established that Respondent has no rights or legitimate
interests in the domain name <skatehouse.com> and has registered
and is using that domain name in bad faith, thus warranting the transfer of the
domain name to Complainant.
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
Complainant
asserts that it has trademark rights in SKATE HOUSE and SK8HOUSE.COM. Complainant has submitted evidence of its
use of the marks in various advertisements and mail order services, as well as
its online
store located at <sk8house.com>. Although Complainant has applied for a service mark for SKATE
HOUSE with the United States Patent and Trademark Office (Ser. No. 78,138,329),
the application provides Complainant with no additional rights. Complainant uses its asserted marks in
relation to the sale of in-line skates, skate accessories, protective gear, clothing
and skate
media. Complainant has used
the marks in relation to its retail services since 1995.
The
Panel finds that although the term SKATE HOUSE may be merely descriptive with
respect to products, services and information related
to in-line skating, Complainant also claims common law rights to
SK8HOUSE.COM and has submitted proof of use of that mark in advertising as the
source
of Complainant’s goods and services.
Respondent’s arguments and submissions are directed solely to
Complainant’s SKATE HOUSE mark and Respondent does not direct any submissions
contrary to Complainant’s claim to the asserted SK8HOUSE.COM mark. In fact Respondent’s Response, at page two,
indicates an acceptance that “sk8” refers to Complainant.
Complainant has submitted sufficient
evidence to establish that it has common law trademark rights in
SK8HOUSE.COM. The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the Complainant
has rights’ means that ownership of a
registered mark is not required, unregistered or common law trademark or
service mark rights
will suffice” to support a domain name Complaint under the
Policy. McCarthy on Trademarks and
Unfair Competition, § 25:74.2, Vol.4 (2000).
The Panel finds that the domain name in
question, <skatehouse.com>, is confusingly similar to
Complainant’s common law trademark SK8HOUSE.COM.
Rights or Legitimate Interests
Complainant
asserts that Respondent is using the disputed domain name in order to redirect
Internet users to a website that competes
with Complainant’s goods and
services. Complainant has submitted
evidence that its competitor “Skatepile” pays Respondent to use the <skatehouse.com>
domain name to divert Internet users to Skatepile’s website. Respondent is using the disputed domain name
for no purpose other than to redirect Internet users to a competitor of
Complainant,
and is not using the disputed domain name in connection with a
bona fide offering of goods or services under Policy ¶ 4(c)(i), or
a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet
traffic is not a legitimate use of the
domain name); see also Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally
and misleadingly diverting users away from Complainant’s site to
a competing website).
Furthermore,
Respondent is not commonly known as <skatehouse.com> or SKATE
HOUSE because it is not using the mark to identify itself or any good or
service, and therefore Respondent has no rights
or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Nokia Corp. v.
Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000)
(finding that Respondent has no rights or legitimate interests in the
<nokiagirls.com> domain
name because there was no element on the website
that would justify use of the word NOKIA within the domain name); see also
Hartford Fire Ins. Co. v. Webdeal.com,
Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has
no rights or legitimate interests in domain names because
it is not commonly
known by Complainant’s marks and Respondent has not used the domain names in
connection with a bona fide offering
of goods and services or for a legitimate
noncommercial or fair use).
Respondent’s claim that its “mere intent
to publish” at some future date an online portal for in-line skating
establishes its legitimate
interest in the domain. This proposition is rejected as Respondent has not submitted any
proof of use of or demonstrable preparations to use the domain name
in this
manner, as required pursuant to Policy ¶ (4)(c)(i). The fact that Respondent is generating revenue from the
redirection of the domain name to a competitor of Complainant is not a legitimate
business purpose, but rather the type of conduct that the ICANN Policy is
intended to prevent.
Registration and Use in Bad Faith
Complainant asserts that Respondent
registered and used the disputed domain name in bad faith because it is using
<skatehouse.com> to deliberately attract and divert Internet users
to a website that competes with Complainant’s business. Complainant has submitted evidence and
Respondent admits it is being paid by Skatepile, Complainant’s competitor, to
use the disputed
domain name for this very purpose. Therefore, Respondent is using the disputed domain name to create
a likelihood of confusion for Respondent’s commercial gain which
is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where Respondent used the domain name, for commercial
gain, to intentionally
attract users to a direct competitor of Complainant).
Complainant further asserts that
Respondent is using the disputed domain name in order to disrupt Complainant’s
business by diverting
Internet users looking for Complainant at <skatehouse.com>
to Complainant’s competitor, Skatepile.
This behavior is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000)
(finding bad faith where the Respondent, a company financially linked to the
Complainant’s main
competitor, registered and used the domain name in question
to disrupt the Complainant’s business).
Furthermore, Complainant notes that
Respondent attempted to sell the disputed domain name to Complainant for
$20,000, a cost far exceeding
out-of-pocket expenses. This is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Matmut v. Tweed, D2000-1183 (WIPO Nov.
27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent
stated in communication with
Complainant, “if you are interested in buying this
domain name, we would be ready to sell it for $10,000”).
DECISION
The Panel determines that the domain name
<skatehouse.com> shall be TRANSFERRED
to Complainant. Respondent, Wright, and
Registrar ENOM, is ordered and directed to TRANSFER <skatehouse.com> to Complainant, Skate House Ltd.
Hon. Ralph Yachnin,
Alan L. Limbury and
David P. Miranda, Chair
Panel
Dated: January 3, 2003
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