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Generic Top Level Domain Name (gTLD) Decisions |
MarineSource Network, Inc. v. World
Publications, LLC
Claim Number: FA0408000309925
PARTIES
Complainant
is MarineSource Network, Inc. (“Complainant”),
represented by Karl S. Kronenberger of Kronenberger & Associates, 220 Montgomery Street, Suite 1920, San Francisco, CA 94104. Respondent is World Publications, LLC (“Respondent”), 460 N. Orlando Ave., Winter
Park, FL 32751.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <marinesourse.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.
David
S. Safran as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 6, 2004; the Forum received
a hard copy of the
Complaint on August 11, 2004.
On
August 13, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <marinesourse.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
August 13, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
2, 2004 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@marinesourse.com by e-mail.
A
timely Response was received and determined to be complete on September 1, 2004.
On September 10, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David S. Safran 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 acquired common law rights in the MarineSource mark
through 12 years of use of the mark and that,
as a result, the mark has become
associated with Complainant.
Complainant further contends that the <marinesourse.com> domain name is confusingly similar to
Complainant’s MarineSource mark, is being used for competing services and has
led to actual
confusion, and that Respondent has no legitimate rights in the
domain name, which was registered and is being used in bad faith since
the
domain name was registered with knowledge of Complainant’s mark and a dispute
between the parties. Complainant claims
that this is a case of “typosquatting” solely for the purpose of diverting
potential clients from Complainant’s
website to Respondent’s website.
B.
Respondent
Respondent
has not contested any of the Complainant’s positions and has offered to
voluntarily transfer the domain to Complainant.
FINDINGS
Complainant has acquired rights in the
MarineSource mark through substantial use in the relevant trade for over a
decade, and Respondent’s
registered <marinesourse.com>
domain name is confusingly
similar to Complainant’s domain and likely to cause confusion and diversion of
potential clients from Complainant’s
website, <marinesource.com>.
Respondent registered the <marinesourse.com>
domain name with knowledge of Complainant’s mark and a dispute between the
parties, and has no apparent interest in the domain name
other than to acquire
traffic intended for Complainant, but diverted due to an incorrect spelling
during entry of the URL into the
browser address field area.
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.
Complainant asserts, and it is not contested by Respondent, that it has
established common law rights in the MarineSource
mark through secondary meaning. Complainant argues that it has used its mark
continuously and extensively in commerce since 1992 in association with its
online boating
sales business and that it has invested significant time and
money in promoting its business under the MarineSource mark.
Furthermore, Complainant contends that it is the only company that
identifies itself and its products and services by MarineSource and that it uses the mark on letterhead,
sales and marketing materials, contracts and business cards. Therefore, the Panel finds that Complainant
has rights in the mark through secondary meaning associating Complainant and
its mark
as the source of Complainant’s products and services. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary
meaning was established); see also S.A. Bendheim Co.,
Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding
that Complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection
with its banking business, it has
acquired rights under the common law.”).
Complainant
argues that the <marinesourse.com>
domain name registered by
Respondent is confusingly similar to Complainant’s MarineSource mark because the domain name incorporates
Complainant’s mark, merely replacing the letter “c” with the letter “s,” which
constitutes
a common misspelling of the word “source.” The Panel finds that the misspelling of
Complainant’s mark is insufficient to negate the confusing similarity of the
domain name. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency
to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Toronto-Dominion Bank v.
Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> are virtually
identical to
Complainant’s TD WATERHOUSE name and mark).
Complainant argues that Respondent is not commonly
known by the <marinesourse.com> domain name
and was denied permission or license by Complainant to use the MarineSource mark. Therefore, the Panel
determines that Respondent lacks rights and legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark
and never applied
for a license or permission from Complainant to use the trademarked name); see
also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb.
20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable
phrase” in finding that Respondent was not “commonly known by”
the name GIRLS
GON WILD or <girlsgonwild.com>).
Complainant
contends that Respondent is a direct competitor of Complainant and that
Respondent is using the <marinesourse.com> domain name to redirect Internet users to a
website that allows users to search for boats at Respondent’s
<usedboats.com> domain
name. The
Panel finds that Respondent’s use of a domain name confusingly similar to
Complainant’s MarineSource mark
to redirect Internet users interested in Complainant’s products and services to
a commercial website that offers identical goods
and services as Complainant is
not a use in connection with a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s
mark to market products that
compete with Complainant’s goods does not
constitute a bona fide offering of goods and services); see also Clear
Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum
Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no
rights or legitimate interests
in a domain name that utilized Complainant’s
mark for its competing website); see also Avery Dennison
Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10, 2003) (finding that Respondent
had no rights or legitimate interests in the disputed domain name where
it used
Complainant’s mark, without authorization, to attract Internet users to its
business, which competed with Complainant).
Finally,
the Panel notes that, once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion
because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate
interests in the
domain name). Here, Respondent has made
no attempt to meet this burden.
Complainant
argues that Respondent registered the <marinesourse.com> domain name with knowledge of Complainant’s
rights in the mark and with the knowledge that it is a direct competitor of
Complainant. Thus, the Panel has
determined that Respondent registered the disputed domain name for the primary
purpose of disrupting the business
of a competitor and that this 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 EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered
the names primarily for the purpose of disrupting Complainant's
business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation
of Policy
¶ 4(b)(iii)).
The Panel also
finds that Respondent intentionally registered the <marinesourse.com>
domain name, containing a typographic misspelling of Complainant’s
MarineSource mark, and did so for Respondent’s commercial gain. Complainant further asserts that
Respondent’s domain name diverts Internet users who seek Complainant’s
MarineSource mark to Respondent’s
commercial website through the use of a
domain name that is confusingly similar to Complainant’s mark. Furthermore, Complainant claims that
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s
MarineSource mark. The Panel may find that Respondent’s practice of diversion,
motivated by commercial gain, constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where
similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or
is sponsoring the services offered at the
site); see also Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent
intentionally attempted to attract Internet users to his website for commercial
gain by creating a likelihood of confusion with Complainant’s mark and offering
the same chat services via his website as Complainant);
see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged
in bad faith use and registration by linking the
domain name to a website that
offers services similar to Complainant’s services, intentionally attempting to
attract, for commercial
gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s marks).
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of a domain name,
the Panel may consider additional
factors in determining if there is bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Complainant
argues that Respondent had actual or constructive knowledge of Complainant’s
mark, as evidenced by the fact that Respondent
contacted Complainant for
permission to enlist Complainant’s participation in a general online directory
of boats and yachts that
Respondent intended to develop. Furthermore, Complainant claims that
Complainant and Respondent are competitors in the online boating sales
industry. The Panel finds that
Respondent’s registration of a domain name confusingly similar to Complainant’s
MarineSource mark, despite knowledge
of the mark holder’s rights, is evidence
of bad faith registration and use. See
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir.
2002) (finding that "[w]here an alleged infringer chooses a mark he knows
to be similar to another, one can infer an
intent to confuse"); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly
known mark at
the time of registration); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between
Complainant’s mark and the content advertised on Respondent’s
website was
obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marinesourse.com>
domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: September 24, 2004
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