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Action Adventure Travel, Inc. v. Island Adventure Tours [2004] GENDND 1135 (12 August 2004)

1. The Parties

The Complainant is Action Adventure Travel, Inc., Chandler, Arizona, United States of America, represented by Brad Mainland, United States of America.

The Respondent is Island Adventure Tours, Seattle, Washington, United States of America, represented by Brian Yesland, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <actionadventuretours.com>, registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2004. On June 15, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name(s) at issue. On June 17, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a modified Complaint on June 23, 2004. The Center verified that the modified Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2004. The Response was filed with the Center on July 17, 2004.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on July 29, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The parties in this dispute are tour operators serving the island paradise of Maui, Hawaii. Each party offers kayaking tours in the cerulean waters surrounding the island. Complainant has filed an application to register the name ACTION ADVENTURE TOURS with the U.S. Trademark Office. That application was filed on January 19, 2004, claiming a date of first use in commerce of October 1, 2003. The application has not yet issued as a registration; indeed, an Office Action was issued by the U.S. Trademark Office on August 9, 2004, after the parties submitted their briefs in this proceeding.

5. Parties’ Contentions

A. Complainant

Complainant contends that ACTION ADVENTURE TOURS is a federally registered trademark of Complainant for guided tours, and that the domain name <actionadventuretours.com> is simply Complainant’s registered trademark ACTION ADVENTURE TOURS with .com added to the end.

Complainant asserts Respondent registered the domain name <actionadventuretours.com> approximately nine days after Complainant opened its doors for business and began distributing brochures throughout Maui. Complainant asserts it was already engaged in offering kayak tours on Maui at that time, and Respondent also offered such tours on Maui.

Complainant asserts that the domain name was registered in bad faith because Respondent registered the domain name nine days after Complainant opened its doors for business under the name Action Adventure Tours and began distributing its brochures. Complainant asserts that Respondent has no legitimate interest in the domain name because Respondent prominently uses the name Kelii’s Kayak Tours on the website linked to the domain name <actionadventuretours.com>. Complainant asserts that Respondent offers no tours under the name Action Adventure Tours and has no relationship to Complainant.

Complainant asserts that Respondent is only using the domain name <actionadventuretours.com> to confuse customers who have heard of or seen advertisements for Complainant’s business.

Complainant asserts he had a telephone conversation with a principal for Respondent, who expressed no interest in transferring the domain name to Complainant, as it was “useful” to Respondent.

B. Respondent

Respondent asserts that it was registered to do business in Hawaii on March 25, 2002. Respondent has conducted business continually since that time under the names Island Adventure Tours and Kelii’s Kayak Tours. Respondent asserts that it has been using those names for nearly two years prior to the inception of Complainant or Complainant’s use of the trade name ACTION ADVENTURE TOURS.

Respondent asserts that it maintains multiple domain names to promote its business, including <actionadventuretours.com>. Respondent asserts it registered this domain name “with the intent of having a domain name that contained a significant part of the company’s name (Adventure Tours) and one that the company can use to describe its broadening product offerings that fall under the description of “adventure tours” including kayaking.” Respondent asserted that it performed “due diligence” on the disputed domain name and there was no record at the time of ACTION ADVENTURE TOURS being filed as a trade name in Hawaii or as a federally protected service mark.

Respondent asserts that Action Adventure Tours is a generic phrase “in that there are currently dozens of companies doing business in Hawaii and hundreds more worldwide, where a significant portion of the company name incorporate the term ‘adventure tours’ or ‘action adventure’.” Respondent asserts that “adventure tours” and “action adventure tours” are often used simply to describe the services of parties offering these types of travel services. Respondent provided no evidence of such third-party uses.

Respondent asserts that Complainant had no specific intent to use the disputed domain name at its inception, and that Complainant was deceptive in neglecting to disclose the facts that (1) Complainant did not contact Respondent until May, 2004, well after Respondent began using the domain name to promote its business; (2) Complainant’s owner called Respondent’s manager to ask ‘what would it take to get our domain name back’, when in fact Complainant never has had ownership or documented right to the domain name; and (3) Complainant was incorporated in Arizona under the name Action Adventure Travel, Inc. and filed documents to do business in Hawaii as a foreign corporation under the name Action Adventure Travel, Inc., but filed no documents in either state to do business under Action Adventure Tours until November 13, 2003.

Although Respondent admits Complainant distributed brochures in Maui before Respondent registered its domain name, Respondent asserts that the brochures display the domain name <actionadventuretravel.com>, and that this brochure was designed, printed and distributed when the domain name <actionadventuretours.com> was still available for registration. Respondent asserts this demonstrates that Complainant intended to promote its services using the domain name <actionadventuretravel.com>, not <actionadventuretours.com>. Finally, Respondent asserts that Complainant did not seek to register its trademark ACTION ADVENTURE TOURS until January 19, 2004, after Respondent registered the domain name in question “and had been using it in good faith”.

6. Discussion and Findings

A. Applicable Policy Provisions

The Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Policy, paragraph 4(a)

It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

The Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or

(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

Policy, paragraph 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:

(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

(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Policy, paragraph 4(c).

B. Opinion of the Panel

1. Is the domain name identical or confusingly similar to a trademark in which Complainant has rights?

Respondent’s domain name is clearly identical or confusingly similar to Complainant’s trade name. However, this does not end the inquiry: Complainant must show that its trade name is a “trademark in which Complainant has rights”. The protectability of a term as a trademark depends upon its strength. Trademark strength is measured on a spectrum, from arbitrary marks, which are strongest, to generic terms, which are not protectable as trademarks at all. In between are suggestive terms, which suggest but do not describe the features and characteristics of the product or service, and descriptive terms, which do describe them. See, e.g., Abercrombie & Fitch Company v. Hunting World, Incorporated[1976] USCA2 141; , 189 USPQ 759, 537 F.2d 4, 9 (2d. Cir. 1976). Suggestive terms are protectable immediately upon use; descriptive terms protectable only upon proof that they have acquired distinctiveness. Park' N Fly, Inc. v. Dollar Park and Fly, Inc., [1985] USSC 8; 469 U. S. 189, 194 (1985). Acquisition of distinctiveness is often called “secondary meaning”, because the term at issue acquires a different meaning (ascribing origin to the owner of the mark) from its original, descriptive meaning (describing the features or characteristics of the product or service). Park' N Fly, 469 U. S. at 194, 196.

KODAK is an example of an arbitrary or distinctive mark; ROACH MOTEL, an example of a suggestive mark; THE BEST BEER IN AMERICA an example of a descriptive mark; and ESCALATOR an example of a generic word.

Applying these guidelines to the mark at issue, this Panel finds that Complainant’s phrase Action Adventure Tours, when used in connection with Complainant’s kayaking services, forms a mark which is suggestive but not descriptive. Although the terms “Adventure” and “Tours” arguably both describe the parties’ services, the word “Action” does not directly convey information regarding the nature, function, purpose or use of the services. In re Gyulay, [1987] USCAFED 327; 820 F.2d 1216 (Fed. Cir. 1987). Therefore the mark is not merely descriptive and hence protectable upon use. This Panel notes the U.S. Patent and Trademark Office has registered a mark containing the term “Action” for travel tour services without requiring a disclaimer of the word or a claim of acquired distinctiveness. See U.S. Registration No. 2,225,592 (SWAT SUMMER WINTER ACTION TOURS and Design). This signifies the U.S. Patent and Trademark Office does not consider the term “Action” to be primarily merely descriptive of these services.

The Panel finds the domain name is identical or confusingly similar to a service mark in which Complainant has rights. Complainant has met its burden on the first factor.

2. Does Respondent have no rights or legitimate interest in the domain name?

Complainant has proved that Respondent has no rights or legitimate interest in the domain name. Respondent does not use the name Action Adventure Tours in connection with its kayak tour services, nor does it describe its services using the phrase “action adventure tours”. Respondent’s website and other materials do not include this phrase as a trade name, trademark, service mark or descriptive phrase.

3. Was the domain name registered and used in bad faith?

Likewise, it appears that Complainant has met its burden of showing that the domain name was registered and used in bad faith. The fact that Complainant’s direct competitor registered this domain name within nine days of the time Complainant began publicizing its service is too close for coincidence. Indeed, Respondent acknowledges that Complainant rendered and promoted its services before Respondent registered its domain name. The domain name resolves directly to Respondent’s website, which contains no disclaimer that it is not related to Complainant. Respondent’s website offers services which compete directly with Complainant’s services rendered under its mark. As such, it appears Respondent has registered its domain name in order to prevent Complainant from reflecting its trade name in a corresponding domain name, and is using the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trade name as to the source, sponsorship, affiliation or endorsement of its website. Policy, paragraphs 4(b)(ii) and (iv).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <actionadventuretours.com> be transferred to the Complainant.

Jordan S. Weinstein
Sole Panelist

Dated: August 12, 2004