DECISION

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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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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