DECISION

Chattanooga Lookouts Baseball Club v. Cayman Trademark Trust

Claim Number:  FA0408000309920

PARTIES

Complainant is Chattanooga Lookouts Baseball Club (“Complainant”), represented by Ian K. Leavy, of Miller & Martin PLLC, Suite 1000 Volunteer Building, 832 Georgia Avenue, Chattanooga, TN 37402-2289.  Respondent is Cayman Trademark Trust  (“Respondent”), P.O. Box 908, Georgetown, Grand Cayman GT KY.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chattanoogalookouts.com>, registered with Bulkregister, Llc.

PANEL

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

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 9, 2004; the Forum received a hard copy of the Complaint on August 11, 2004.

On August 9, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain name <chattanoogalookouts.com> is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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@chattanoogalookouts.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. 

On September 10, 2004, after the expiration of the response period, the parties submitted a Joint Request to Stay the Administrative Proceeding.  The proceedings were stayed for a period of 20 days.  On September 28, 2004 the stay was lifted and the matter will proceed to decision.

With the lifting of the stay Respondent submitted an untimely response and Complainant submitted an untimely reply.  The Panel, in its discretion, has considered the untimely pleadings.

On September 8, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <chattanoogalookouts.com> domain name is confusingly similar to Complainant’s LOOKOUTS mark.

2. Respondent does not have any rights or legitimate interests in the <chattanoogalookouts.com> domain name.

3. Respondent registered and used the <chattanoogalookouts.com> domain name in bad faith.

B.  Respondent disputes the factual allegations raised in the Complaint; however, consents to an immediate transfer of the domain name <chattanoogalookouts.com>

to Complainant.  Respondent requests the Panel to forego a substantive analysis of the Complaint and dismiss the Complaint and order the transfer.

C.  Complainant requests that the matter proceed to decision. 

FINDINGS

Complainant operates a double-A minor league baseball team called the CHATTANOOGA LOOKOUTS, which has historical ties to Chattanooga, Tennessee dating back to 1885. 

Complainant registered the LOOKOUTS mark with the United States Patent and Trademark Office on May 27, 1997 (Reg. No. 2,065,256) for use in connection with “entertainment services in the nature of baseball games and exhibitions.”   Complainant currently operates a website at the <lookouts.com> domain name, which provides information and services related to the baseball organization. 

Respondent registered the domain name <chattanoogalookouts.com> on July 9, 2001.  Respondent is using the disputed domain name in connection with a generic search engine website.  The majority of the links on the first page of the website involve baseball-related items or baseball-related merchandise.

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

The registration of a mark with an authoritative governmental entity is sufficient under paragraph 4(a)(i) of the Policy to establish rights in a mark.  Complainant registered the LOOKOUTS mark with the United States Patent and Trademark Office in 1997, effectively establishing rights in the mark under the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

In comparing the disputed domain name <chattanoogalookouts.com> with Complainant’s LOOKOUTS mark, it is apparent that the domain name has incorporated Complainant’s mark in its entirety.  Respondent has merely appended the geographic term “Chattanooga” to the LOOKOUTS mark.  As a general rule, a domain name is deemed confusingly similar to a mark if the domain name incorporates a mark in its entirety and merely adds a geographic term.  See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark . . . “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.  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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The disputed domain name is used as a generic search engine website that links to a variety of baseball-related websites.  The evidence before the Panel suggests that the only connection between “Chatanooga Lookouts” and the sport of baseball flows through Complainant.  Therefore, it is highly likely that Respondent uses the domain name <chattanoogalookouts.com> merely to lure potential Internet users interested in Complainant’s baseball organization to the unrelated search engine website.  The Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Bank of Am. Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).

Furthermore, because Respondent is willing to transfer the domain name to Complainant, Respondent has no rights or legitimate interests in the disputed domain name.  See Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name.); see also Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b (eResolution May 25, 2000) (finding that Respondent’s willingness to transfer is evidence of its lack of legitimate rights/interests in the name).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name to host a website that offers links to a variety of commercial websites relating directly to Complainant’s field of business.  The fact that Respondent is using a domain name confusingly similar to Complainant’s LOOKOUTS mark, and has failed to rebut Complainant’s assertions, allows the inference that Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Also, because Respondent is willing to transfer the domain name to Complainant, Respondent registered and/or used the domain name in bad faith.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding Respondent’s willingness to transfer and its failure to develop the site are evidence of its bad faith registration and use); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

Complainant has established Policy ¶ 4(a)(iii).

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 <chattanoogalookouts.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 11, 2004

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