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California Stormwater Quality Association v. Vilma Morales [2004] GENDND 1345 (18 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

California Stormwater Quality Association v. Vilma Morales

Case No. D2004-0617

1. The Parties

The Complainant is California Stormwater Quality Association, Menlo Park, California, United States of America, represented by Baker, Manock & Jensen, United States of America.

The Respondent is Vilma Morales, e:bOOm, S.A., Lisbon, Portugal.

2. The Domain Name and Registrar

The disputed domain name <stormwatertaskforce.org> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2004. On August 6, 2004, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On August 6, 2004 Dotster, Inc. 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. The Center verified that the 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 August 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2004.

The Center appointed David J.A. Cairns as the sole panelist in this matter on September 7, 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.

On September 23, 2004, the Panel issued Procedural Order No. 1 requesting further information and evidence from the Complainant regarding its common law rights in the mark ‘STORMWATERTASKFORCE.ORG’, and in particular further information and evidence as to the Complainant’s goodwill in the mark and the secondary meaning of the mark after the Complainant changed its name and after the Complainant ceased using the disputed domain name.

Procedural Order No. 1 required the Complainant to make this supplemental filing by October 1, 2004, and allowed the Respondent until October 8, 2004, to submit any response commenting on the supplemental filing made by the Complainant. On September 27, 2004, the Complainant requested an extension of the date fixed for this supplemental filing, and on September 28, 2004, the Panel extended the dates for the Complainant to file any further information or evidence to October 8, 2004, and for the Respondent to submit its response to October 15, 2004.

On October 8, 2004, the Complainant submitted a supplemental filing in response to Procedural Order No. 1, consisting of fourteen sworn declarations and accompanying exhibits. The Respondent did not submit any response to the Complainant’s supplemental filing.

4. Factual Background

The Complainant is a non-profit corporation, incorporated in California, with its principal place of business in Menlo Park California. The Complainant was originally formed as the California Stormwater Quality Task Force in 1989, and was known by that name until 2002, when it became California Stormwater Quality Association.

The Complainant registered, maintained and used the disputed domain name from October 13, 1999 until October 13, 2003.

The Respondent registered the disputed domain name on December 23, 2003. It is used as a portal for pornographic websites.

The Complainant currently has a website at “www.casqa.org”. This website explains the work of the Complainant in stormwater management, its history, membership, publications, and other information. The Complainant holds bi-monthly meetings that are open to the public, and invites the public to participate in its committees and workgroups.

The Complainant’s current website displays a logo incorporating the letters CASQA. It refers to itself throughout the website by the acronym CASQA. The ‘history’ section of the website confirms that it changed its name in 2002, at the same time as a change occurred in its legal status from a quasi-governmental organization to a non-profit organisation.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the service mark ‘STORMWATERTASKFORCE.ORG’ originating from common law principles governing trademarks and service marks. It states that formal registration of a trademark or service mark is not required to establish a protected interest under common law rules.

It further states that when generically descriptive words are combined as a composite mark, the result is non-descriptive as a unitary term, and eligible for trademark protection. The Complainant has combined the words ‘storm’, ‘water’ and ‘taskforce’ to result in a single term, which is inherently arbitrary and fanciful and eligible for trademark protection.

Further, even when words are merely descriptive protection is afforded when a secondary meaning of the words used attaches to the product or service identifying that product from a particular source. The Complainant alleges that the domain name has acquired a secondary meaning because of Complainant’s registration and continual use for a four year period.

The Complainant further alleges that the disputed domain name identifies the Complainant because of its similarity to the Complainant’s longstanding original name ‘Stormwater Quality Task Force’, and also identifies the Complainant’s educational services and interests in promoting stormwater quality.

The Complainant states that the Respondent has no rights or legitimate interests in the domain name, as the Respondent is not using the domain name in connection with a bona fide offering of goods or services, nor is known by the domain name or any part of the domain name. It states that the Respondent must have been aware of the Complainant’s well known service mark and is misleading consumers by diverting them to a pornographic website for commercial gain.

The Complainant further states that the domain name was registered and is being used in bad faith as the Respondent is intentionally attempting to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. It alleges the bad faith is confirmed by the erroneous mailing and email addresses provided by the Respondent.

The relief requested by the Complainant is the transfer to the Complainant of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel is required to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s Trademarks:

The Complainant does not base its complaint on a registered trademark. It alleges it has rights at common law in ‘STORMWATERTASKFORCE.ORG’ based on its use as a service mark and reputation. It is well established that a common law trademark will support a complaint pursuant to the Policy (see, for example, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000)). The Panel notes in this regard that the Complainant is resident in California and it provides its services in California. The disputed domain name is registered in Vancouver, Washington, United States of America, and pursuant to clause 17.2 of the Registration Agreement the Respondent has accepted the application of the laws of the State of Washington. Common law trademarks are well established at both federal and state levels in the United States.

The Complainant’s service mark is in the form of a domain name. It is formed by combining three common words ‘storm’, ‘water’ and ‘taskforce’ and adding the generic top-level domain identifier ‘.org’. The resulting unitary mark ‘STORMWATERTASKFORCE.ORG’ is capable of forming a distinctive service mark (see North Carolina Dairy Foundation, Inc. v. Foremost-McKesson, Inc., (1979) 92 Cal. App. 3d 98).

The Panel accepts that a domain name (or, more usually, the second level domain) may form a service mark, and support a complaint pursuant to the Policy. It is clear that a domain name can through use acquire a trademark signification, and indeed often does. A business might adopt different trademarks for different aspects of its business, choosing specific marks for the promotion and sale of its goods or services on its Internet. A domain name that is clearly associated in the public mind with one business has therefore acquired the recognition and goodwill – the attractive force which brings in custom – which is the foundation of a common law trademark (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (January 21, 2003).

The disputed domain name is identical with the domain name that the Complainant alleges is its service mark. The only element remaining to be established under Paragraph 4(a)(i) of the Policy is that the Complainant does, in fact, still have rights in the service mark ‘STORMWATERTASKFORCE.ORG’.

The Panel finds as a fact that the Respondent has deliberately adopted the disputed domain name to profit from its association with the Complainant because: (i) the disputed domain name is exactly the same as the Complainant’s prior registration; (ii) the disputed domain name forms an expression suggesting a function that bears no relation to the Respondent’s use on its website; (iii) the Respondent registered the domain name very soon after the Complainant’s registration expired; and (iv) the Respondent has on at least one previous occasion registered a domain name shortly after the expiry of an earlier registration, in breach of the rights of the original registrant (see Bronx Arts Ensemble, Inc. v. Vilma Morales, e:bOOm, S.A, WIPO Case No. D2004-0493 (August 30, 2004)). Such deliberate copying is probative that the Complainant had goodwill in the disputed domain name at the time of the Respondent’s registration, from which the Respondent intended to benefit (see Transgo, Inc. v. Ajac Transmission Parts Corp. [1985] USCA9 1384; 768 F.2d 1001 (9^th Cir., 1986), at 1016; Audio Fidelity, Inc. v. High Fidelity Recordings, Inc., [1960] USCA9 331; 283 F.2d 551, (9th Cir.1960) at 557: “There is no logical reason for the precise copying save an attempt to realize upon a secondary meaning that is in existence”). Such deliberate copying is merely probative but not conclusive evidence of the Complainant’s rights in the disputed domain name (see Co-Rect Products, Inc. v. Marvy! Advertising 780 F.2d 1324 (8^th Cir., 1985), at 1332).

In this case, the evidence submitted with the Complainant’s supplemental filing establishes: (i) the continuous circulation until the present time of material referring to its previous domain, such as a document dated September 2003, and currently available on the website of Watershed & Coastal Resources Division of the Orange County Public Facilities & Resources Department that refers to a document of the Complainant that it states can be found at the disputed domain name; (ii) the use of the Complainant’s new service mark CASQA together with the disputed domain name at least as late as December 2003; (iii) some members of the stormwater industry in California consider CASQA and ‘stormwatertaskforce.org’ to be one and the same; (iv) multiple organisations continue to provide the disputed domain name as a link on their websites for information about stormwater in California; and (v) some members of the stormwater industry continue to associate the disputed domain name with the Complainant, as demonstrated by the numerous declarations filed in support of the Complaint. Accordingly, the Panel is satisfied that the Complainant still has residual goodwill and therefore rights in the disputed domain name at the present time.

Therefore, for these reasons, the Panel is satisfied that the disputed domain name is identical to a service mark in which the Complainant has rights, and so the first element required by the Policy is satisfied.

B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name:

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the domain name. The Respondent has not submitted any response to suggest a possible basis for the acquisition of rights or legitimate interests in respect of the disputed domain name, and there is no evidence whatsoever before the Panel to suggest that any of the circumstances referred to in Paragraph 4(c) exist in the present case.

The Respondent has acted in bad faith in respect of the disputed domain name by registering a name with no connection with its own name, services or content of its website, in which it knew the Complainant had rights (indeed this was the very reason for the Respondent’s choice of the disputed domain name), and at all times with the intention to deceive internet users and divert them to its own website. Although it might be possible for a Respondent to overcome such initial bad faith and acquire rights or legitimate interests in a disputed domain name through use over time, if the prior association with the previous owner has expired completely, this clearly has not occurred in the present case.

Accordingly, the Panel concludes that the Respondent has no legitimate rights or interests in respect of the disputed domain name.

C. Whether the Respondent has Registered and Used the Disputed Domain Name in Bad Faith:

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) refers to circumstances indicating the use of the domain name with the intention to attract, for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the website or location.

The Panel has already found (see above) that the Respondent deliberately adopted the disputed domain name to profit from the association of this domain name with the Complainant, and has continued to use the disputed domain name with the same purpose. The Respondent’s intention in registration and use was to increase the ‘hits’ on its website by catching users that mistakenly believed the disputed domain name would take them to the Complainant’s website, and so to make a commercial gain from confusion as to source. This is clearly a bad faith registration and use of the disputed domain name.

For these reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith by the Respondent.

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 <stormwatertaskforce.org> be transferred to the Complainant.

David J.A. Cairns
Sole Panelist

Dated: October 18, 2004.