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Generic Top Level Domain Name (gTLD) Decisions |
Bighorn
Properties, Inc. and Bighorn Development, L.L.C. v. Doug McKendry
Claim Number:
FA0405000275818
PARTIES
Complainant
is Bighorn Properties, Inc. and Bighorn Development, L.L.C. (“Complainant”),
represented by Michael J. Andelson of Best Best & Krieger, LLP,
74-760 Highway 111, Suite 200, Indian Wells, CA 92210. Respondent is Doug
McKendry (“Respondent”), 1102 Lake Vista, Palm Desert, CA 92260.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <bighornhomes.com>, registered with Innerwise,
Inc. d/b/a Itsyourdomain.com.
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.
G.
Gervaise Davis III, Esq., as Sole Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 24, 2004; the Forum received
a hard copy of the Complaint
on May 26, 2004.
On
June 2, 2004, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to
the Forum that the domain name <bighornhomes.com> is registered
with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current
registrant of the name. Innerwise,
Inc. d/b/a Itsyourdomain.com has
verified that Respondent is bound by the Innerwise, Inc. d/b/a
Itsyourdomain.com 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
June 9, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 29,
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@bighornhomes.com by e-mail.
A
timely Response was received and determined to be complete on June 29, 2004.
On
July 2, 2004, an Additional and Supplemental Brief was prepared, and
subsequently filed by Complainant, which the Panel finds was
timely under the
UDRP Rules.
On July 8, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed G. Gervaise
Davis III, Esq., as the Sole Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Complainants
are two legal entities that currently own and operate a real estate subdivision
and golf course and related facilities
in the Palm Desert, California area,
well known as “Bighorn.” Bighorn Properties, Inc. (sometimes called “Properties”)
is a real
estate broker that lists and sells homes for third party owners and
for Bighorn Development, L.L.C. (sometimes referred to as “Development”
or “the Developer”). Throughout the Complaint, these entities are referred to
collectively
as the owners and developers of a world-renowned golf course and
subdivision, in such a manner that it is a bit difficult to determine
exactly
which entity does (or did) which of several things and over what time period –
the development and sale of real estate, operation
of the golf course, or other
activities at this subdivision.
However,
the Complaint states unequivocally that “Complainant's [sic] first use of the
BIGHORN mark dates back to December 1, 1990.
Complainant has continuously used
the BIGHORN mark in commerce since the time of first use in 1990.” From
the context and the trademark
registrations described below, it appears that
Properties is the real estate sales arm and that Development is the developer,
and
that there may be some common or overlapping ownership of the two entities.
The Complaint does not disclose the dates of organization
of either or the
nature of actual shared or common ownership, which may be relevant because of
some factual and legal issues raised
by Respondent.
Complainant
Properties owns several U.S. trademarks issued in December 2003 for real estate
listings and real estate sales, which
marks consist in one case of the single
word “BIGHORN” in all caps, and the same word and a sketch of the head of a
Bighorn sheep
as a logo, in combination. Development owns a series of U.S.
trademarks issued in 2004, consisting of similar marks and words, for
golf
membership, golf equipment and related businesses. Copies of the registrations
were attached to the Complaint. These exhibits
state that the first use of the
marks was in 1990 and the first use in commerce was 1992. [Note: These dates
would seem to imply
that these business entities have both existed since those
dates and that they developed the subdivision from that date on, a matter
which
Respondent contests, and which could bear on the possible invalidity of the
trademarks, if these facts were untrue and misrepresented
as Respondent
claims.]
Complainants
claim the <bighornhomes.com> domain name registered by Respondent
is confusingly similar to Complainant's BIGHORN mark. Complainant has
established rights in
the BIGHORN mark through registration and application
with the United States Patent and Trademark Office. Respondent's domain name
is
confusingly similar to Complainant's BIGHORN mark because the domain name fully
incorporates the BIGHORN mark with the exception
of the addition of the generic
term or descriptive term "homes." Furthermore, the addition of the
generic top-level domain
".com" is irrelevant in determining whether
the <bighornhomes.com> domain name is confusingly similar to
Complainant's BIGHORN mark.
Respondent
has no rights or legitimate interests with respect to <bighornhomes.com>. Nothing in Respondent's WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name.
Complainant's prior
rights in the domain name precede Respondent's registration
by at least thirteen (13) years. Respondent's domain name, which is confusingly
similar to Complainant's BIGHORN mark, is used to offer goods and services that
directly compete with the services offered by Complainant
under its BIGHORN
marks. Respondent's competitive use of the infringing domain name does not
constitute a bona fide offering of goods
and services or a legitimate
noncommercial or fair use. Respondent is not a licensee of Complainant.
Respondent's
use of the infringing domain name to advertise services that compete with
Complainant is evidence of bad faith registration
and use, as Respondent is
using the domain name to promote competing real estate listing services and to
disrupt the business of
Complainants. Respondent's use of the BIGHORN mark in
its domain name is for no other reason than to create the impression that
Respondent
is the broker or listing agent for Complainant. Complainants have
spent millions of dollars over the years to create a distinctive
and profitable
business of developing and selling real estate in the Bighorn community, which
is being severely damaged by Respondent’s
activities and use of the domain name,
under which he is attempting to trade upon this extensive advertising and good
will.
When
Respondent first brought up his website, it merely copied the MLS listings of
Complainant from the local MLS website and failed
to indicate that these were
not the listings of Respondent. Respondent went so far as to state on his
site: “Presented By: Doug
McKendry” following each of Complainants’ listings.
Complainants affirmatively notified the MLS that it refuses to permit use of
the listings by Respondent and that the use of them is in violation of its
rights and the rules of the MLS service. Further, when
Respondent first
initiated the website it contained a number of photographs of Respondent in a
T-shirt that prominently featured
a copy of the trademarked logo of the Bighorn
sheep head in such a manner that it implied an unauthorized and non-existent
broker
or other relationship between Respondent and Complainants. Only after
demand by Complainants were these photos removed from the website.
Further
evidence creating confusion and indicative of bad faith use of Respondent's
website is that Respondent's contact address at
1102 Lake Vista, Palm Desert,
California, a residence located within the Bighorn Golf Club. To the best of
Complainant's knowledge,
despite Respondent's website <bighornhomes.com>
which wrongfully and illegally attributes to Respondent residential home
listings listed by Complainant's realty arm, Bighorn Properties,
Inc.,
Respondent has never sold a residence located within the Bighorn Golf Club, and
Respondent has never obtained a listing for
the sale of a residence located
within the Bighorn Golf Club. The single listing Complainant is aware of
emanating from Respondent
is the residence of Respondent Doug McKendry, located
at 1102 Lake Vista in Palm Desert, California.
Complainants
seek the transfer of the <bighornhomes.com> domain name to them,
as their desired remedy under the UDRP.
B.
Respondent
Respondent
is a licensed California Real Estate Broker who operates his business from his own
home in the Bighorn community because
he is physically disabled from practicing
his original profession as an endodontist. As his website states, he limits his
real estate
sales activities to homes in the Bighorn community because of his
physical disability, which is why he chose the domain name to better
identify
the location of the homes he is selling or proposes to buy and sell.
Respondent
contends that this proceeding is part of a program of harassment against him by
Complainants and their attorney to prevent
him from competing with them, and
that he provides a competitive environment that is beneficial to real estate
buyers and sellers
in the Bighorn area and should be encouraged.
He
argues that the <bighornhomes.com> domain name is not confusing
because the mark shown on the registered trademarks of Complainants’ is in
uppercase and his domain
name is in lower case, and it is distinguishable
because it identifies the fact that he is selling homes there, and is not
limited
to the single word “bighorn,” as is Complainants’ trademark.
Respondent
further contends that Complainants have misrepresented their use of the mark as
commencing in 1990 or 1992 and states that
the Bighorn Development and Golf
Club were, in fact, conceived, named, designed, developed and originally sold
by Westinghouse Desert
Communities, Inc. from whom he bought his first home in
the Bighorn community in 1996. He argues that, since acquisition of the
community and the golf course by Complainants at some subsequent date, there is
a conflict of interest and an illegal monopoly because
of the fact that
Properties sells the homes for Development, and that competition is needed to
be fair to home owners and buyers.
Respondent
claims that the rules for use of the MLS listings of Complainant are not clear
at this time, but that he promptly removed
the listings from his website upon
objection by Complainant. He argues that under the MLS rules Complainant itself
may not be in
compliance with the listing and posting rules for various reasons.
In
any event, he argues that his domain name is not identical to the word BIGHORN
nor is it confusingly similar, both because it contains
another descriptive
modifier, the word “homes,” and because all other brokers in the area describe
the homes they are selling as
“Bighorn homes” since that is the name of the
community in which the homes are located and there is no other way to describe
where
they are. In essence, he argues that the name BIGHORN is merely a
geographical term, which is descriptive and should be unpredictable
under the
trademark laws, because it cannot be distinctive, by definition.
Respondent
also claims that Complainants have owned the domain name
<bighorngolf.com> for some years, but have made no serious
effort to
utilize that name to market real estate in the area, and that those homes on
the website are not current listings, but
those from 2001.
Based
on these facts, Respondent contends that Complainants have failed to meet its
burden of proof and are merely harassing him,
and that the domain name should
not be transferred to Complainants because it has provided misleading
information and statements
in the Complaint under the UDRP and to the U.S.
Trademark Office. He feels that he has acted “in good faith with no detriment
to
Complainant.”
C.
Additional Submission - Complainant
Complainants’
Additional Submission can be summarized by this statement in its first section:
“Respondent’s response fails to address
the issues raised in the Complaint, and
rather takes the NAF and the Arbitrator off on tangents that have little or
nothing to do
with the disputed name.”
Complainant
argues that Respondent has provided no legal authority for his assertion that
the domain name is not confusingly similar.
Complainant then provides citations
to cases that interpret this concept and show why it should be considered
confusingly similar
on these facts.
Complainant
disputes the contention that BIGHORN is a geographical term on the basis that
the trademark office registered it, which
is prima facie evidence that it is
not. Further it is argued, even if it were a geographical name, it cannot be
considered generic
as a name to describe real estate sales since it has only
recently been registered “and has not lost its registered meaning.” It
is
also argued that the fact other businesses use the identical word for other
purposes is irrelevant. Complainant also contends
that use of the BIGHORN name
in other local real estate publications “is irrelevant, and has no bearing on
the disputed name.”
Complainant
rejects all the other arguments and assertions of Respondent as “irrelevant”
because Respondent’s use of the name is improper.
It does not explain why they
are irrelevant. It also claims what it was doing with its own real estate
website is irrelevant because
portions of it are not any longer available to
the public.
Complainant
says that the argument about capitalization of the trademark and the lower case
domain name is incorrect, since all domain
names are in lower case and the form
of submission of word marks to the trademark office is simply typescript text.
It
contends that reference to Complainants’ corporate history “is incomplete,
unreliable, has no bearing on the disputed domain name,
and should be given no
weight by the Arbitrator.” Complainant does not, however, provide any
information to explain the date discrepancies
pointed out by Respondent
concerning this issue, nor as to the history of the project and its ownership,
which could have a bearing
on Respondent’s claims of misleading information
provided to the Arbitrator and to the Trademark Office.
Finally,
Complainant rejects Respondent’s argument that there is a need for competition
and a possible conflict of interest because
of the close relationship of the
two Complainants—merely pointing out that a large number of sales have taken
place over the years.
Complainant does not, however, explain or propose any
logical relationship between the sales that occurred and their bearing on
rebutting
Respondent’s arguments.
FINDINGS
A.
The Panel finds that Complainant has established that Complainant Bighorn Properties,
Inc. is the owner of a BIGHORN word mark and a design and word mark with the
BIGHORN word and a sketch of a Bighorn sheep
head, both registered in December
2003 with a field of use for real estate sales and listings. There is
some question in the mind
of the Panel as to possible legal defects in these
registrations, however, because Complainant appears from the records of the
California
Secretary of State to have been incorporated in California on
December 8, 2000, while Complainant claims first use in 1990 and first
use in
commerce in 1992 – events eight to ten years before Complainant came into legal
existence. Complainant’s counsel chose not
to explain this significant and
potentially material discrepancy in either his initial filing or the Additional
Submission, although
raised in some detail by Respondent. These
registrations are still contestable on various grounds, including material
omissions
or misrepresentations made in the application for registration,
because five years have not passed since registration. 15 USC §1065.
The
Panel finds Registrant Bighorn Development L.L.C. also holds similar
trademark registrations in the field of golf memberships and related
businesses, which the Panel deems irrelevant
to this proceeding, as noted
below, because Respondent is not in this business and the domain name at issue
does not suggest that
he is.
The
Panel finds that the <bighornhomes.com> domain name is not identical
to the trademark, but because Complainant Properties and Registrant are both in
the real estate sales
business, and because of the manner in which Registrant
at least initially used the domain name, the domain name is confusingly similar
to Complainant Properties word mark.
B.
While it is a close case, for reasons explained in the Discussion, the Panel
finds that Respondent probably does not have a legitimate
right or interest in
the use of the <bighornhomes.com> domain name without at least
some disclaimer and taking considerable care to avoid confusion. There are
clearly better names for
his real estate business that could still have used
the word “Bighorn” as a descriptor of the area in which the homes are located,
without creating confusion with Complainant Properties.
C.
The Panel finds that the manner in which the domain name was initially used
shortly after registration is a strong indication that
it was registered and
used in bad faith, and is therefore an abusive registration within the purview
of the UDRP Policies and Rules.
Subsequent changes in the use to correct this
issue, do not absolve Respondent from this problem, due to the nature of the
initial
events and usage.
DISCUSSION
Legal Requirements for Decision
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 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.
General Comments on the Issues
As
noted above, under the UDRP Rules, the Panel is instructed to decide these
cases on the basis of written filings and exhibits prepared
and filed by the
parties, without oral testimony or the opportunity to question witnesses on
material facts, which may be unclear,
as in this case. Because of this,
it is especially important that counsel and the parties disclose all the
relevant facts and provide
them to the Panel in a direct and candid manner. It
is not helpful in the disposition of this case for counsel to gloss over them
and simply aver in an Additional Submission that certain facts raised by a
party (as to claimed ownership and use of the trademark
since 1990, for
example) are not relevant—that is an issue for the Panel to decide, not
counsel. Once questions are raised, it is
the duty of counsel to provide
the facts, especially in a summary proceeding like the UDRP cases, since
obtaining them otherwise
is difficult or uncertain when their relevancy is a
genuine legal issue and there are no witnesses to ask about such facts.
In
this case, to learn some of the relevant facts it was necessary for the Panel
to verify potentially important facts from public
records on the Internet,
because they were not fully disclosed by Complainant’s counsel and Respondent
as a layperson probably did
not know how to locate them. When a layperson
is representing himself, the Panel has an ethical obligation to be careful that
Respondent’s
lack of legal training does not bias the outcome of the
case. On the public record, there are still conflicts which might have
been
easily resolved in favor of Complainant had counsel simply disclosed and
explained them, instead of urging the Panel to ignore them
as irrelevant. They
are not irrelevant. This is particularly so when the same legal counsel
apparently filed the actual trademark
registrations in question and has within
his own personal knowledge the facts concerning the entities, their formation
and the history
of the subdivision in question, including the ownership and
actual use of the name over this period of time.
One
alternative in this situation would be for the Panel to deny the requested
relief for failure to fully present all relevant facts,
which is what this
Panel nearly did. A second alternative is to hold up the proceedings and ask
for supplemental briefs by the parties,
which would have prolonged the
disposition, which is contrary to the summary purposes of the UDRP. The third
is to deal with the
case on incomplete facts and to decide the issues on the
basis of the likely outcome of a court case, making certain reasonable factual
and legal assumptions, which the Panel has elected to do here.
Further,
in this case, because of the fact that Respondent, acting in pro per, is a
layperson, unschooled in legal principles, some
of the defenses raised are
simply not consistent with the law, as the Panel explains below. However,
Respondent has raised several
legitimate defenses such as the fact that the
claimed trademark is generic and merely descriptive of a geographical name or
area,
which merely identifies the location of the subdivision homes in
question. Respondent has also questioned the validity of the trademark
because of possibly misleading allegations as to dates of use and the ownership
and development of the property by other parties.
He also raises the
issue of the generic nature of a word and an animal name used for many purposes
and in many areas of commerce,
and suggests that this precludes exclusive use
of it by Complainant. All of these are legitimate issues to be considered by
the Panel,
even if they are not ultimately dispositive.
For
example, it would appear, but is not clear from the record, that there actually
are several U.S. Post Offices for “Bighorn” towns,
in Montana and Wyoming, and
perhaps elsewhere. A quick search of the Internet discloses a number of parks
and forests named Bighorn.
Because of this, Respondent’s geographic name
defense, notwithstanding the existence of a registered trademark, could be valid
under
existing UDRP Rules. See Rollerblade, Inc. v. CBNO,
D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if
established, will defeat a claim of trademark rights, even in a
mark which is
the subject of an incontestable registration”). There are numerous UDRP cases
where relief was denied because the mark
in question was merely the name of a
city or area. Here, in particular, additional facts on this issue would have
been helpful to
the Panel and might have resulted in a different decision or at
least a partially different result.
Because
of its generic nature, as a geographical descriptor, absent acts evidencing
intentional confusion, it seems unlikely that
any court would preclude
Respondent from using some reasonable formative of the Bighorn name to identify
his business. While Respondent
cannot mislead the public into believing there
is some association between the parties, Complainant’s claim to exclusive use
of the
name for someone intending to sell real estate in this geographical area
is not well founded, under well-established legal principles.
This would be
like the city of Los Angeles objecting to the use of the name Los Angeles
Medical Center, or the Los Angeles Trash
Collection Company. As the Ninth
Circuit stated in The New Kids On The Block, Inc. v. News America, [1992] USCA9 2148; 971
F.2d 302 (9th Cir.1992), in authorizing what is called a “nominative use” of a
trademark:
“A
… problem arises when a trademark also describes a person, a place or an
attribute of a product. If the trademark holder were allowed
exclusive rights
in such use, the language would be depleted in much the same way as if generic
words were protectable. Thus trademark
law recognizes a defense where the mark
is used only "to describe the goods or services of [a] party, or their
geographic origin. 15 U.S. C. § 1115 (b)(4).” [Emphasis added.]
In
the judgment of this Panel, but for the misleading use of the MLS listings and
the unnecessary use of a photo of Respondent with
a t-shirt with the
trademarked logo, Complainants would not prevail on the facts and the law of
this case in a court of law. The
sole reason for this particular
decision, and the remedy provided, is this initially misleading presentation of
information on Respondent’s
website.
The
final resolution provided below is intended to resolve this proceeding promptly
but also to urge that the parties meet and agree
upon Respondent’s means of
using a proper domain name that includes what is very clearly the name of a
geographical location or area
(based in turn upon a breed of sheep), not even
unique to California. There appear to be other similar domain names that
Respondent
could choose to register and use, which could include, as part of
the domain, the name of this community and include the term “Bighorn”
such as
<bighornareahomes.com> or other combinations that would not infringe the
rights of Complainant. Hopefully, the parties
can arrive at a solution rather
than spending further time and effort litigating, or Respondent contesting the
validity of Complainants’
marks because of alleged misrepresentations.
Notwithstanding
the arguments of either party here, it cannot be said that this domain name is
identical to Complainant’s mark. However,
as described above, the combined
fact of the combination of the words BIGHORN and “homes” and the real estate
sales activities of
both Complainant Properties and Respondent as a real estate
broker posting the MLS listings of Complainant, without clearly indicating
whose listings these were, makes the website and the use of the name
confusingly similar to Complainant Properties registered trademark
and
business. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov.
6, 2001) (“[T]he fact that a domain name incorporates a Complainant’s
registered mark is sufficient to establish
identical or confusing similarity
for purposes of the Policy despite the addition of other words to such
marks.”); see also Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb.
Forum Nov. 14, 2002) (finding that any distinctiveness resulting from
Respondent’s addition of a generic word
to Complainant’s mark in a domain name
is less significant because Respondent and Complainant operate in the same
industry).
The
Panel agrees with Complainants that whether the word is in all caps or in lower
case is not legally significant, any more than
the argument that adding “.com”
makes it different. However, that is not to say that Respondent cannot
use any form of the word
“Bighorn” in a domain name, together with other short
terms that indicate what his business is. The whole point of domain names
is to give the public a quick way to locate various websites and some
geographical aspect of a business or domain name is appropriate.
See
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack
thereof are context-specific concepts. In the Internet context, consumers are
aware
that domain names for different websites are quite often similar, because
of the need for language economy, and that very small differences
matter."); see also Kittinger Co.
v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com>
is not identical or confusingly similar to a trademark of Complainant because
the use of Complainant's
trademark in this domain is purely nominative, the
domain name as a whole is descriptive of Respondent's business, and the domain
name is unlikely to cause confusion with Complainant's business).
It
is important that trademark law and the UDRP not be interpreted so as to limit
the use of descriptive or generic terms, since to
do so limits their value to
the public and to the many businesses that use the Internet for advertising and
sales. This is the basis
for dozens of cases of record that deny protection to
the name of a community. By Complainants’ own admission its golf course
and
the entire area are now a well-known community known as Bighorn, in
California. Complainants do not have
the right to prevent others from referring to it by name, along with a
description of the business, even
if they own trademarks using the name of the
community. See Zero Int'l Holding
v. Beyonet Servs., D2000-0161
(WIPO May 12, 2000) ("Common words and descriptive terms are legitimately
subject to registration as domain names
on a 'first-come, first-served'
basis."); see also Capt’n Snooze Mgmt. v. Domains 4 Sale,
D2000-0488 (WIPO July 10, 2000) (stating that while “Snooze is an integral part
of Complainant’s trademark registrations . . . this
does not entitle the
Complainant to protection for that word alone”); see also Rollerblade, Inc.
v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (“[G]enericness, if established,
will defeat a claim of trademark rights, even in a mark which is
the subject of
an incontestable registration.”).
It
should be noted that this conclusion of confusing similarity does not deal with
the Panel’s concern that there appears to be some
material discrepancy in the
dates of claimed use, and the identity of the entity (and any continuing association
of rights) that
used the name “Bighorn” during this period. How this happened
and who may actually own these rights is beyond the scope of this decision.
We
leave that, and any possible defect it might cause to the trademark
registrations, to the appropriate court or agency of the state
of California or
the U.S. government, should such an issue be raised in another
proceeding. We simply accept the registrations for
what they appear to
be, for purposes of this forum. See AutoNation
Holding Corp. v. Alawneh, D2002-0581 (WIPO
May 2, 2002) (holding that assertions of trademark infringement "are
entirely misplaced and totally inappropriate
for resolution through an ICANN
proceeding. The scope of an ICANN proceeding is extremely narrow: it only
targets abusive cybersquatting,
nothing else"); see also Commercial Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000)
(stating that the Policy’s administrative procedure is “intended only for the
relatively
narrow class of cases of ‘abusive registrations.” Cases where
registered domain names are subject to other legitimate disputes are
relegated
to the courts.).
This
issue is dealt with in some detail in the above discussions. Suffice it
to say that since Respondent had not previously owned
and operated a real
estate business or one involved in services to homes by this name, he cannot
adopt one arbitrarily which misleads
the public into believing there is an
association between his business and that of Complainants. He may, however, adopt
a name that
includes the name of the Bighorn area, so long as it is not
confusingly similar to the scope of the word marks of Complainant
Properties.
See Scholastic Inc. v. Master Games Int’l, Inc.,
D2001-1208 (WIPO Jan. 3, 2002) (finding that Respondent’s use of the disputed
domain name for a website regarding chess tournaments,
particularly because the
domain name appropriately described both the target users of Respondent’s
services and the nature of Respondent’s
services, was a bona fide use of the
domain name); see also Canned Foods Inc. v. Ult. Search Inc., FA 96320
(Nat. Arb. Forum Feb. 13, 2001) (“Respondent is using the domain
<groceryoutlet.com> for a website that links to
online resources for
groceries and similar goods. The domain is therefore being used to describe the
content of the site,” as evidence
that Respondent was making a bona fide
offering of goods or services with the disputed domain name.).
Further,
Respondent’s argument that Complainant may have a strong advantage over others
by operating both a real estate and golf course
business in this area (since it
is apparently the successor in interest to Westinghouse) does not provide a
legal basis for potentially
misleading the public as to the true nature of a
business operating under a particular domain name. To claim the
right to start
a new business under a particular domain name, one must be able
to demonstrate that the new business name is not simply planning
to trade on
the good will of another existing business. See Web House USA, Inc. v.
eDollarShop Hostmaster, FA 155180 (Nat.
Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by”
the <edollarshop.com> domain name, despite naming itself
“eDollarShop,” because Respondent’s website was almost identical to
Complainant’s
“first in use” website and infringed on Complainant’s marks); see
also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum
Jan. 13, 2003) (noting that “Complainant has established itself as the sole
holder of all rights and
legitimate interests in the NEIMAN MARCUS mark,” in
holding that Respondent was not commonly known by the <neiman-marcus.net>
name, despite naming itself “Neiman-Marcus” in its WHOIS contact
information).
The
Panel must rule against Respondent on the matter of rights or legitimate
interests in this specific name, since the unfortunate
illness of Respondent is
not a legal license to create potential confusion by intentionally adopting a
confusing domain name.
The
Panel must also rule for Complainants on this issue, on the unique facts here.
The discussion above provides the rationale for
the Findings and Conclusions
here, so the Panel will merely reiterate that but for the misleading use of the
MLS listings and the
use of the T-shirt picture, this situation would not have
resulted in a finding of registration and use in bad faith. See State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site
to its own
website for commercial gain); see also Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing
with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv)).
DECISION
Having
minimally established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be GRANTED, in part, on behalf of
Complainant Bighorn Properties, Inc. in the form of CANCELLATION of
the domain name at issue, rather than Transfer as requested.
The
claim of Bighorn Development, L.L.C. is, however, DISMISSED on
the basis that Development is neither a necessary party nor one that
would have otherwise prevailed here or in a court of law, since this is not a
dilution claim.
The claim of Bighorn Development, L.L.C. has nothing to do with
the activities of Respondent as a real estate broker, since its trademarks
relate only to the operation of golf courses and the sales of golf equipment.
Respondent is not engaged in that business and his
domain name does not suggest
any such activity.
As
noted above, the failure of counsel for Complainants to explain the history of
the use of the mark and the possible derivative
nature of the rights of
Complainants leaves some open questions both as to the possible legal defects
in the trademark applications
and as to the availability to Respondent of the
defense of nominative use of the geographically descriptive mark “Bighorn,”
under
The New Kids on the Block decision.
For
these reasons, the Panel urges the parties to meet promptly and to agree upon a
non-confusing means of Respondent using the word
“Bighorn” in the replacement
domain name for his real estate brokerage business of selling homes in this
geographical area and community.
He is clearly entitled to make such use of the
mark under existing trademark law.
G. Gervaise Davis III, Esq. Panelist
Dated: July 22, 2004
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