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Smart Destinations, Inc. v. Jeffrey Paolini [2005] GENDND 1943 (15 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Smart Destinations, Inc. v. Jeffrey Paolini

Case No. D2005-0995

1. The Parties

The Complainant is Smart Destinations, Inc., , Massachusetts, United States of America, represented by Lowrie, Lando & Anastasi, LLP, United States of America.

The Respondent is Jeffrey Paolini, FunSearch, Inc., New Hampshire, United States of America, represented by Jeff Magenau, United States of America.

2. The Domain Names and Registrars

The disputed domain names <gofloridacard.com> and <gohawaiicard.com> (“the Domain Names”) are registered with Schlund + Partner.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2005. On September 19, 2005, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. Schlund + Partner 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 September 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2005. The Response was filed with the Center on October 17, 2005.

The Center appointed Mark Partridge as the sole panelist in this matter on October 26, 2005. 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

Located in Boston, Massachusetts, Complainant is engaged in the tourist industry providing credit card-sized cards that grant users admission to attractions and savings on dining and travel activities “within the locale specified by the trademark” on the card. It began using the GO BOSTON trademark in 2002 and registered the domain name <gobostoncard.com> on December 18, 2002. Complainant launched a website at that address in March 2003. The site has the heading GO BOSTON CARD with a “tm” symbol in superscript next to the word “Boston.”

In July 2003, Complainant registered additional domain names, including

<gochicagocard.com>
<gomiamicard.com>
<gosandiegocard.com>
<gosanfranciscocard.com>
<goseattlecard.com>

In March 2004, Complainant launched <gosanfanciscocard.com> as a “sister product” to its ”www.gobostoncard.com” site. The current site is similar in appearance to the ”www.gobostoncard.com” site.

Prior to July 2004, Complainant’s Go Boston Card received media attention in at least three Boston area publications.

Complainant applied to register the mark GO BOSTON on April 13, 2004, and for the mark GO SAN FRANCISCO on July 27, 2004.

Respondent registered the Domain Names on July 15, 2004. The Domain Names are not in use. At the time of registration, Respondent was located New Hampshire.

Complainant continued to expand its business after July 2004, by applying for trademark registration for the following marks in February and April 2005:

GO CARD

GO HAWAII

GO CARD USA

GO MIAMI

GO SAN DIEGO

GO LOS ANGELES

GO SEATTLE

GO FLORIDA

GO CHICAGO

GO SAN FRANCISCO

Complainant has also launched additional sites at:

“www.goseattlecard.com” (August 2004)

“www.gochicagocard.com” (December 2004)

“www.goorlandocard.com” (February 2005)

“www.gosandiegocard.com” (February 2005)

“www.gocardusa.com” (March 2005)

In June 2005, Complainant unsuccessfully attempted to register the Domain Names, finding them to be taken by Respondent. It then contact Respondent offering compensation for transfer of the domain names. Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns trademark rights in a family of GO[Destination]CARD marks by virtue of its use and applications for registration, and that the Domain Names are confusingly similar to its marks.

Complainant asserts the Respondent is not making bona fide use of the Domain Names and is not known by those names. Therefore, Complainant believes Respondent has no rights or legitimate interests in the Domain Names.

Complainant states that the Domain Names have been registered and used in bad faith because: (1) they are identical or confusingly similar to Complainant’s marks;

(2) Respondent engages in a pattern of conduct registering domain names of others;

(3) it failed to respond to a demand letter; and (4) it has not legitimate reason for its choice of Domain Names.

B. Respondent

Respondent denies that the Domain Names are confusingly similar to any mark in which Complainant has rights, and claims that it has a legitimate interest in using the Domain Names for a business it has been developing since 2000. Respondent claims it had no knowledge of Complainant until 2005, when it received Complainant’s objection to its registration of the Domain Names.

6. Discussion and Findings

A. Identical or Confusingly Similar

The parties are located in the United States of America, so this opinion will when necessary rely on U.S. law for the applicable legal principles. In the U.S., trademark rights are created by use and may be proved by registration. Contrary to Complainant’s claim, mere applications do not create any enforceable rights.

At the time of the Complaint, it appears that Complainant has made sufficient use of the marks GO BOSTON CARD, GO SAN FRANCISCO CARD, GO SEATTLE CARD, GO CHICAGO CARD, GO ORLANDO CARD, GO SAN DIEGO CARD to create rights in those marks and in a family of marks consisting of GO [CITY] CARD.

Further, the Domain Names appear to be confusingly similar to those marks. It is likely that persons familiar with Complainant’s family of marks would likely believe that GO HAWAII CARD and GO FLORIDA CARD come from the same source.

The more significant question involves the priority of Complainant’s rights with respect to Respondent’s registration of the Domain Names. Although the Policy does not specifically require a showing a priority on the first element of the claim, this Panel has previously stated that a requirement of priority should be implied, for there usually can be no finding of bad faith if the Respondent’s registration predates any rights of the Complainant.

At the time the Domain Names were registered, July 2004, the only apparent use by Complainant of any of its marks were the GO BOSTON CARD and GO SAN FRANCISCO CARD marks, with only brief use of the latter. The nature of Complainant’s use in July 2004 shows an intention to expand its marks to include additional cities or destinations.

Although recognizing only limited public exposure for Complainant’s marks in July 2004, this Panel concludes that the Domain Names are confusingly similar to Complainant’s marks, in that persons exposed to both parties’ marks would be likely to believe they came from the same source.

B. Rights or Legitimate Interests

Complainant has made a prima facie case on this element by showing that Respondent is not known by the Domain Names and is not making any bona fide use of those names.

Respondent claims it has a legitimate interest in the Domain Names because it has been creating a business related to the Domain Names since as early as 2000. In support of this claim, Respondent has provided a Marketing Plan created for it by a Florida-based advertising agency in 2002, a computer presentation for “Fun Search” apparently created in about 2002, and an undated website development proposal.

The evidence presented by Respondent does indicate that it has worked on the development of a travel related business prior to Complainant’s objection. However, there is no indication that any of these activities specifically related to the Domain Names at issue, although the Domain Names seem to be apt choices for the plans disclosed by the plan presented by Respondent. The plans all appear to relate to the name or mark “Fun Search”. The only exception to this is a claim that Respondent engaged in negotiations with the “Miami Herald” involving its domain name <goflorida.com>. The evidence presented on this point, however, is vague and insufficient to show a legitimate interest in the Domain Names. Further, absent some showing that the Domain Names are part of these developing plans, the mere fact that the domain names might conceivably relate to the business Respondent apparently has been working to develop seems insufficient to show rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The key issue presented by this case is the question of bad faith registration and use. At the time the Domain Names were registered, Complainant’s use of its alleged marks was limited to GO BOSTON CARD and GO SAN FRANCISCO CARD. The only application for trademark registration was GO BOSTON.

Respondent at that time was making plans to build a travel-related business in the Florida market. It claims it registered the Domain Names in furtherance of those plans without any knowledge of Complainant.

Complainant says Respondent acted in bad faith because the Domain Names are confusingly similar to Complainant’s marks and there is no legitimate reason for Respondent to select them. Complainant also suggests that Respondent would have known about Complainant because Respondent was located in New Hampshire, near Complainant’s GO BOSTON CARD market.

Complainant has the burden of showing that Respondent registered and used the names in bad faith. To meet that burden, it should appear from the record that it is more likely than not that Respondent is a cybersquatter seeking to trade on the Complainant’s marks.

On the record presented here the Panel is not persuaded that the Respondent has registered and used the Domain Names in bad faith. Instead, Respondent has shown it was engaged in developing a Florida-related travel business even prior to Complainant’s first use of GO BOSTON CARD. There is nothing in the record to show that Respondent was aware of Complainant’s business or that it selected the names because they were similar to Complainant’s then-inchoate family of marks. Similarly, there is nothing in the record to show any intent to trade on Complainant’s mark or goodwill. Even if Respondent was aware of Complainant, which is denied, it appears at that time that Respondent could have selected GO HAWAII CARD and GO FLORIDA CARD for its travel business plans with the good faith belief that it was entitled to use those names.

It is also possible, allbeit less likely, that Respondent registered the Domain Names thinking they might be of value someday to Complainant, but that involves pure speculation, supported only by the similarity of the names and nothing more. It is denied by Respondent, and undermined by Respondent’s demonstration that it was developing a travel business of its own in Florida and by the fact that it has not demonstrated any intent to sell the names for profit or to otherwise use them in an improper manner.

Complainant also says Respondent has acted in bad faith because it has registered over 236 domain names, many of which are not in use, because Respondent did not respond to Complainant’s demand, and because Respondent has provided false contact information in the registration. These claims have been denied by Respondent, and the Panel concludes that they are an insufficient basis for finding bad faith on the record here. The multiple domain names registered by Respondent appear to be derived from its use of the name and mark “Fun Search”, which Respondent has used since 2001. Respondent has also shown that the contact information matches the registered business address of Funsearch, Inc. The failure to use the Domain Names or to respond to Complainant’s demand, without more, is in itself insufficient to prove bad faith registration and use.

Finally, there is no evidence at this time of any bad faith use of the Domain Names. They are not currently used for any commercial or other purpose. It remains possible that they will be used for a legitimate, non-infringing purpose. It is also possible that they may be used in a manner that is infringing, given that Complainant has now developed a family of GO [Destination] CARD marks. Such a dispute is outside the scope of the Policy, and nothing here should be construed adversely to affect Complainant’s ability to bring an infringement action in an appropriate court if actual infringement arises. It is important in this regard to recall that the Policy is intended to deal with bad faith cybersquatting disputes . Our decision here is limited to the conclusion that Complainant has failed to prove bad faith registration and use under the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Mark V.B. Partridge
Sole Panelist

Date: November 15, 2005