Outdoor Cap Company, Inc. v.
Claim Number: FA0706001015455
PARTIES
Complainant is Outdoor Cap Company, Inc. (“Complainant”), represented by Mark
G. Kachigian, of Head, Johnson & Kachigian, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outdoorcapcompany.com>, registered
with Compana,
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 25, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 25, 2007.
On July 13, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <outdoorcapcompany.com>
domain name is registered with Compana, LLC
and that the Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
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 July 20, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 9, 2007 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,
A timely Response was received and determined to be complete on August 9, 2007.
On August 16, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Outdoor Cap Company (“Complainant”), has been established
since at least 1989, and is engaged in the manufacture and distribution of
headwear, namely hats and caps, both domestically and internationally. Complainant was incorporated in
Complainant has established rights in its OUTDOOR CAP (filed December
26, 1995, registered April 22, 1997, with a first use date of December 15,
1989) and OUTDOOR CAP PRO SERIES (filed July 13, 2004, registered December 13,
2005, with a first use date of June 1, 2000) marks through registration with
the U.S. Patent and Trademark Office (“USPTO”).
Complainant has common law rights in the OUTDOOR CAP COMPANY mark
through its continuous and extensive use of the mark since at least December
1989, in connection with its headwear, and Complainant has devoted substantial
efforts to advertise and promote its goods and services under these marks.
Respondent’s <outdoorcapcompany.com> domain name
is identical to Complainant’s OUTDOOR CAP COMPANY and is confusingly similar to
Complainant’s OUTDOOR CAP and other marks.
Respondent’s domain name contains Complainant’s mark in its entirety,
with only the mere removal of spaces and addition of the generic top-level
domain (“gTLD”) “.com.”
Respondent is not commonly known by the domain name <outdoorcapcompany.com>
under Policy ¶ 4(c)(ii), as Respondent’s WHOIS information lists Respondent as
“Texas International Property Associates.” Upon information and belief, Respondent is not
presently, nor has it ever been known by the disputed domain name, thus
indicating that Respondent is without any rights or legitimate interests in the
domain name.
Respondent is using the <outdoorcapcompany.com> domain name
to operate a website that features portal hyperlinks to various third-party
websites as well as pop-up advertisements for goods and services that directly
compete with Complainant’s own products and services, from which Respondent
presumably receives click-through fees.
Respondent’s use of the domain name to advertise goods and services of
Complainant’s competitors disrupts Complainant’s business by diverting
potential customers of Complainant to Respondent’s website where, as a result
of the pop-up advertisements and/or click-through fees that resolve on this
website, Respondent receives commercial benefit.
B. Respondent
Complainant has not established or
substantiated any trademark rights in the term “outdoor cap company,” thus the
domain name is not identical to or confusingly similar to any mark held by
Complainant. Respondent has rights and
legitimate interests in domains comprised of generic and/or descriptive terms,
not associated with the Complainant’s business, and Respondent, before notice
of this dispute, used the disputed domain name in connection with a bona fide offering of services pursuant
to ICANN Policy. Respondent’s
registration and use of the subject domain name in connection with Internet
searching, locator, and/or targeted advertising services, does not comprise “bad
faith,” under ICANN Policy, and Complainant’s attempts to impute such bad faith
must fail.
That the domain is similar to the trade name and this is a critical distinction as a trade name is not entitled to the protection afforded a trademark or service mark. See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum June 24, 2003) (“It is well settled that the Policy does not protect trade names or company names when this is the extent of their use.”). Complainant, not once but twice, notes in its Complaint that it holds a trade name for “Outdoor Cap Company.” Thus by Complainant’s own admission, it is claiming a domain which is similar to its trade name, not trademark, and thus its request for relief must be denied.
Complainant has offered no proof to show how it has come by the mark it
is claiming. Unlike the evidence of the
nature submitted by the Complainant in Kessel,
Keppel Tatlee Bank Ltd. v. Taylor,
D2001-0168 (WIPO March 28, 2001) to establish its common law mark, Complainant
in this dispute has submitted no evidence to show such use.
Respondent is using this name as an advertising portal that provides
access to a broad range of services. The
fact that advertising revenues may be generated by Respondent’s activity
demonstrates a legitimate interest.
Respondent registered the disputed domain name because it believed it
was a term to which no party had established secondary meaning. At the time of registration of the disputed
domain name, there was no federally registered mark for “Outdoor Cap.”
Respondent admits that it registers thousands of names, looking for
commonly used, generic, descriptive terms to which no party had exclusive
rights, including acronyms in common industry usage. Respondent avers that this evidences
Respondent’s good faith intent to register non-protected words. Where the
domain is registered because of its meaning as a word or term, such use
establishes the respondent’s legitimate interest. Respondent did not register, and is not
using, the disputed domain name in bad faith.
Respondent is in the business of providing locator services. There is no bad faith as Respondent did not
register the disputed domain with the intent to disrupt Complainant’s business,
or to confuse consumers seeking to find Complainant’s web site.
FINDINGS
(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.
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.
Complainant asserts rights in the OUTDOOR CAP mark through registration with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,054,435 issued April
22, 1997). The Panel finds that
Complainant has submitted evidence sufficient to establish rights in the
OUTDOOR CAP mark for purposes of Policy ¶ 4(a)(i). See
Complainant contends that
Respondent’s <outdoorcapcompany.com>
domain
name is confusingly similar to Complainant’s OUTDOOR CAP mark. Complainant contends that Respondent’s
disputed domain name contains Complainant’s OUTDOOR CAP mark in its entirety
and adds the generic term “company.” The
Panel finds that the addition of a generic term and the generic top-level
domain “.com” is an insufficient means of distinguishing a disputed domain name
from an established mark pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights nor legitimate interests with respect to the domain name, it is incumbent on the 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <outdoorcapcompany.com> domain name to operate a website featuring links to other various commercial websites, some of which offer products in competition with those offered by Complainant. The Panel infers from Respondent’s use, as Complainant urges, that Respondent is receiving click-through fees for each Internet user directed to a commercial website unrelated to Complainant. The Panel further finds that Respondent is not using the <outdoorcapcompany.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Moreover, Complainant contends that
Respondent is not commonly known by the <outdoorcapcompany.com> domain name or licensed to register a domain name
featuring the OUTDOOR CAP mark.
The Panel finds that Respondent has failed to sufficiently establish
that it is commonly known by the <outdoorcapcompany.com> domain name and as a result, has failed to establish
rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac
Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the trademarked
name).
Complainant contends that
Respondent is using the <outdoorcapcompany.com> domain name
to operate a website that provides links to various websites offering products
that compete with Complainant’s business.
It appears that Respondent is profiting from such use through the
collection of referral fees for each redirected Internet user. The Panel finds that such use constitutes a
disruption of Complainant’s business and is therefore 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 the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites).
Moreover, Respondent’s manner of
use of the <outdoorcapcompany.com> domain name
will likely lead to confusion among Internet users as to Complainant’s
sponsorship of or affiliation with the resulting website. The Panel finds that such use is further
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”); see
also Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain).
DECISION
Since Complainant has established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <outdoorcapcompany.com> domain name
be TRANSFERRED from Respondent to Complainant.
Dated: August 30, 2007
National
Arbitration Forum
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