Norm Thompson Outfitters Inc v Russell Moran Jr. d/b/a Moran Publishing Company Inc d/b/a The Boating Information Bureau Ltd.
Claim Number: FA0111000102179
The Complainant is Norm Thompson Outfitters, Inc., Hillsboro, OR (“Complainant”) represented by Adam D. Ross, of Lane, Powell, Spears, Lubersky LLP. The Respondent is Russell Moran, Jr. Moran Publishing Company d/b/a The Boating Information Bureau, Ltd., East Islip, NY (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <waterfrontliving.com>, <waterfrontliving.net>,
<waterfront-living.net>, <water-frontliving.com>, and
<water-front-living.com>, registered with Network Solutions, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
Daniel B. Banks, Jr., as Panel Chair, Alan L. Limbury, as Panelist, and Honorable Carolyn M. Johnson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 14, 2001; the Forum received a hard copy of the Complaint on November 16, 2001.
On November 19, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <waterfrontliving.com>, <waterfrontliving.net>,
<waterfront-living.net>, <water-frontliving.com>, and
<water-front-living.com>, are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 November 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 2001 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on December 10, 2001.
Complainant and Respondent timely filed additional responses, which were considered by the panel.
On January 2, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Carolyn M. Johnson, Alan L. Limbury and Daniel B. Banks, Jr., as Panelists.
The Complainant requests that the domain name(s) be transferred from the Respondent to the Complainant.
In 1996 Complainant, through its predecessor in interest, Mark Roberts, began a mail order catalog business selling apparel, housewares, furnishings, toys and games, food items, gifts, collectibles, artwork, weather instruments and household and consumer goods. Complainant began national distribution of its Waterfront Living catalog on May 24, 1996. On November 13, 1996, Respondent registered the disputed <waterfrontliving.com> domain name.
In the spring of 1999, Respondent offered, through his father, Russell Moran, Sr., to sell <waterfrontliving.com> to Complainant for $5,000,000, an amount substantially in excess of Respondent's costs directly related to the domain name. In the alternative, Mr. Moran, Sr. offered to transfer the disputed domain name in return for a one-half partnership in Complainant's Waterfront Living mail order catalog business. Mr. Moran, Sr. also indicated that if Complainant neither purchased the domain name nor gave him an interest in the catalog business, Respondent could and might use the <waterfrontliving.com> website to sell products directly competitive with Complainant's company and drive traffic to the infringing website by leveraging Complainant's own advertising.
The disputed domain names are identical to Complainant's WATERFRONT LIVING mark; Respondent has no rights or legitimate interests with respect to the disputed domain names; and, Respondent registered and is using the disputed domain names in bad faith.
Complainant asserts that, on information and belief, Respondent has never used the name WATERFRONT LIVING to identify its business, has never been commonly known by that name and has not acquired trademark or service mark rights in that name. Respondent has not used, or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services and has never maintained active websites at those names.
Respondent has registered at least 205 other domain names that arguably infringe upon or otherwise violate the intellectual property rights of third parties. The passive holding of these multiple names is evidence of registration and use in bad faith. Respondent has registered the disputed domain names in order to prevent Complainant from reflecting its mark in corresponding domain names and for the purpose of disrupting Complainant's business.
Respondent Moran Publishing, Inc. is a legal publications company with over 12,000 users and subscribers, which generated annual revenues of $2 million. Respondent is also a publisher of Internet web sites, and is President of The Boating Information Bureau, Ltd., which operates <BoatTalk.com>, an online boating community that generates 300,000 page views per month. Respondent operates a discussion forum on <BoatTalk.com> called "Waterfront Living." Respondent has invested $600,000 in the development and operation of <BoatTalk.com>. Respondent has registered approximately 100 other descriptive boat-related domain names, many of which it uses in connection with <BoatTalk.com>.
Respondent registered the domain name <waterfrontliving.com> on November 13, 1996 for the purpose of developing a web site about life on or near the waterfront. The plan was for the site to present advertisements for waterfront real estate property as well as waterfront life related products. The domain name was chosen because it is a common descriptive term. It was not chosen in connection with Complainant's catalog. Respondent denies any knowledge of Complainant's catalog or alleged trademark at the time of registration. On May 11, 2000, Respondent established the corporation Waterfrontliving.com, Inc. in the State of Delaware, which continues to exist in good standing. Respondent has invested in excess of $10,000 in the development of the <Waterfrontliving.com> web site. On November 23, 1998, Respondent registered <waterfrontliving.net> and on March 23, 2000, registered the other three disputed domain names. Further development of the site has been delayed due to the downturn in the Internet economy.
In the spring of 1999, Mark Roberts, a representative of Complainant began soliciting Respondent through repeated phone calls, requesting the he sell the disputed domain name <waterfrontliving.com>. Respondent was adamant that he had no interest in selling the domain name but was willing to enter into an agreement whereby Complainant could offer its products for sale through the <waterfrontliving.com> and <BoatTalk.com> web sites. Complainant was persistent in its interest only to purchase the domain name and emailed Respondent on January 7, 2000, stating "I am still interested in hearing a number from you on the purchase of <waterfrontliving.com> and would like to get that out of the way before further discussions." While Complainant asserts by way of affidavit that Respondent offered to sell the domain name for $5 million in the spring of 1999, this "still interested in hearing a number" email of January 7, 2000 contradicts this. In fact, it was not until after this email that Respondent said he'd sell the name for $5 million just to get Mr. Roberts off his back. Respondent denies that he threatened to sell competing goods at <waterfrontliving.com> if Complainant failed to purchase the disputed domain or that he offered to transfer the domain name for a one-half interest in the catalog company.
Water front living is a common descriptive term composed of words in the English language meaning "a manner or style of life" (living) near "land abutting a body of water." This common descriptive term is subject to substantial third party use. A query run on the Internet search engine Google.com yielded 2,700 third party search results for "waterfront living."
Complainant filed a trademark application for the common descriptive term Waterfront Living on May 23, 2001, almost 5 years after Complainant registered the domain name. The U.S. Patent and Trademark Office reports that "no final determination as to the registrability of the mark has been made."
Complainant has no enforceable rights to the mark WATERFRONT LIVING because it did not acquire, nor did it even file, its trademark application until after Respondent registered the disputed domain names. Also, Complainant has no common law trademark rights to WATERFRONT LIVING because it has not acquired secondary meaning through use by Complainant.
Respondent has rights and legitimate interest in the domain names in that, prior to the initiation of this dispute, Respondent had planned to use the disputed domains in connection with a web site to provide advertisements and information about waterfront real estate as well as products related to waterfront living. Respondent is a legitimate web site publisher, not a domain name speculator.
Complainant has not demonstrated that the domain names were registered and are being used in bad faith. There is no evidence that they were registered with the intent to sell to Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers. In fact, Respondent registered the original <waterfrontliving.com> domain name almost five years before Complainant even filed a trademark. Respondent could not have registered a domain name with bad faith intent in connection with a trademark holder not in existence at the time the domain name was registered. Also, there is no evidence that Respondent had any knowledge of Complainant's use of waterfront living at the time of registration.
Regarding the other domain name registrations of Respondent, there is no evidence that any were registered or used in bad faith. The overwhelming precedent under UDRP policy holds that ownership of common word domain names, even for the purpose of resale, does not establish bad faith.
Respondent also claims that Complainant's case is one of Reverse Domain Name Hijacking on the grounds that Complainant knew, at the time of filing of this Complaint, that Respondent had registered the disputed domain names before Complainant had ever filed for a trademark. This constitutes abuse of the administrative process
C. Additional Submissions:
Complainant's additional response asserts that Respondent has engaged in a pattern of Cybersquatting in that he has registered numerous domain names that are identical or substantially similar to marks in which third parties arguably hold federally registered rights. Complainant also reasserts its claim that Respondent sought commercial gain from registration of the disputed domain names as evidenced by the offer to sell for $5 million. Complainant says that Respondent has no legitimate interest in the disputed domain names given his failure to make any trademark use of the term waterfront living. Although he has incorporated Waterfrontliving.com, Inc., he does not allege any business being conducted by that corporation. Complainant further asserts that the WATERFRONT LIVING mark is clearly registrable and that registration is not a precondition to trademark rights.
In his additional response, Respondent says that he is not guilty of cybersquatting because his other domain registrations are descriptive terms; that he has never sold, nor offered for sale those domain names; that there is no evidence that they were registered or used in bad faith; and, Respondent operates a boating web site which is why he registered boat-related domain names. Respondent further asserts that he did not seek commercial gain from the domain names. The Complainant contacted him. Also, Respondent claims that he does have a legitimate interest in the domain names because of his boating business. Finally, Respondent says that Complainant has not achieved registration of his alleged trademark and it is not certain that he will. While Complainant claims exclusive use of waterfront living, it fails to address the undeniable fact that a Google.com search demonstrated 2,700 third-party uses of the mark.
1 - The disputed domain names are identical to Complainant's claimed WATERFRONT LIVING trademark.
2 - The Respondent has rights or legitimate interest in the disputed domain names.
3 - The disputed domain names were not registered in bad faith.
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.
Identical and/or Confusingly Similar
There is no question that the disputed domain names are identical to Complainant's claimed WATERFRONT LIVING mark except for the inclusion of the top-level domain designations ".com" and ".net." However, Complainant has not received a trademark registration for its mark, which is a descriptive term. Also, this Panel is not satisfied that Complainant's use of that mark, prior to Respondent's original domain name registration, is sufficient to establish secondary meaning which would give Complainant rights in the mark to the exclusion of third parties.
Rights or Legitimate Interests
This Panel finds that Respondent has rights and legitimate interests to the disputed domain names, where Complainant is unable to prove rights in its mark. Complainant has not presented evidence that satisfies this panel that it has exclusive rights to the descriptive term WATERFRONT LIVING considering that it had only used that mark a few months prior to Respondent's original registration; that it did not seek trademark registration until almost five years after Respondent's original registration; and, that there appears to be extensive third-party use of that term as evidenced by the Google.com search. See CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”); see also Philippe Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum May 17, 2000) (finding that Respondent has rights and legitimate interests where Complainant failed to show that he should be granted exclusive use of the domain name, <daf.com>, as many other organizations use the generic term "DAF" and that it was not available to him at the time he commenced business utilizing the name).
It also appears that Respondent can claim that he is commonly known by the disputed domain names, as he established the corporation “Waterfrontliving.com, Inc.” in the spring of 2000 and has expended in excess of $10,000 in developing the <waterfrontliving.com> site. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name).
Finally, Respondent says that, prior to initiation of this dispute, he had a business plan to develop a website at the disputed domain names, which advertised the sale of and information regarding waterfront real estate. And, it is undisputed that Respondent has a boating business and an active web site promoting that business which concerns living on the water. See David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding Respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute).
Registration and Use in Bad Faith
Respondent, on pages 2 and 3 of its Response, engages in a lengthy discussion of the facts surrounding Complainant’s allegation of Respondent’s bad faith pursuant to Policy ¶ 4(b)(i).
Respondent contends that Complainant repeatedly contacted Respondent asking for a “figure” needed in order for Respondent to transfer the disputed domain name to Complainant. And, that the figure he finally submitted was done in order to get the Complainant "off his back." This is supported by the fact that after this figure was given to Complainant, it later sent an email to Respondent wanting a number. Under these circumstances, it does not appear that the offer was serious or that the Complainant considered the offer to be serious. See Sumner v. Urvan, D2000-0596 (WIPO July 24, 2000) (finding no bad faith where Respondent did not contact Complainant first, but rather, Complainant first contacted Respondent about purchasing the domain name); see also Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (finding "Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name").
Respondent contends that bad faith cannot be established where there is “absolutely no evidence” that Respondent had knowledge of Complainant’s trademark when Respondent registered the disputed domain names. The fact that Respondent had only began distribution of its magazine four months prior to Respondent’s registration of the disputed domain names, and that Respondent has yet to obtain registration of its WATERFRONT LIVING mark also proves Respondent’s lack of knowledge of the existence of Complainant’s mark. In addition, the Complainant knew about the registration of the disputed domain names for an extensive period of time and did nothing except to keep checking to see if domain name had become an active site.
Respondent contends that it has not exhibited a pattern of registering infringing domain names, as other domain names it has registered have merely been common descriptive terms, such as the <oceanfrontliving.com> domain name. In addition, there is no evidence before this Panel that Complaints have been filed or claims pursued against the Respondent in connection with these other domain names or that Respondent ever attempted to sell or use those names in bad faith.
Having found in favor of the Respondent, there is no need to address Respondent's claim of reverse domain name hijacking.
It is the unanimous decision of this panel that the Complainant's request that the disputed domain names be transferred is denied.
Daniel B. Banks, Jr., Alan L. Limbury, Esq., & Hon. Carolyn M. Johnson, Panelists
Dated: January 14, 2002
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