Eskimos, Inc. v. William Phillips d/b/a ezcoldcash.com
Claim Number: FA0203000105950
The Complainant is Eskimos, Inc., Barrow, AK (“Complainant”) represented by Erin Rose, of Arctic Slope Regional Corporation. The Respondent is William Phillips d/b/a ezcoldcash.com, Barrow, AK (“Respondent”) represented by Stephen L. Anderson, of Anderson & Shippey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eskimosinc.com>, registered with BulkRegister.
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.
M. Scott Donahey, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 19, 2002; the Forum received a hard copy of the Complaint on March 25, 2002.
On March 20, 2002, BulkRegister confirmed by e-mail to the Forum that the domain name <eskimosinc.com> is registered with BulkRegister and that the Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the BulkRegister 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 March 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2002 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 by e-mail.
A timely Response was received and determined to be complete on April 15, 2002.
Pursuant to Forum Supplemental Rule 7, Complainant submitted a timely additional submission on April 19, 2002. Respondent also submitted a timely additional submission on April 19, 2002, in which Respondent objected to the filing of the additional submission of Complainant.
On May 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. Scott Donahey as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it has a common law trademark in the mark ESKIMOS, INC.
owing to its long use in the Arctic Slope Region of Alaska and Canada and in the town of Barrow, Alaska, in connection with its business of wholesale and retail fuel sales, and sales of auto parts and snowmobiles. Complainant contends that Respondent's domain name is identical to its common law mark. Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name at issue, nor has Respondent attempted to make any use of the domain name since its registration. Complainant contends that Respondent registered and is using the domain name in bad faith, since as a long time resident of Barrow, Alaska, Respondent must have known of Complainant's common law trademark, and since Respondent effectively offered to sell the domain name at issue to Complainant for an unstated amount in excess of Respondent's out-of-pocket costs.
Respondent contends that there are no common law copyrights recognized in Alaska. Respondent contends that he is married to an Eskimo and that he registered the domain name at issue "with the intent of hosting digital content relating to his family's culture and heritage as well as local, historical, political business or other editorial content related to [Respondent's] family, the Eskimo culture and residents of Alaska generally." Respondent intends to conduct an unspecified "Internet business," although problems with service providers have prevented Respondent from establishing any web site to date. Respondent denies he ever made any offer to sell the domain name at issue. Respondent contends that Complainant is engaged in Reverse Domain Name Hijacking.
C. Additional Submissions
Complainant submitted an additional pleading in the form of a Supplemental Affidavit. Respondent submitted an additional pleading entitled "Response and Objection to Complainant's Supplemental Affidavit." Both documents were apparently filed pursuant to National Arbitration Forum Supplemental Rule 7, which purports to permit parties to submit additional statements so long as such statements are filed within five days of the filing of the Response and are accompanied by a $250 additional submission fee. While the supplemental rules of the providers may permit the filing of such pleadings, they cannot mandate that the Panel consider such submissions. Uniform Rule 12 gives the Panel the "sole discretion" as to the acceptance and consideration of additional submissions. As neither party sought the Panel's permission to file additional submissions, the Panel declines to accept either submission.
Complainant has produced evidence that it has used the mark ESKIMOS, INC. in commerce in the North Slope Region of Alaska and Canada and especially in and around Barrow, Alaska, since 1974. The mark has been used in a unique stylized form, accompanied by a unique stylization of the initials "e" and "i." The mark has been used continuously in conjunction with Complainant's retail and wholesale fuel sales, and sales of automobile parts and snowmobiles. The distinctive mark is used on company letterhead, in advertisements, business cards, community service promotions, and promotional materials, including pens, calculators, calendars, work gloves, thermometers, and jackets. Accordingly, the panel finds that Complainant has established common law rights in the trademark ESKIMOS, INC. in the North Slope Region and in Barrow Alaska.
Respondent is a resident of Barrow, Alaska. Respondent is a retired bus driver who used to purchase fuel from Complainant's station, the only filling station in Barrow, Alaska. Respondent contends that he was unaware of Complainant's name when he registered the domain name at issue on June 21, 2000. The Panel finds Respondent's professed ignorance incredible, in light of the facts of continuous purchases by Respondent from Complainant and Complainant's community promotions. Accordingly, the Panel finds that Respondent must have been aware of Complainant's common law trademark at the time that Respondent registered the domain name at issue.
Respondent's claimed plans for the use of the domain name at issue are contradictory. Initially Respondent claims that he intends to use the domain name to promote family and cultural matters. Then Respondent alleges that he intends to use the domain name to start an "Internet business" of unspecified type. Respondent has made no use of the domain name at issue.
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
Respondent's domain name is identical to Complainant's common law trademark. See EFG Bank European Fin. Group SA v. Jacob Foundation, D2000-0036 (WIPO Mar.22, 2000) (graphic elements, which cannot be reproduced in domain name, not considered for purposes of assessing identity).
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name at issues. This shifts the burden to Respondent to show such rights or legitimate interests. See Document Techs, Inc. v. Int’l Elec. Communications, Inc., WIPO Case No. D2000-0270; See Also Inter-Continental Hotel Corp. v. Soussi, D2000-0252 (WIPO Jul. 5, 2000). Respondent has failed to show that Respondent has rights or legitimate interests in respect of the domain name at issue.
Registration and Use in Bad Faith
In evaluating the question of bad faith registration and use, the Panel can only look at the facts and circumstances surrounding the parties before it. See First American Funds, Inc. v. Ult. Search, Inc., D2000-1840 (WIPO Apr 20, 2001) (Donahey dissenting). The issue of bad faith registration and use will necessarily vary when the interests of particular parties vary. Had Respondent been a resident of Texas who registered the domain name at issue to promote a brand of ice cream, it would be difficult to find that the Texas resident had knowledge of the common law mark or that he had acted in bad faith. Where, as here, a Respondent has registered a domain name which is well known in the very small community in which both Complainant and Respondent reside and are engaged in commerce, Respondent's registration of the mark can only have been done with knowledge of the mark and was, therefore, in bad faith. See Finter Bank Zurich v.Olivieri, D2000-0091 (WIPO Mar. 23, 2000). The fact that Respondent has not used the domain name to resolve to a Web Site in the more than two years that he has held the registration rights tends to show bad faith use. See, e.g., CBS Broadcasting Inc. v. Bert Groves, D2000-0254 (WIPO May 8, 2000). However, here Respondent made a use of the domain name off the Internet that was designed to create confusion. Respondent admittedly posted an opinion on the controversial subject of an upcoming election on the bulletin board of Complainant's parent corporation. In expressing the view, Respondent averred the view was that of <eskimosinc.com>. and indicating that the posting was sponsored by <eskimosinc.com>. This was clearly intended to confuse readers into believing that Complainant was the sponsor of the views. Such conduct could well have damaged Complainant in the conduct of its business. Accordingly, the Panel finds that Respondent has used the domain name at issue in bad faith.
Reverse Domain Name Hijacking
Since the Panel finds that Respondent has acted in bad faith, there can be no reverse domain name hijacking.
The Panel finds that the domain name at issue is identical to Complainant's common law trademark, that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered and is using the domain name at issue in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the domain name <eskimosinc.com> be transferred to the Complainant.
M. Scott Donahey, Panelist
Dated: May 13, 2002
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