The Vail Corporation and
Vail Trademarks, Inc. v. Resort Destination Marketing c/o
Claim Number: FA0711001106470
Complainant is The Vail Corporation and Vail
Trademarks, Inc. (“Complainants”), represented
by Jennifer Daniel Collins, of Faegre & Benson LLP, 1700 Lincoln St., Suite 3200, Denver, CO
80203-4532. Respondent is Resort
Destination Marketing c/o
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <beavercreekreservations.com> and <vailresortvacations.com>, registered with Godaddy.com, Inc.
The undersigned each certify that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainants submitted a Complaint to the National Arbitration Forum
On November 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 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, administrative and billing contacts, and to email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
On December 10, 2007 an Additional Submission compliant with Supplemental Rule 7 was received from Complainant.
On December 18, 2007 and Additional Submission compliant with Supplemental Rule 7 was received from Respondent.
Complainants request that the domain names be transferred from Respondent to Complainants.
Complainant The Vail Corporation (“Complainant
Vail”) is a corporation duly organised and existing under the laws of the State
Complainant Vail Trademarks Inc. (“Complainant
Vail Trademarks”) is a corporation duly organized and existing under the laws
of the State of
Complainant Vail owns and operates a number of
ski resorts including the Vail and Beaver Creek resorts in
Complainants submit that over the years
Complainant Vail and other commercial undertakings have developed an
international reputation for quality and value. Complainants have submitted evidence that the
resorts have a well established national and international reputation. Complainants have provided evidence that they
spend over USD$ 20 million per year promoting their
Complainant Vail Trademarks is the owner of US
registered trademarks on the principal register for the mark
Complainants argue that the
Complainant Vail is the owner of the domain names <vail.com>, <beavercreek.com>, <vailresorts.com> and <vail.snow.com> and <beavercreek.snow.com> and has established a website to which these addresses resolve, advertising the Vail and Beaver Creek resorts, and services relating to the resorts including hotel management, vacation planning and online travel booking services.
Complainants submit that Respondent was an
authorized wholesale partner of Complainant Vail pursuant to an agreement in
writing described in the Complaint (and hereinafter) as the “Vail Wholesale
Agreement.” Complainants further submit
that the Vail Wholesale Agreement specifically addressed the use of the
Complainants submit that Respondent’s registration and use of the domain names in dispute are in breach of the Vail Wholesale Agreement and Complainant Vail invited Respondent to its offices on two occasions in the summer of 2007 to discuss Respondent’s breaches of the agreement and the continuing unauthorized use of the domain names in dispute. On September 11, 2007 Complainants sent a cease and desist letter to Respondents requesting inter alia that Respondent transfer the domain names to Complainants and terminated said Vail Wholesale Agreement.
Complainants submit that the domain names in
dispute are confusingly similar to the trademarks
Complainants submit that the domain name <beavercreekreservations.com> entirely appropriates Complainant’s BEAVER CREEK trademark and merely adds the descriptive or generic term “reservations.” Complainants submit that the word “reservations” relates to the services provided by Complainants under the BEAVER CREEK mark.
Similarly the domain name <vailresortvacations.com> appropriates Complainants’ well
Complainants submit that Respondent has no rights or legitimate interest in the domain names in dispute. Respondent has no trademark or intellectual property rights in the domain names. Complainants have not granted any licence or otherwise authorized Respondent to use their above mentioned trademarks as a domain name. Respondent is not using the domain names in connection with bona fide offering goods and services because it is merely using Complainants’ marks to confuse and divert Internet traffic.
When an Internet user inputs the domain names <beavercreekreservations.com> or <vailresortvacations.com> into a web browser the user is transferred to Respondent’s websites which gives the user the ability to book vacation rental properties, ground and air transportation, as well as lift tickets and ski rentals that are in competition with Complainants’ services. Such misdirection of consumers through the use of Complainants marks does not qualify as a bona fide offering of goods and services under the Policy.
Respondent is not making any legitimate non-commercial or fair use of the domain names in dispute. Complainants believe that Respondent is in receipt of commercial gain from its websites to which the disputed domain names resolve.
Complainants submits that at the time domain names were registered, Complainants’ marks were sufficiently distinctive and well-known to give constructive notice to Respondent that the registration of the domain names in dispute would violate Complainants’ rights.
Complainants submit that Respondent has used the domain names in bad faith by creating a likelihood of confusion with Complainants’ marks for financial gain. Complainants believe that Respondent originally registered the domain name to attract Internet users to a website they might mistakenly believe was owned with Complainants’ services.
Finally, Respondent’s bad faith is evidenced by Respondent’s multiple breaches of the Vail Wholesale Agreement: the agreement expressly prohibits a wholesaler from using Complainants’ marks “to represent itself as an affiliate or agent of Vail;” the agreement prohibits a wholesaler from using “a domain name other than the Wholesaler’s brand that could suggest that the site is owned by the resort or the resort’s central reservations.”
Moreover, although Respondent agreed to transfer the domain name <vailresortvacations.com> to Complainants, it has failed so to do.
While Complainant has demonstrated ownership of several federal trademark registrations, such registrations do not convey a monopoly in the underlying geographic term. To the extent that the domain names are geographically descriptive, they are not confusingly similar.
Respondent submits that this proceeding arises on the basis of two geographic terms in which the Complainant has obtained limited rights in connection with the operation of certain facilities. Furthermore, the websites to which the disputed domain names resolve were used with the Complainants’ knowledge, consent, and cooperation prior to the recent development of a disagreement between the Parties.
The domain names are descriptors of the respective services offered through Respondent’s websites - namely, rental reservations of resort and vacation properties by their owners in Vail, Colorado and in Beaver Creek, Colorado.
Both of the terms at
issue are geographically descriptive, and have a limited trademark value. An analogous situation would arise if, for
example, Walt Disney had decided to name his theme parks “
While Complainant’s federal trademark registrations each relate to the provision of skiing services, and the operation of resort hotel and restaurant services, they do not confer a monopoly in the use of either “Vail” or “Beaver Creek” as a geographic reference to such services, nor to truthful nominative reference to those engaged in arranging booking and travel to the Complainants’ own facilities.
The town of
Respondent sets out the history of the two communities and their respective names from Internet site <coloradoskihistory.com>. It is noteworthy that the data and in particular the dates are disputed by Complainants.
Respondent submits that the facts in casu are similar to those in other proceedings under the Policy in which a complainant has attempted, via a limited right in certain development and property resort operation activities, to expansively appropriate - beyond the scope of such right - all trade referring to the primary commercial activities in those geographic areas. In this regard Respondent cites Maui Land & Pineapple Co., Inc. & Kapalua Land Co., Ltd v. Sullivan Props., Inc., FA 95544 (Nat. Arb. Forum Nov. 6, 2000); City of Hamina v. Paragon Int’l Projects Ltd., D2001-0001 (WIPO Mar. 12, 2001) Port of Helsinki vs. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001).
This is not the first
time under the Policy that a ski resort operator in the western
Respondent submits that
each of the
Similar results have obtained in Proceedings before WIPO such as Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd, D2000-0617 (WIPO Aug. 17, 2000), concerning the skiing destination <stmoritz.com> in which the City of St. Moritz, Switzerland claim was refused on the basis that its commercial resort interests did not convey a monopoly in the underlying geographic term and hence to the domain name <stmoritz.com>.
Respondent was launched in 2005, and shortly thereafter acquired the ongoing business and contracts of Moguls Mountain Travel, which began in 1982, and has long been a leader in luxury resort bookings, and in particular mountain resort communities. The Respondent currently projects its 2007 sales in the resort marketing industry to reach US $30M.
Respondent has long been operating a substantial business in the field of resort destination rentals generally, and has been specifically using the domain names as a booking agent for properties in the respective Vail and Beaver Creek locales. Initially, Respondent did so under an Agreement with Complainant. When the Agreement was later terminated, Respondent made appropriate changes to its advertising arrangements and website configuration to provide such services to legitimate owners of accommodations in those areas generally.
Respondent submits that a key point of contention concerns the scope of authorization provided by Complainants to Respondent in the Vail Wholesale Agreement exhibited by Complainant in an annex to the Complaint. Respondent makes a number of submissions relating to the construction of the Agreement.
Respondent refers to inter partes correspondence and submits that Complainant was provided with express notice of Respondent’s use of the <beavercreekreservations.com> domain name for use in booking the Complainant’s properties, and the Complainant expressly approved of Respondent’s use of the domain name prior to the Wholesale Agreement dated June 7, 2007.
Respondent submits that Complainant is therefore estopped from arguing that the domain name was registered in violation of that agreement, or that use of the domain name was not authorized or approved by the Complainant.
Respondent submits that, having cooperated with the Respondent in the development and operation of these domain names, for a substantial period of time, Complainants’ aim in this Proceeding is to reap the sole benefit of Respondent’s substantial promotional efforts and legitimate operation of these domain names.
At no time has Respondent attempted to pass itself off as Complainant or to present the respective websites as anything other than what they are - i.e. website at which visitors may book accommodations in the respective Vail and Beaver Creek areas. The choice as to whether the listed properties are those of Complainants or other legitimate renters in those areas, has been entirely determined by the Complainants. Respondent has respected Complainant’s demand to discontinue under the agreement, and has terminated the agreement in accordance with its own terms, by no longer offering bookings at Complainant’s properties. That decision was entirely the Complainants’ to make, but does not render Respondent’s conduct under the agreement or after termination of the agreement, and prior to this dispute, to have been illegitimate. Respondent continues to disagree that its use of materials provided by Complainant, and its operation of either website constituted a representation to the public that Respondent was acting as Complainant’s central booking system.
Indeed, Complainant’s own websites are readily accessible at the much simpler and direct Internet addresses to which Complainants’ domain names <vail.com> and <beavercreek.com> resolve.
Complainant is here seeking to curtail legitimate trade by asserting that any use of these terms by any party legitimately trading in the indicated geographic areas must perforce be violating Complainants’ rights. Complainants’ implicit assertion of such a broad right to control commerce conducted in reference to these geographic areas is simply beyond the narrow trade or service mark rights afforded under reasonable principles of trademark law or unfair competition, and itself is an attempted restraint of legitimate trade.
Hence, the second element is not proven.
With respect to <beavercreekreservations.com>, there is no question that the Complainant expressly approved and ratified the registration and use by the Respondent, and further renewed its agreement in the succeeding year. The fact that the domain name was registered and used for the mutual benefit of Complainant and Respondent precludes the finding of bad faith registration and use. In this regard Respondent cites the decision of the panel in Iberostar Int’l A.G. v. Leisure Travel Inc., FA 1045076 (Nat. Arb. Forum Sept. 24, 2007): “This Panel cannot find any of the above circumstances [of bad faith] in the present case. Respondent registered the domain name and operated a website under that name to the mutual benefit of both itself and Complainant, working with Complainant’s Vice President of Sales and Marketing. The Panel finds that Respondent did not intend to sell the domain name to Complainant, but rather intended to and did build up traffic for its travel agent services at <goiberostar.com>. Respondent did not intend to divert or disrupt Complainant’s business, or try to pose as Complainant. Indeed, Complainant generally encourages travel agents to make bookings for Iberostar and therefore Respondent cannot be impugned for allegedly stealing bookings from Complainant.”
Complainant’s allegation that Respondent agreed to transfer either of these domain names to Complainant is not supported by the record of the parties’ correspondence, and is particularly odd. After a dispute developed, and Complainant, having previously provided approved graphics, text, and other marketing materials for Respondent’s use with these domain names, Respondent terminated the agreement. Respondent further made it clear that it intended to continue using the domain names while no longer hosting websites using the Complainant’s materials, approved text, and so forth. Again, Respondent does not dispute that the agreement provided Complainant with the remedy of termination, contingent on matters assigned to Complainant’s discretion. Complainant has received its full remedy in Respondent’s termination of the agreement.
Complainant also cannot seriously contend it did not provide an array of marketing materials, graphics, text, and links for Respondent to use during the course of the agreement. It is only with great regret that Respondent (sic) determined to terminate the agreement, ending 20 years of mutually beneficial dealings with the Respondent’s Moguls Mountain Travel. Furthermore, the Respondent no longer engages in bookings for Complainant’s properties - not only through the disputed domain names - but also through the Respondent’s <skicolorado.com>, <moguls.com>, <groupreservations.com> or any other site in the Respondent’s extensive resort marketing network.
Respondent submits that this is not a cybersquatting case. Rather, it is a dispute over the original rightful ownership of a domain name between two parties who had a business relationship for several years.
The Policy does not
provide a forum for contract disputes. In
similar circumstances the panel in Discover
The Policy is not
designed to resolve all disputes concerning domain names. The jurisdiction of this forum is limited to
providing a remedy in cases of “the abusive registration of domain names,” or
The primary question under the heading of “bad faith” was whether either of the domain names was undertaken with abusive intent. Respondent maintains they were not, and that the registrations were undertaken in the good faith belief that the domain names were within the terms of the Agreement and furthered the aims of the Agreement. Complainant and Respondent simply have a genuine disagreement on that point, and Complainant has exercised its right to terminate the agreement.
Accordingly, the websites to which both of the domain names in dispute resolve, expressly and prominently identify that they are operated by “A Resort Destination Marketing Company,” and identify Respondent as the copyright owner and operator of the respective websites.
Accordingly, the third element of bad faith registration and use is not proven.
C. Complainants’ Additional Submissions
In Additional Submissions Complainant states
that the majority of panels have ruled under the Policy that it is sufficient
for a Complainant to demonstrate evidence of a valid trademark registration to
satisfy the first element of the test as set out in Policy ¶ 4(a)(i) inter alia citing Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainants submit that their trademarks are
not geographically descriptive and Respondent has grossly mischaracterised the
history of the Vail and Beaver Creek Resorts. At the time Complainants developed the resorts
there was no pre-existing municipality, town or community known as Beaver Creek
and similarly the town of
Respondent was aware of Complainants’ rights
when registering the domain name <beavercreekreservations.com>
in October 2006 and Respondent registered the <vailresortvacations.com> domain name on
Respondent has misconstrued the inter partes correspondence in arguing that Complainants’ employees granted permission or approved use of the <beavercreekreservations.com> domain name.
Complainants submit that this is not a contract dispute. The dispute relates to Respondent’s actions of taking advantage of the unregulated domain name registration system to register domain names that wholly incorporate Complainant’s trademarks and have benefited commercially from the goodwill that Complainants have fostered in their marks over many years.
D. Respondent’s Additional Submissions
In unnecessarily prolix further submissions Respondent submits that Rule 7 of the Policy does not permit
Complainant to file further Additional Submissions unless requested by the
Panel as they have not been so requested in
casu Complainant’s additional submissions should be disregarded by the
Panel. Citing Creative Curb v. Edgetec Int’l
Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) and Cappella
v. Cappella Drumsticks,
FA 393256 (Nat. Arb. Forum,
repeats the assertion that both Vail and Beaver Creek are geographical place
names and that this has been recognized by the USPTO. Third parties have incorporated
Mark BEAVER CREEK INTERNATIONAL
CULINARY CLASSIC, registration number 2,437,023, registration date March 20, 2001, owner Beaver Creek Resort
Respondent submits that the Policy was designed to address clear-cut cases of bad faith domain registration and cybersquatting and is not intended to take the place of a judicial forum where there are issues of descriptiveness, nominative use, agency, contract construction, trademark infringement, and fair use - all of which are present in this Proceeding. Complainant is asserting that Respondent is violating contractual obligations and that is beyond the limited scope of the Policy. The Policy provides inadequate procedures and remedies for such disputes.
Respondent goes on then to argue issues relating to the contractual relationship that existed between the Parties.
The Panel finds that it does not have jurisdiction to deal with the Complaint relating to the domain name <vailresortvacations.com> as the issues in dispute are more properly categorized as a contract dispute. In the circumstances the Panel makes no finding in relation to this domain name and dismisses the Complaint as the issues are outside the scope of the Policy.
The Panel finds that the domain name <beavercreekreservations.com> is a combination of the geographical place name Beaver Creek and the generic/descriptive term “reservations.” Complainant has rights in the trademark BEAVER CREEK. The domain name <beavercreekreservations.com> is confusingly similar to the mark BEAVER CREEK in which Complainant has rights. Complainant does not have exclusive rights to the use of the words BEAVER CREEK. Respondent has legitimate interests in the domain name <beavercreekreservations.com>.
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.”
Policy ¶ 4(a) 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.
Preliminary Issue: Contract Dispute Outside the Scope of the UDRP
Respondent has asserted that the issues in dispute are beyond the scope of the Policy. Complainant has rejected this assertion. There was a contractual relationship between the Parties. Until the Vail Wholesale Agreement was terminated, Respondent was for a period an authorized wholesaler appointed by Complainant.
Complainant contends that it terminated the agreement when it became aware of Respondent’s registration of the <beavercreekreservations.com> and <vailresortvacations.com> domain names in the summer of 2007. However, Respondent asserts that Complainant knew of Respondent’s registration of the <beavercreekreservations.com> and <vailresortvacations.com> domain names, prior to that time and in fact alleges that Complainant approved of Respondent’s registration and use of the domain names and in particular the <beaverrcreekreservations.com> domain name.
The Panel is of the view that these allegations and counter allegations
are more properly characterized as a contract dispute, relating to the
construction of the Vail Wholesale Agreement, and as such, is outside the scope
of the UDRP. In Love v.
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility….Further, the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.
Additionally, in the case of Hachette
Filipacchi Media U.S., Inc. v. Urthere Prods., Inc., D2002-0143 (WIPO
We find no evidence of bad faith registration by Respondents of the domain name <charterfleet.com>. Rather, it appears that the domain name was registered in good faith pursuant to an agreement between the parties. We do not believe that the termination of the agreement changes the nature of the initial registration. Whether termination of the agreement ends Respondents entitlement to the domain name is a matter of contractual interpretation outside the scope of the Policy.
The issues regarding <vailresortvacations.com> involve similar circumstances to the aforementioned cases and appear to stem from a contractual dispute between Complainant and Respondent and do not make out a case of abusive registration or cybersquatting. See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (concluding that when the respondent registers a domain name on behalf of the complainant and then refuses to relinquish control over the domain name registration, the cause of action is for breach of contract or fiduciary duty and is thus outside the scope of the UDRP Policy); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Jan. 2, 2007) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
The domain name <vailresortvacations.com> was registered on
The Panel is of the view that it has
jurisdiction to consider the Complaint as it relates to the domain name <beavercreekreservations.com>
which was registered on
Complainants have satisfied the Panel that they have rights in the BEAVER CREEK mark through the above referenced United States Patent and Trademark Office (“USPTO”).
The Panel accepts that the domain name <beavercreekreservations.com> is confusingly similar to Complainant’s BEAVER CREEK mark as it adapts the mark in its entirety. The addition of the generic/descriptive term “reservations” does not distinguish the domain name in any way and given the fact that Complainants’ rights relate to services in the tourism industry the addition of the word “reservations” may in fact contribute to the potential for confusion.
Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a).
The domain name <beavercreekreservations.com> is a combination of a geographical place name and generic/descriptive term “reservations.” Respondent has established a tourist reservations business at the website to which the domain name resolves.
Once a complainant presents a prima facie case, a respondent has the burden of coming forward with evidence of rights or legitimate interests. In casu Respondent has done that.
The basis of Complainants’ argument is that Respondent cannot have a legitimate interest in the domain name since the domain name takes predatory advantage of Complainants’ rights in the name BEAVER CREEK. At best Complainant has raised an issue involving a legitimate dispute over trademark rights, and that issue is not susceptible to adjudication under the UDRP. See e.g. Public Co. Accounting Oversight Bd. v. Nagel, FA 290974 (Nat. Arb. Forum Aug. 17, 2004).
The Panel is satisfied that BEAVER CREEK is a geographical place name and that Complainant has not acquired the exclusive right to use of these words. See Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the <stmoritz.com> domain name where it resolved it to a website that provided information about the city of St. Moritz, as well as other countries, general
news, and net cafes); see also Travel Berkeley Springs, Inc. v.
It follows that Complainant has not satisfied the second element of the test in Policy ¶ 4(a).
As Complainants have not succeeded in the second element of the test in Policy ¶ 4(a) of the Policy in respect of <beavercreekreservations.com> there is no necessity for the Panel to consider the allegations of registration and use in bad faith.
As the issues in dispute lie outside the scope of the ICANN Policy, the Panel concludes that relief requested shall be DENIED.
Dated: January 2, 2008
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