Solstice Marketing
Corporation v. GreenTree Hosting, LLC.
Claim Number: FA0712001124299
PARTIES
Complainant is Solstice Marketing Corporation (“Complainant”), represented by Rachel
E. Branson, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solsticewear.com>,
registered with Wild West Domains, Inc.
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
On
On January 2, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 22, 2008 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
postmaster@solsticewear.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, a
Complainant submits that, based on
substantial use and advertising, Complainant’s stores bearing the SOLSTICE
service mark, as prior advertised and promoted through Complainant’s website,
are known to consumers as a source of high-quality sunglasses.
Complainant submits that its predecessors in
title used and registered the mark SOLSTICE long before Respondent registered
the website at issue. Complainant’s
predecessor in interest first used the mark SOLSTICE for retail store services
featuring sunglasses more than seven years ago, at least as early as
Complainant’s service mark SOLSTICE was
registered for “retail store services featuring sunglasses” by the USPTO, on
November 14, 2000. Complainant filed a Declaration of Incontestability on
Addressing Respondent’s use of the disputed
domain name, Complainant submits that although Respondent’s website is dead, it
is still registered to Respondent. On
information and belief the disputed domain name was once used for a parked
website with links to Solstice sunglasses.
Complainant has made several attempts to reach Respondent through
registered mail with the WHOIS information provided, but the letter was
returned. Complainant also sent a letter
to the Registrar, who acknowledged receipt, but Respondent still has not
cooperated with Complainant’s request to transfer the domain. Instead, Respondent has taken down the site,
but refuses to relinquish control.
Complainant submits that the disputed domain
name, <solsticewear.com>,
is both identical and confusingly similar to Complainant’s registered mark
SOLSTICE. The other element “wear,” is
descriptive and does not distinguish Respondent’s domain name from
Complainant’s registered trademark. Complainant cites American Security Bank v. American Security & Trust Co., 571
F.2d 564, 567 (CCPA 1978) (holding that American
Security Bank is “legal equivalent” of American
Security); see also L.F.P., Inc.
v. Hotpics Int'l, FA 109576 (Nat. Arb. Forum May 24, 2002); Arthur Guinness Son & Co. (
Complainant submits that the domain name, <solsticewear.com>, includes an
identical counterfeit of Complainant’s mark SOLSTICE, combined with a
description of the same services for which Complainant’s mark is registered
which has been prominently used on Complainant’s home page at <solsticestores.com>
since at least December 2001.
Therefore, <solsticewear.com> is legally identical to and confusingly
similar to Complainant’s mark SOLSTICE, and transfer is available to
Complainant under Paragraph 4(a)(i) of the Policy.
Complainant submits that Respondent has no rights or legitimate
interests in the disputed domain name. Complainant’s predecessors in
title began using the mark SOLSTICE at least as early as November 5, 1999,
predating Respondent’s
registrations by more than five years.
Complainant’s predecessors in title filed an application to register the
mark on
Due to this prior use and registration of the
mark SOLSTICE, Respondent has
not acquired any rights or legitimate interests in the domain name. Indeed, Respondent has not used the domain name in connection with a bona fide offering of goods and
services.
Owners of parked websites, such as Respondent,
monetize domain names by collecting revenue on a pay-per-click basis from
search engines who sell generic terms and trademarks to third-party advertisers
as keywords. See
generally Gov't Employees Ins. Co. v. Google, Inc., 77 USPQ2d 1841 (E.D.Va. 2005).
While buying and selling generic terms as domain names and turning the web traffic into cash
is permissible, “domainers” have no right to monetize another person’s trademark (emphasis supplied), and the
practice of doing so is the subject of
growing condemnation. Domain name monetization is the subject
of a class action complaint in Draucker Dev’p & True Communication Inc.
v. Yahoo! et al., No. 2:06-cv-02737-
The weight of UDRP decisions provide that the
reselling of domain names or using them for advertising links “can in certain circumstances represent
legitimate interests” but is less
likely to be deemed legitimate when the
name is identical or confusingly similar to a famous or distinctive mark. Incorp Services,
Inc. v. RareNames, WebReg, FA 559911 (Nat. Arb. Forum Nov. 10, 2005)
(emphasis added).
The name SOLSTICE is neither a generic nor
descriptive term. On the contrary, it is
identical to Complainant’s distinctive service mark used by Complainant and its
predecessors for the past 30 years.
Therefore, Respondent cannot make the argument that its use of the
disputed domain name constitutes a legitimate interest, even under the liberal
standards that permit domain name monetization.
The use of generic and descriptive terms as
domain names for redirecting Internet traffic to websites with sponsored
advertising is also questionable.
Arbitrators have held that such domain name monetization is not
specifically approved as a bona fide commercial
activity, because domainers do not use their domain names in connection with
the offering of goods or services. See Media Gen. Commc’ns, Inc.
v. Rarenames, WebReg, D2006-0964
(WIPO Sept. 23, 2006) (citing cases). Paragraph
4(c)(i) of the UDRP contemplates a bona fide
offering of goods and services by Respondent, rather than simply parking the
domain where Respondent or a third party can generate click-through advertising
revenues from parties advertising their own goods and services. Mobile Commc’n Serv. Inc. v. WebReg, RN,
D2005-1304 (WIPO Feb. 24, 2006); accord,
KIS v. Anything.com Ltd.; Gerber
Products Co. v. LaPorte Holdings, D2005-1277 (WIPO Feb. 8, 2006).
In the present case, Respondent cannot claim
that it attempted to engage in bona fide
commercial activity because the site does not offer goods and services. Moreover, Respondent could not have made a bona fide use of the domain name for selling eyewear because the
domain name incorporates Complainant’s identical, pre-existing, registered
trademark SOLSTICE for retail store services featuring sunglasses. Furthermore, Complainant’s registration of
SOLSTICE in the U.S. Patent and Trademark Office gave Respondent constructive notice of Complainant’s claim of
ownership of the mark SOLSTICE. Lanham Act Sec. 22, 15 U.S.C. Sec. 1072. With this constructive notice of Complainant’s
claim of ownership, and with no usage of SOLSTICE of its own, Respondent could
not in good faith adopt the SOLSTICE mark. Still further, Complainant’s predecessors in
title, corporate relations of Complainant, first registered the domain name <solsticestores.com>
on December 19, 2001 and used the mark SOLSTICE on <solsticestores.com>
shortly after. All of this history
occurred before Respondent registered the domain name including the SOLSTICE
mark on
Given this history of prior use of the
registered mark SOLSTICE, Respondent
did not use and could not have used the domain name <solsticewear.com>
for any bona fide offer of goods or
services in the optical field as claimed by Respondent. Hence
Respondent lacks any rights to or legitimate interest in <solsticewear.com>.
Complainant submits that the disputed domain names have been
registered and are being used in bad faith.
Paragraph 4(b) of the UDRP specifies that
certain circumstances, “in particular but without limitation, if found by the
Panel to be present, shall be evidence of the registration and use of a domain
name in bad faith.” Bad faith may be shown by “(i) circumstances indicating
that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in excess
of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or (iii) you
have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or (iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
website or other on-line location, by creating a likelihood of confusion with
the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your website or location or of a product or service on your website
or location.”
The essence of bad faith under the UDRP is
the acquisition of a domain name for no reason other than to exploit the value
that the name would have as a trademark
or service mark to another person.
Respondent can hardly claim to
have registered the domain in good faith.
Respondent selected this domain name incorporating a well known
trademark and an associated website for no purpose other than to profit from
the goodwill of that mark by attracting Internet users and directing them to the
websites of third parties offering goods and services.
In conclusion, Complainant submits that more
than thirty (sic) years after
Complainant’s predecessors began using the mark SOLSTICE, more than four years after
Complainant’s predecessors registered the domain name <solsticestores.com>,
Respondent registered the disputed domain name.
The distinctive element of the disputed domain name is identical to
Complainant’s registered mark SOLSTICE, and includes a descriptive term for
similar services for which SOLSTICE has been used and registered.
Respondent registered the domain name <solsticewear.com>
for the sole purpose of benefiting from Complainant’s registered trademark and
good will, evidenced by the site remaining a parked website until
recently. Accordingly, the website was
created in bad-faith, which is prohibited by the Policy. Therefore, the disputed website should be
transferred to Complainant.
B. Respondent
Respondent submits that there are a substantial
number of inaccuracies in the Complaint. Respondent does not put Complainant’s
service mark registration or its claimed trademark rights in issue.
Respondent denies that it never parked the
domain with links to or intent to link to Complainant’s website. Respondent
states that its ownership of the domain name is entirely related to its
admiration of the automobile, Pontiac Solstice and the development of a website
portal about that automobile.
Respondent states that its ownership of the
domain name in dispute, is in no way, or has ever been associated with, linked
to, or in any form deriving revenue, traffic or misrepresenting itself as an
extension of Complainant’s website <solsticestores.com>.
Respondent has exhibited the results of two
searches performed at <archive.org>. A search for “www.solsticewear.com”
and “solsticewear.com” return no search results showing any website data
showing links to Complainant’s websites.
Contrary to Complainant’s statement, Respondent
has never been contacted by Complainant in regards to Respondent’s ownership of
the domain name in dispute. Respondent has never received a registered letter
to Respondent’s post office box or street address and the Complaint does not
include any factual data showing that such registered mail has in fact been
sent. Respondent’s WHOIS information with mailing address is accurate.
Respondent has only received a copy of the Complaint but has never received any
other contact from Complainant or its legal representatives.
Except for annual renewal notices Respondent
has also never received any contact from the Registrar, with regard to the
domain name in dispute or any disputes surrounding it.
Complainant submits that instead of
acknowledging the Complaint, Respondent has taken down its website. This is a
completely inaccurate statement as Respondent has never received any contact,
but furthermore the website itself was taken offline by Respondent during a
transition of physical hardware that hosted the website.
At the time of filing the Response the domain
name in dispute is part of an active web portal designed to attract visitors
that are interested in the Pontiac Solstice automobile. Respondent’s specific
use of the domain name is to promote custom wearable items showing the
purchasers love, admiration and enjoyment of the Pontiac Solstice automobile.
The purchaser in this case is a person or persons or entity that purchases a
custom made product like a T-shirt or hat or other items of wearable clothing
available on Respondent’s website.
Respondent denies that Respondent’s use of the
domain name is legally identical to and confusingly similar to Complainant’s
SOLSTICE mark. Respondent does not include any sunglasses items on its site.
Goods sold by Respondent are shirts, hats and other items made of fabric.
Respondent’s website does not and has never included the sale of or off site
linking to sunglasses or sunglass products.
Respondent denies the allegation made in the
Complaint that Respondent has not used the domain name in connection with a bona fide offering of goods and services.
Complainant’s assumption that Respondent has
not used the domain name in connection with bona
fide offering of goods is false. While Respondent has not completed its web
portals with information and products about and for the Pontiac Solstice
automobile, this does not mean that Respondent has no rights to the domain name
or that Respondent does not intend to complete its portal with information and
products associated with the Pontiac Solstice automobile.
Respondent has in fact been building its website
about the Pontiac Solstice for some time. Respondent’s intention is and always
has been, to provide the most comprehensive web portal dedicated to the Pontiac
Solstice automobile and construction of the proprietary back and systems,
public interfaces, e-commerce modules, as well as the building of vendor
relationships for automotive based products is always an ongoing task.
Respondent denies that it has used the domain
name to generate pay-per-click revenue from its website at the domain name
address. Complainant has not provided any evidence that there has been any such
activity on the part of Respondent. Respondent submits that its exhibited
results from searches at <archive.org> demonstrate that there is no
available historical data to prove Complainant’s false claims of such activity.
Respondent has never received any pay-per-click or any revenue from its
website.
Respondent denies that it selected the domain
name because it incorporated a well known trademark. Respondent had never heard
of Complainant, its domain name or its business prior to receipt of the
Complaint.
Respondent refutes Complainant’s categorisation
of Respondent’s use of the domain name in dispute. Respondent has never sought
to take advantage of Complainant’s trademark or goodwill.
Respondent has had no contact with Complainant
with regard to the domain name in dispute except for this proceeding. Despite
the allegation by Complainant that it has done so, Respondent has never
attempted to sell, rent or otherwise transfer the domain registration to
Complainant or other third party. Furthermore Respondent denies that it
registered the domain name in order to prevent Complainant as owner of the
trademark from reflecting the mark in a corresponding domain name or for the
purpose of disrupting the business of a competitor. Respondent further denies
that by using the domain name it has intentionally attempted to attract for
commercial gain, Internet users to its website or online location by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of its website or location or of a product or
service on its website or location as alleged.
Respondent requests that the Complaint be
denied.
FINDINGS
Complainant carries on business as a retailer
of sunglasses through its chain of retail stores throughout the
Complainant has established and maintains a
website promoting its retail stores at the <solsticestores.com> domain
name address. According to the printout of the WHOIS search results submitted
as an annex to the Complaint, the Internet domain name
<solsticestores.com> is registered in the name of a third party and was
created on December 18, 2001.
Respondent registered the domain name in
dispute <solsticewear.com>
on
There is no evidence that Respondent has used the
domain name to generate pay-per-click revenue from its website to which the
domain name in dispute resolves as alleged by Complainant.
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 Complainant must prove each
of the following three elements to obtain an order that a domain name should be
cancelled or transferred:
i.
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate
interests in respect of the domain name; and
iii. the domain name has been registered and is being
used in bad faith.
The domain name in dispute <solsticewear.com>
is confusingly similar to Complainant’s registered service mark SOLSTICE. Aside
from the “.com” suffix, the domain name consists of two elements, namely the
English language words “solstice” and “wear.” The “solstice” element is
identical to Complainant’s service mark and the addition of the descriptive
word “wear” does not in any way distinguish the domain name from Complainant’s
service mark.
In the circumstances, Complainant has
established the first element of the test in Paragraph 4 of the Policy.
It is generally accepted among panelists that once a complainant makes
out a prima facie case that a respondent lacks rights and legitimate
interests in a disputed domain name under Policy ¶ 4(a)(ii),
the burden shifts to Respondent to show it has such rights or legitimate
interests. See
Complainant has made out a prima facie case that Respondent has no
such rights or legitimate interests in the domain name.
Respondent has submitted
print outs of its website that purports to offer for sale baseball caps and
garments with legends referring to the Pontiac Solstice automobile.
The website appears to consist of two linked
pages. One of the pages is accessed at the Internet domain name address <solsticepartstore.com>
on which there are two photographs of Pontiac Solstice automobiles and contains
what appears to be 39 Internet domain names relating primarily to the Pontiac
Solstice automobile such as <solsticecoupe.com>,
<solsticeowners.com>, <solsticeroadsterparts.com> and similar
names.
The other page to which the domain name in
dispute <solsticewear.com>
resolves also contains two photographs of the Pontiac Solstice automobile and a
number of images of garments and a baseball hat with legends incorporating the
word “solstice” such as “baseball caps and hats starting at $14.99” and “T-shirts,
sweatshirts and wearables for him starting at $16.99.”
Respondent has not furnished any evidence of
any actual sales of garments or hats. Respondent claims that the site is a web
portal that provides custom made garments and hats with decorative legends that
demonstrate the purchasers love, admiration and enjoyment of the
Pontiac Solstice automobile. The type of goods illustrated on Respondent’s
website are not “custom made” by any stretch of the imagination. They are
inexpensive, commonplace baseball hats and T-shirts that appear to have basic
printed legends.
Respondent’s website is very basic and
unconvincing, and there is more than a suspicion on the part of this Panel that
the website is a sham and has been designed and established for the purposes of
defending a complaint under the Policy.
Respondent has not satisfied this Panel on
the balance of probabilities that it has rights or legitimate interests in the
domain name.
It follows that Complainant has also
satisfied the second element of the test in Policy ¶ 4(a)(ii).
This Panel is not convinced that Respondent’s
website is bona fide. The domain name
in dispute is a combination of Complainant’s registered service mark and a word
“wear” that is not distinctive and is a word associated with sunglasses.
Respondent has stated
that it had never heard of Complainant, its domain name or its business prior
to receipt of the Complaint. This is not credible. At the time Respondent chose
and registered the domain name in dispute, Complainant maintained an Internet
presence at the domain name address <solsticestores.com>. The domain name in dispute is very close to
said domain name <solsticestores.com> at which address Complainant had a
pre-existing website established. It is highly improbable that in selecting the
domain name <solsticewear.com>
that Respondent would not have become aware of Complainant’s website.
This Panel has considered whether in choosing
and registering the domain name, Respondent sought to refer to the Pontiac
Solstice automobile as it has claimed? It is likely that this is the case. It
would appear that Respondent has also either registered or has the use of at
least the domain name <solsticepartstore.com> and possibly other domain
names referring to the automobile <solsticecoupe.com>,
<solsticeowners.com>, <solsticeroadsterparts.com> to which there is
reference on Respondent’s website.
On the balance of probabilities, in registering
the domain name in dispute, Respondent must also have become aware of the
similarity between the chosen domain name the address of Complainant’s website
promoting its sunglasses business. Therefore in choosing to add the combination
of the words “solstice” and the word “wear,” on the balance of probabilities Respondent
knew that there was a likelihood of diverting Internet traffic from
Complainant’s website.
In the circumstances, this Panel is satisfied
on the balance of probabilities that Respondent registered and is using the
domain name in bad faith and Complainant has succeeded in proving the third
element of the test in Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <solsticewear.com> domain name be TRANSFERRED
from Respondent to Complainant.
James Bridgeman, Panelist
Dated: February 8, 2008
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