Peggy R. Dylan v. Firewalking Institute of Research and Education
Claim Number: FA0802001144244
Complainant is Peggy R. Dylan (“Complainant”), represented by Eric
A. Handler, of Donahue Gallagher Woods LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sundoor.org>, <sundoor.net> and <sun-door.com>, registered with Tucows Inc.
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.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 13, 2008.
On February 14, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <sundoor.org>, <sundoor.net> and <sun-door.com> domain names are registered with Tucows Inc. and that the Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 February 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 11, 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 firstname.lastname@example.org, email@example.com and firstname.lastname@example.org by e-mail.
A timely electronic Response was received and determined to be complete on March 11, 2008. The Response was deficient under ICANN Rule 5 as the hard copy of the Response was received after the Response deadline, and payment for Respondent’s requested three-member Panel was received after the Response deadline.
A timely Additional Submission was received from Respondent on March 17, 2008, and determined to be complete. A timely Additional Submission from Complainant was received on March 25, 2008. An untimely second Additional Submission from Respondent was received on March 31, 2008. This Additional Submission is not timely under the dictates of Rule 7 of the Policy. However, the Panel has reviewed, and will take note of, matters set forth in this second Additional Submission.
On March 20, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant asserts rights in the “sundoor” mark based upon both common law trademark, including nearly 25 years of use of the name sufficient to create a secondary meaning in the name, and based on its federal service mark number 2,679,786, registered January 9, 2001 and granted on January 28, 2003. Having established its rights in the mark, Complainant asserts that the domain names are identical to, or confusingly similar to the mark. Complainant notes that the only difference between its mark and the domain names is the gLTD “.net” or “.org,” or the added hyphen in the <sun-door.com> name, distinctions too small to make a difference or remove the confusing similarity. Complainant next asserts that Respondent has no rights or legitimate interests in the names, noting that use of the mark by Respondent is likely to confuse ordinary consumers. Further, Respondent is not generally known by the names. Indeed, the Internet user typing in any of the names is automatically redirected to Respondent’s <firewalking.com> website. Complainant asserts that Respondent’s use of the domain names does not constitute a bona fide offering of goods and services because the domain names serve only to divert Internet users attempting to reach Complainant’s website to Respondent’s website as a means of competing with Complainant. While Respondent contends that he has community property rights in the mark dating back to the time when Complainant and Respondent were married, Complainant contends that Respondent acknowledged Complainant’s sole ownership of the mark as part of their dissolution, and that Respondent has indicated in many ways, including on its <firewalking.com> website, that it no longer is known by the mark. Complainant further notes that Respondent did not contest the federal service mark registration, and the mark is now incontestable. Finally, Complainant asserts that the domain names were registered in, and are being used in bad faith. First, Respondent registered the names with knowledge of the Complainant’s mark. Second, Respondent is using the domain names for the sole purpose of confusing Internet users who are seeking Complainant’s website, and then redirecting them to Respondent’s website. Thus, Respondent is using the names to disrupt Complainant’s business, and, for commercial gain, to attract Internet users to its website by use of confusingly similar names.
As a preliminary matter, Respondent challenges the Panel’s jurisdiction
to act in this matter. According to
Respondent, this dispute is essentially a family law matter, namely the correct
disposition of intellectual property which at one time was jointly owned as
community property by Complainant and Respondent while they were married. Respondent contends that proper jurisdiction
is in the trial court which heard the dissolution case. Respondent further contends that the issues of
the “sundoor” service mark are complex and should be heard in
C. Additional Submissions
Complainant’s Additional Submission first addresses the jurisdictional issues raised by Respondent. Complainant points out that the dissolution matter in California Superior Court is not currently pending, and in fact has been closed for 22 years. Further, in response to Respondent’s suggestion that this complex intellectual property dispute belongs in federal district court, Complainant points out that when registering the domain names Respondent agreed to submit any disputes such as the present one to an ICANN administrative proceeding such as this one. Complainant also asserts that Respondent does not contest Complainant’s rights in the mark, and cannot demonstrate his own rights in the mark. Complainant points out that on his own website, Respondent disclaims any interest in the “sundoor” mark. Further, Respondent does not dispute the fact that each of the disputed domain names resolves to Respondent’s website. Finally, Complainant takes issue with Respondent’s claim that the “sundoor” mark is too generic to be protectable, noting that the USPTO granted the service mark, and this point is no longer contestable.
Respondent’s Additional Submission asserts that the “sundoor” mark is too generic to be protectable. Additionally, Respondent contends that he must share in the rights to the mark, since the mark was community property and this property was not assigned to Complainant in the dissolution proceeding. Respondent contends that he developed the mark with Complainant and therefore still has rights in the mark. Respondent also points out that two of the domain names were registered prior to the service mark being issued, and therefore these two domain names cannot be contested. Respondent’s second Additional Submission objects to the decision of the NAF not to appoint a 3-member panel to hear this matter, while acknowledging that payment was not timely received for the 3-member panel. Respondent also objects to what he believes are misstatements in Complainant’s Additional Submission in terms of confusing the two Respondents, the person Bruce (Tolly) Burkan and his d/b/a Firewalking Institute. Respondent also argues, from trademark law cases, that his use of the “sundoor” mark is senior and Complainant cannot prevent him from using the mark.
The Panel finds that (1) the domain names are identical to, or confusingly similar to Complainant’s mark, and that Complainant has rights in the mark;
(2) Respondent has no rights or legitimate interests in the names; and
(3) the names were registered and are being used 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.
Preliminary Issue Re Jurisdiction
has asserted that the Panel is without jurisdiction in this case, asserting (a)
that the matter is essentially a family law dispute that arises out of division
of community property, and must be decided in California Superior Court, and
(b) that this is a complex intellectual property matter that must be
adjudicated in federal district court. Putting aside the fact that Respondent
contradicts himself, by asserting that this matter must be determined both in
state superior court and in federal district court, the Panel determines that
it has jurisdiction in this case. As
noted by the Complainant in her Additional Submission, like anyone else who
registers a domain name, the Respondent agreed when registering the disputed
domain names to submit a dispute to this or a similar ICANN panel. That agreement is binding. See
Preliminary Issue Re Three Member Panel Request
Respondent asserts in its second Additional Submission that, even though its three member panel request was not paid for in a timely manner, that it substantially complied with UDRP Rule 5(c) by indicating that a check was on the way (in fact a faxed copy of the check was provided to NAF). The Panel finds that NAF’s strict construction of the Rule was not in error and that the appointment of a single member panel was not prejudicial to Respondent, as the Panel has carefully reviewed ALL of the submitted evidence. Respondent’s request for a three member panel is therefore denied.
Complainant’s rights in the mark are both
common law and through a federally registered service mark. Complainant asserts, and Respondent does not
dispute, that she has used the SUNDOOR mark in a broad context for over twenty
years, to the extent that the name has taken on a secondary meaning. See
British Broad Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000). See also
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (“The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.”). Additionally, Complainant has filed for and
obtained a federal service mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004). The
domain names are clearly identical to or confusingly similar to the
Complainant’s mark. Respondent makes no
argument to the contrary, nor could he. Each of the domain names fully incorporates
the mark, and the only difference is the generic top level domain, which is
insufficient to avoid confusion. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000). As for
the domain name <sun-door.com>,
the hyphen is irrelevant in determining confusing similarity. See Health Devices Corp. v.
Because the Complainant has made a prima facie showing in support of her allegations the burden now shifts to Respondent to show that he has rights or legitimate interests in the names. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Respondent cannot meet that burden. First, Respondent is not commonly known by the names. Indeed, on his own website Respondent disavows any connection to the names. On the “Q. and A.” portion of his website Respondent states: “in 2003 the Firewalking Institute publicly disclaimed any connection with Sundoor…” While Respondent maintains that the “sundoor” mark was community property, and he owns it along with his ex-wife because it was never divided by the court in the divorce proceedings, the fact is that Respondent is not presently known by the names and appears to be using the names only as a means of disrupting Complainant’s business. Such use is not a bona fide offering of goods or services, or a legitimate noncommercial use. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (holding that respondent’s use of confusingly similar domain names to complainant Wal-Mart’s mark in order to divert Internet users to its site did not constitute a bona fide offering of goods and services). Because Respondent is not commonly known by the names, and because he is not using the names to carry on a bona fide offering of goods or services, or a legitimate noncommercial use, the Panel determines that Respondent has no legitimate rights or interest in the names. In his second Additional Submission Respondent cites cases interpreting the Lanham Act which he says demonstrate that the senior user of a mark cannot lose his rights to use the mark. However, this forum, and this case, are not about trademark law, and whether or not Respondent may continue to use the “sundoor” mark. Such issues must be decided in another forum. Rather, this matter is about the domain names which Respondent registered, and the Policy dictates under what circumstances registered domain names may be transferred from a Respondent to a Complainant. Based on the Policy, and not based on general principles of trademark law, the Panel has determined that Respondent has no rights or legitimate interests in the domain name.
First, it is clear that Respondent registered
the names with knowledge of Complainant’s mark, whether common law or federally
issued. This fact alone can be evidence
of bad faith. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006). See also
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <sundoor.org>, <sundoor.net> and <sun-door.com> domain names be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: April 3, 2008
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