Peggy R. Dylan v. Bruce
Burkan d/b/a Firewalking Institute of Research and Education
Claim Number: FA0802001144248
PARTIES
Complainant is Peggy R. Dylan, (“Complainant”) represented by Eric A. Handler, of Donahue
Gallagher Woods LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sundoor.us>, registered with Enom, 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.
Joel M. Grossman, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on February 13,
2008; the Forum received a hard copy of the Complaint on February 13, 2008.
On February 13, 2008, Enom, Inc. confirmed by e-mail to the Forum
that the <sundoor.us>
domain name is registered with Enom, Inc.
and that the Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 26, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 17, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
A timely Response was received on March
17, 2008. The Response was
deficient under ICANN Rule 5 as Respondent requested a three-member panel, but
did not provide the required payment for such a panel by the Response Due Date. Accordingly, this request was denied.
A timely Additional Submission from Complainant was received on March
25, 2008. A timely Additional Submission
was received from Respondent on March 31, 2008.
On March 21, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Joel M. Grossman, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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 in light of 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 name is identical
to, or confusingly similar to the mark. Complainant
notes that the only difference between its mark and the domain name is the ccTLD
“.us,” a distinction too small to make a difference or remove the confusing
similarity. Complainant next asserts
that Respondent has no rights or legitimate interests in the name, noting that
use of the mark by Respondent is likely to confuse ordinary consumers. Further, Respondent is not generally known by
the name. Indeed, the Internet user
typing in the name is automatically redirected to Respondent’s <firewalking.com>
website. Complainant asserts that
Respondent’s use of the domain name does not constitute a bona fide offering of goods and services because the domain name
serves 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 name was registered in, and is being used
in bad faith. First, Respondent
registered the name with knowledge of the Complainant’s mark. Second, Respondent is using the domain name
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 name to disrupt
Complainant’s business, and, for commercial gain, to attract Internet users to
its website by use of a confusingly similar name.
B. Respondent
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 by
Complainant and Respondent as community property 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 name
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 the disputed domain name 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 first 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’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.
FINDINGS
The Panel finds that (1) the domain name is
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 name; and
(3) the name was
registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of 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 or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Preliminary Issue Re Jurisdiction
Respondent
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 a
divorce, and must be decided in 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 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 the 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.
Identical and/or Confusingly Similar
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 name is clearly identical to or
confusingly similar to the Complainant’s mark. Respondent makes no argument to the contrary,
nor could he. The domain name 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). Thus, the Panel determines that the name is
identical to or confusingly similar to a mark in which Complainant has rights.
Rights or Legitimate Interests
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
name. Indeed, on his own website
Respondent disavows any connection to the name. 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 name 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 name, and because he is not using the name 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 name. 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 name 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.
Registration
and Use in Bad Faith
First, it is clear that Respondent registered
the name 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
DECISION
Having established all three elements required under the usDRP Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sundoor.us>
domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman Panelist
Dated: April 3, 2008
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