Peggy R. Dylan v. Bruce Burkan d/b/a Firewalking Institute of Research and Education
Claim Number: FA0802001144248
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.
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 (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.
Complainant requests that the domain name 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 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.
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.
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.
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
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
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
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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