Mutineer Restaurant v Ultimate Search, Inc.
Claim Number: FA0205000114434
Complainant is Mutineer Restaurant, Florida City, FL, USA (“Complainant”) represented by Allan Bennett. Respondent is Ultimate Search, Inc., Central, HONG KONG (“Respondent”) represented by John Berryhill, of Dann, Dorfman, Herrell & Skillman P.C.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mutineer.com>, registered with Melbourne It, Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Dennis Foster as Panelist.
David Sorkin as Panelist.
Daniel B. Banks, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 30, 2002; the Forum received a hard copy of the Complaint on June 28, 2002.
On July 2, 2002, Melbourne It, Ltd confirmed by e-mail to the Forum that the domain name <mutineer.com> is registered with Melbourne It, Ltd and that the Respondent is the current registrant of the name. Melbourne It, Ltd has verified that Respondent is bound by the Melbourne It, Ltd 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 July 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 29, 2002 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 by e-mail.
A timely Response was received and determined to be complete on July 29, 2002.
On August 12, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Dennis Foster, David Sorkin and Daniel B. Banks, Jr., Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has operated a restaurant under the name Mutineer for over 20 years. Complainant previously owned the domain name <mutineer.com> and has advertised and continues to advertise this domain name in many magazines and papers in the promotion of his business. The domain name <mutineer.com> is identical to his business name “Mutineer” Restaurant.
The Respondent capitalized on an error, whether knowingly or not, in the transfer process at the time said domain name was due for renewal. The Complainant had no intention to abandon the disputed domain name. Respondent operates a search engine listing website which has no relationship or identity related to the word “mutineer” for which Respondent is currently using said domain name. Respondent’s continued use of said domain name dilutes and damages the Complainants rightful use of his trade name in Internet advertising.
Respondent’s current use of the domain name <mutineer.com> is not in the furtherance of any bona fide business offering goods or services that are in any way related to the use of the name or term, “mutineer”. Further, the current use deliberately directs viewers to numerous competitors of the Complainants by presenting a listing of other restaurants, none of which are related to the Complainant's establishment or have any direct or indirect association with the word “mutineer”.
Respondent has never been known by or done business under the name “Mutineer” or “Mutineer Restaurant” nor does it appear that the Respondent has applied for any trademark to use the name “mutineer” in any valid business enterprise.
Respondent is taking advantage of prior existing search engine listings, numerous printed advertisements and other such methods of promoting the domain name <mutineer.com> to re-direct or mislead users of the Internet to his search listings when they have every expectation of viewing content related to the Mutineer Restaurant”. Such prior and existing advertisements are paid for by the Complainant for the promotion of his legitimate and long-standing business, the Mutineer Restaurant. Any check of the status of the domain name prior to the errors in the transfer process would have demonstrated to the Respondent that said domain was in active and constant use and has been so since December of 1997. Such bad-faith use of the domain name <mutineer.com> creates confusion with respect to the source, relationship or affiliation or endorsement of or by the Mutineer Restaurant.
The Respondent failed to take adequate measures to assure they were not violating or otherwise infringing the trademark or service mark rights of others when they registered said domain.
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location. Based upon numerous pre-existing print ads and long-standing search engine listings, Respondent is attracting viewers to it’s own listing of restaurants that compete with Complainant’s own establishment.
Any person searching for the Complainant’s web site to view reservations information, menu, features, location etc. will, instead, be sent to a listing for competing restaurants. This is a direct misuse of the service mark “mutineer” to lead customers away from Complainants business.
Complainant alleges that it has operated a restaurant in Florida under the name "Mutineer Restaurant" for twenty years. The only evidence offered to support this claim is samples of advertisements dated December 2001 and January 2002.
Complainant does not make any claim of registration of the name "Mutineer Restaurant" nor are there any allegations concerning the geographic extent or distinctiveness associating the nautical term "mutineer" exclusively with the Complainant's restaurant sufficient to support a common law claim under the law of any jurisdiction. There are other restaurants whose name consists of or incorporates the term "mutineer" and that term is susceptible to uses in commerce apart from restaurants. For example, there is a business listing for a "Mutineer Restaurant" located in Grayland, Washington; a U.S. registered trademark for "Mutineer" cigars made in the Bahamas; and a U.S. registered trademark for "Mutineer" sailboats produced by Wellcraft Marine Corporation of Sarasota, Florida.
Complainant also claims to have registered the domain name <mutineer.com> in 1997, however the WHOSIS data for the prior registration, which Complainant attached, does not show the registration date or the expiration date. While Complainant claims to have lost the domain name "due to a clerical error that occurred in the transfer process at renewal", it appears that the Complainant mismanaged the domain name by attempting a registrar transfer at the time the domain name was due for renewal fees. Registering a domain name does not provide a perpetual right in a word, but is subject to payment of regular renewal fees.
Based on the foregoing, the Complainant has not clearly established a trademark right in the term "mutineer" nor has Complainant established the geographic or temporal extent of consumer recognition of such a right.
Complainant also claims that Respondent has no right or legitimate interests in the domain name. Such legitimate rights and interests under the Policy are not limited to trademark rights, but include use of the domain name in connection with a legitimate business purpose. Respondent has registered a portfolio of domain names incorporating common words, generic terms, short terms and useful phrases. These domain names are employed in conjunction with an advertising subscription database, operated by a third party advertising consolidator, to return search results from the data base on the basis of correspondence between terms in the domain names and search terms for which advertisers have aid subscriptions on a performance basis. Respondent seeks to obtain such domain names by attempting to register presumptively abandoned domain names, which have dropped from registration.
On the point of legitimate rights and interests, WIPO Case No. D2002-0189, in which the Complainant was a prior domain registrant who had lost a generic term through a failure to renew registration, the panel stated, "The respondent is entitled to conduct a business of capturing generic trademark names which become available in the marketplace - often through failure to renew registration."
It is not a violation of policy to simply seek to register generic words, as they become abandoned, and match those words with a pool of advertisers seeking to use them. Respondent expends considerable time and effort to configure the domains for shared use among advertisers in the third party database. Respondent derives revenue from its business, has a legitimate expectation in the continuation of its revenue, and UDRP panels have repeatedly found the Respondent to be engaged in a legitimate business practice. The term "mutineer" is a nautical term and an abandoned trademark, which is now used generally for a class of sailboats.
On the issue of bad faith, Complainant clearly admits "the respondent capitalized on an error, whether knowingly or not, in the transfer process…" (Emphasis added). Respondent had no knowledge other than the fact that a common dictionary word had become available for registration. Complainant provides no basis for inferring that a party in Hong Kong was on notice of the name of a restaurant in Florida. Such registration cannot be inferred to constitute a bad faith intent directed toward the Complainant.
Complainant asserts that Respondent is directing visitors to competitors of Complainant, stating the visitors "will…be sent to a listing of competing restaurants", but does not provide a single example of a restaurant in competition with the Complainant to which such diversion is alleged to be occurring. Complainant operates in a limited geographic area in a particular part of Florida.
Complainant also alleges that Respondent "failed to take adequate measures to assure they were not violating or otherwise infringing" marks of others when they registered the domain name but fails to identify which such measures might have been taken.
Respondent submits that Complainant has not proven all of the three conditions required for transfer of the disputed domain name under the Policy.
1. The disputed domain name is confusingly similar to Complainant's name.
2. The Respondent has not demonstrated rights or legitimate interests in respect of the domain name.
3. The domain name was not registered nor 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) (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) (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.
Identical and/or Confusingly Similar
Respondent’s <mutineer.com> domain name incorporates Complainant’s MUTINEER identifier in its entirety, while deviating by the subtraction of the generic word “restaurant.” In the view of the Panel, the disputed domain name is confusingly similar to the name under which the Complainant does business in a part of Florida. The Panel finds that Respondent’s domain name fails to create a distinct and separate mark because the dominating presence of Complainant’s MUTINEER RESTAURANT mark is reflected in Respondent’s second-level domain. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).
Rights or Legitimate Interests
The Respondent has not demonstrated any legitimate right or interest in the disputed domain name. Respondent is not using the disputed domain name in furtherance of any bona fide offering of goods or services under Policy 4 (c)(i). Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Respondent's generic portal site wherein it posts hundreds and perhaps thousands of different domain names is not sufficient to give it a legitimate right or interest in the domain name.
Registration and Use in Bad Faith
The last element of Section 4(a) is bad faith registration and use. In this case, Complainant claims that Respondent has intentionally attempted to divert Internet users to competitors and that Respondent's registration of the disputed domain name capitalized on an error on Complainant's part in failing to renew registration of the domain name, which Complainant had originally registered in 1997. Respondent waits for domain names incorporating common words, generic terms, short terms and useful phrases to be released after their registration has lapsed. Then Respondent immediately registers those names and uses each of them to host a generic portal web site, presumably gaining revenue from banner advertisements and affiliate links. This activity has not been found to be bad faith registration or use under the UDRP unless the selection of the domain name and the manner in which it is used are related to its correspondence to Complainant's trademark. It has been held that a party is entitled to conduct a business of capturing generic domain names which become available in the marketplace, often through failure to renew registration. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001); First American Funds v. Ult. Search, D2000-1840 (WIPO Apr. 20, 2001); GLB Services Interactivos S.A. v. Ultimate Search, Inc., D2002-0189 (WIPO May 29, 2002).
It is the unanimous decision of this Panel that the Complainant's request that the disputed domain name <mutineer.com> be transferred is denied.
Daniel B. Banks, Jr., Chair of the Panel
Dennis Foster, Panelist
Dated: August 23, 2002
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