Moosejaw Mountaineering and Backcountry Travel, Inc.
v.
Claim Number: FA0802001153693
PARTIES
Complainant is Moosejaw Mountaineering and Backcountry
Travel, Inc. (“Complainant”),
represented by Brian D. Wassom, of Honigman, Miller, Schwartz, and Cohn LLP,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <moosejawmountaineering.com>, registered with Compana, LLC.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Robert T. Pfeuffer, Senior District
Judge,
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 29, 2008.
On March 11, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <moosejawmountaineering.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 March 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 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@moosejawmountaineering.com by e-mail.
A timely Response was received and determined to be complete on April 14, 2008.
On
April 21, 2008, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge,
Texas, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the disputed domain name <moosejawmountaineering.com> is identical or confusingly similar to Complainant’s marks MOOSEJAW and MOOSEJAW MOUNTAINEERING AND BACKCOUNTRY TRAVEL that it has registered with the United States Patent and Trademark Office. In addition, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name and further that such registration and use is in bad faith.
B. Respondent
Respondent on the other hand contends that the <moosejawmountaineering.com> domain name is comprised of common, geographic and descriptive terms and therefore, cannot be found to be confusingly similar to Complainant’s mark. Additionally, Respondent contends that Complainant has not established a prima facie case in support of its allegations that Respondent has no rights or legitimate interests because Complainant has merely set out a one-paragraph Complaint containing 99 words relating to this element of the Policy.
In respect to registration in and use and bad faith, Respondent states that Complainant has failed to meet the burden of proof of bad faith registration and use under the Policy. Complainant states that the disputed domain name contains commonly used terms and that this indicates the Respondent did not register and use the <moosejawmountaineering.com> domain name in bad faith.
FINDINGS
The Panel finds against Respondent in respect to the disputed domain name <moosejawmountaineering.com> in that the issues raised by Complainant have been established by a preponderance of the evidence. Therefore, the Panel finds that the disputed domain name violates ICANN Policy ¶ 4(a)(i) in that it is confusingly similar to Complainant’s mark, that it violates Policy ¶ 4(a)(ii) in that Respondent is found to have no rights or legitimate interests and that the disputed domain name violates Policy ¶ 4(a)(iii) in that the Panel finds Respondent has engaged in bad faith registration and use of the mark to Complainant’s detriment.
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 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.
Complainant has provided evidence that it registered its MOOSEJAW and MOOSEJAW MOUNTAINEERING AND BACKCOUNTRY TRAVEL marks with the United States Patent and Trademark Office (“USPTO”). On September 6, 1994, it registered its MOOSEJAW mark, and on October 4, 1994, it registered its MOOSEJAW MOUNTAINEERING AND BACKCOUNTY TRAVEL mark. The Panel finds that Complainant’s registration of these marks with the USPTO sufficiently establishes Complainant’s rights in these marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also U.S. Office of Pers. Mgmt. V. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
Respondent’s <moosjawmountaineering.com>
domain name incorporates Complainant’s MOOSEJAW mark with the addition of the
word “mountaineering,” which describes Complainant’s products. This Panel finds that the addition of a word
which describes Complainant’s business is insufficient to distinguish the
disputed domain name from Complainant’s MOOSEJAW mark pursuant to Policy ¶
4(a)(i).
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the Complainant’s mark with a generic term that has an obvious relationship to
the Complainant’s business); see also
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type
of business in which the complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity). Additionally, the Panel finds that Respondent’s
<moosejawmountaineering.com>
domain name incorporates Complainant’s MOOSEJAW MOUNTAINEERING AND BACKCOUNTRY
TRAVEL mark with the deletion of the words “AND BACKCOUNTRY TRAVEL.” The Panel
therefore finds that the deletion of a nondominant portion of Complainant’s
mark is not sufficient to distinguish Respondent’s disputed domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am.
Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005)
(finding the <americaneaglestores.com> domain name to be confusingly
similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also WestJet Air Ctr., Inc. v. W. Jets
LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the
<westjets.com> domain name is confusingly similar to the complainant’s
mark, where the complainant holds the
Although Respondent contends that the <moosejawmountaineering.com> domain name is comprised of common, geographic and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel found that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, Complainant having adequately produced a prima facie case, the burden has shifted to Respondent to show that it does have rights or legitimate interests in its disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information lists Respondent as “Texas International Property Associates – NA NA.” Nowhere in the record is it shown that Respondent claims to be known by any other name. Additionally, the record does not indicate Complainant ever authorized Respondent to use its marks. Therefore, the Panel finds that Respondent is not commonly known by the <moosejawmountaineering.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimates interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; and (3) the respondent is not commonly known by the domain name in question).
Respondent is presently using the <moosejawmountaineering.com> domain name to resolve to a website which displays sponsored links to products and services which directly compete with Complainant’s outdoor apparel and equipment business. The Panel therefore finds that this use constitutes diversion and is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent contends
that Complainant has not established a prima
facie case in support of its allegations because “The Complaint contains
one (1) paragraph containing a mere ninety-nine (99) words relating to this
element of the Policy.” After review of
these contentions, the Panel finds the Policy does not contain a minimum word
or paragraph requirement in order to establish a prima facie case establishing Respondent’s lack of rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii).
Complainant has
provided a list of multiple cases in which a UDRP panel has transferred
Respondent’s disputed domain name to a respective complainant. See ZRT
Lab., LLC v.
The website which resolves from Respondent’s disputed domain name displays links to third-parties’ websites which offer goods and services that compete with Complainant’s business. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent is using
the confusingly similar <moosejawmountaineering.com>
domain name to link to third-party websites which offer competing goods and
services. Respondent presumably profits
from this use through its contract with the “Hitfarm” target advertising
business. Additionally, Respondent’s use
of Complainant’s MOOSEJAW and/or MOOSEJAW MOUNTAINEERING AND BACKCOUNTRY TRAVEL
marks creates a likelihood of confusion regarding the source of the content
resolving from the disputed domain name.
The Panel finds that this is an attempt by Respondent to profit from the
goodwill associated with Complainant’s mark.
Therefore, the Panel finds Respondent’s actions constitute bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief sought shall be GRANTED.
Accordingly, it is Ordered that the <moosejawmountaineering.com> domain name be TRANSFERRED from Respondent to Complainant.
Robert T. Pfeuffer, Senior
District Judge,
Dated: May 5, 2008
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