Capitol Corridor Joint Powers Authority v. CyberCapitol Ventures LLC
Claim Number: FA0809001222732
Complainant is Capitol Corridor Joint Powers Authority (“Complainant”), represented by Linda
Joy Kattwinkel, of Owen Wickersham & Erickson P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitolcorridor.com>, registered with Moniker Online Services, Inc.
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.
Michael Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2008.
On September 3, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <capitolcorridor.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 September 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 25, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on September 25, 2008.
A timely Additional Submission was submitted by Complainant. The National Arbitration Forum determined it to be sufficient pursuant to the National Arbitration Forum’s Supplemental Rule 7 on September 30, 2008.
A timely Additional Submission was submitted by Respondent. The National Arbitration Forum determined it to be sufficient pursuant to the National Arbitration Forum’s Supplemental Rule 7 on October 6, 2008.
On October 8, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner of the THE CAPITOL CORRIDOR trademark and design, (Reg. No. 2,491,918 issued September 25, 2001), covering inter-city passenger rail transportation services. Complainant also owns the CAPITOL CORRIDOR trademark and design (Reg. No. 3,426,668, issued May 13, 2008). Complainant contends that the disputed domain name <capitolcorridor.com> is confusingly similar to its CAPITOL CORRIDOR trademark because it contains the trademark in its entirety, and because it is identical to the trademark when the space and the generic top-level domain “.com” are omitted.
Complainant contends that Respondent has no rights or legitimate interests in the domain name because:
(1) prior to notification of the suit, the domain name was either idle or displayed a page featuring advertisements for services of Complainant’s competitors,
(2) Respondent has never been commonly known by the domain name, and
(3) Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumer or to tarnish the trademarks at issue. See Policy ¶ 4(c).
Complainant also contends that Respondent registered and used the
disputed domain name in bad faith. Complainant
argues that the disputed domain name has been used to divert Internet users
away from Complainant’s services for Respondent’s commercial gain through
advertising, sponsored links, and diversion to Respondent’s services. Prior to July 23, 2008, the disputed domain
name was used to display a page featuring sponsored links to train information
and services which generated pay-per-click revenue for Respondent. On July 23, 2008, Complainant states that Respondent
reconfigured the disputed domain name to direct Internet users to its web page
at <mycapitol.com>, which displayed information about the
Complainant asserts that the domain name was registered in bad faith. It argues that CAPITOL CORRIDOR is a unique and distinctive mark that has only been used to describe Complainant’s transportation and transit information services and that it is therefore impossible that Respondent’s registration of the <capitolcorridor.com> domain name was coincidental. It further argues that Respondent had a duty as a repeat domain registrant to perform a search for trademark rights prior to registering the domain name, a search which would have revealed Complainant’s use of the CAPITOL CORRIDOR mark.
Respondent contends that Complainant’s trademarks are not confusingly similar to the disputed domain name because the trademarks cover visual designs combining the words in question with a depiction of a train. Respondent further contends that “capitol,” “corridor,” and “capitol corridor” are generic, descriptive terms, and that Complainant’s disclaimer of any exclusive right to the word “corridor” in both of its trademark applications precludes a finding that the disputed domain name is confusingly similar to the mark as registered.
Respondent contends that it did not control the content or subject matter of the advertisements displayed on the <capitolcorridor.com> website prior to July 23, 2008, and that these decisions were made by Parked.com, where the Respondent “parked” the domain for a period of time including June 2008. Respondent argues that, because Amtrak is the sole provider of Complainant’s train services and the only train services available through the <capitolcorridor.com> website were Amtrak services, the links were not to competitors of Complainant. Respondent does not deny that it derived revenue from the sponsored links and advertisements on its parked website and later from traffic redirected to <mycapitol.com>.
Respondent argues that Complainant’s six-year delay in bringing its Complaint is evidence of an absence of consumer confusion or establishes rights in the Respondent to use the domain name.
Respondent provides a declaration describing its pattern of registering domain names containing political and governmental keywords in order to promote its <mycapitol.com> website. Respondent claims that it registered <capitolcorridor.com> in good faith as a part of this pattern after being inspired by a column with the title “Capitol Corridor” in the National Journal. Respondent also provides many examples of use of the phrases “capitol corridor” and “capitol corridors” in connection with governmental locales and activities.
Respondent urges this Panel to find reverse domain name hijacking by Complainant, arguing that Complainant attempted to mislead the Panel by not calling attention to the disclaimers of exclusive rights to the word “corridor” in its trademarks, that the purpose of the action is to acquire the disputed domain name in preparation for its planned redesign of its website, that the Complaint was filed with the intent to harass, and that the Complaint was so without merit that it was unreasonable to maintain it.
C. Complainant’s Additional Submission
Complainant, in its Additional Submission, asserts that Respondent’s service of the Exhibits to its Response was not timely because Respondent scheduled delivery of the Exhibits for a Saturday, resulting in Complainant not receiving the Exhibits until the following Monday, one day before its Additional Submission was due.
Complainant argues on the merits that the design elements should not be considered in evaluating confusing similarity because a domain name can consist only of characters and not of images, and that its disclaimer of one word of its two-word mark does not invalidate the mark as a whole. Complainant also contends that it has a long history of exclusive use of the term CAPITOL CORRIDOR as a trademark for its services, giving it common law rights in the term.
Addressing Respondent’s argument that Complainant delayed six years in bringing its Complaint, Complainant repeats a contention from its Complaint that it only recently learned of the infringing domain name.
Complainant argues against a finding of reverse domain name hijacking, pointing out that its Exhibits included the disclaimers regarding the word “corridor,” arguing that its contentions are not unreasonable, denying an improper connection between the redesign of Complainant’s website and the bringing of its complaint, and denying any intent to harass.
D. Respondent’s Additional Submission
Respondent contends that it made a good faith attempt to comply with the Rules and to serve Complainant with its Exhibits, and that Respondent would not have objected if Complainant had moved to extend the filing deadline for its Additional Submission.
Respondent argues that it has a legitimate interest in the domain name because it may legitimately use a non-infringing, generic domain name for profit. Respondent also states that it used the disputed domain name to redirect to <mycapitol.com> prior to receiving any communication from Complainant, during a period before the disputed domain name was “parked.” Respondent asserts that the disputed domain name had not been parked prior to 2006 and that Respondent did not have Complainant in mind when it registered the disputed domain name.
Respondent disputes Complainant’s assertion that Respondent had a duty to perform a trademark search prior to registering the disputed domain name.
Respondent also argues for a finding of reverse domain name hijacking on the additional ground that Complainant is using the Policy in bad faith to avoid paying for the disputed domain name, though Respondent has also submitted evidence that it had not offered to sell the domain name to Complainant or anyone else.
This Panel finds that the disputed domain name is confusingly similar to the CAPITOL CORRIDOR trademark but that Respondent had acquired a legitimate interest in the disputed domain name prior to contact by Complainant and that the domain name was not registered in bad faith. Since Complainant’s assertions were reasonable, this Panel does not find that Complainant engaged in reverse domain name hijacking.
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 submitted uncontested evidence of its registration of the THE CAPITOL CORRIDOR mark (Reg. No. 2,491,918 issued September 25, 2001), thus establishing rights that predate the May 14, 2002 registration of the disputed domain name.
This Panel is persuaded by Respondent’s argument that the disputed domain name cannot be identical to a design-plus-words trademark because the domain name cannot incorporate design elements. See FRH Freies Rechenzerntrum Heiberufe v. Ingenieurburo FRH Stuttgard, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that the <frh.biz> domain name was not identical to the complainant’s registration for “stylized versions of the letters ‘FRH’ accompanied by the [complainant’s] name”). This does not mean, however, that a domain name can never be confusingly similar to a design-plus-words trademark where only one of multiple words has been disclaimed.
In the evaluation of confusing similarity, it
is significant that the words in Complainant’s mark are only a portion of the
mark as a whole. It is also significant
that domain names cannot incorporate design elements. Consumers rely upon the textual elements of a
design-plus-words trademark to find the associated goods and services online. Where only a portion of the word mark has been
disclaimed, a domain name that is practically identical to the word mark as a
whole can give rise to confusing similarity with respect to the underlying
design-plus-words mark. The Panel agrees
with Complainant’s implicit argument that the “THE” in THE CAPITOL CORRIDOR is
irrelevant here. Spaces and generic top-level domains such as “.com” may also
be ignored in comparing domain names and marks. See,
Pursuant to Policy ¶ 4(c), rights and legitimate interests can inhere where:
(i) before any notice to Respondent of the dispute, Respondent used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the domain name; or
(iii) Respondent makes a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is undisputed that Respondent has never been commonly known by and has not made a noncommercial or fair use of the disputed domain name. The question is whether Respondent has made a legitimate use of the domain name in connection with a bona fide offering of goods or services.
Complainant submitted evidence showing that the disputed domain name resolved in June 2008 to a “landing page” containing the words CAPITOL CORRIDOR and featuring links to third-party websites. The landing page bears an image of a train, and the sponsored links are all directed to train-related services and information. Nothing on the page touches on the legitimate interest Respondent has advanced in discussing governmental news and events. The Panel finds that the landing page was not a legitimate use by Respondent giving rise to rights under Policy ¶ 4(c). See Bank of Am. Fork v. Shen, FA 877982 (Nat. Arb. Forum Feb 13, 2007).
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, shifting the burden to Respondent to demonstrate its legitimate rights. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent has submitted evidence that the term
“capitol corridor” is common and descriptive and that Complainant delayed six years
before asserting its rights. Respondent
contends that, for at least four years, the disputed domain name redirected
users to its <mycapitol.com> website displaying information about the
For its part, Complainant argues that the term “capitol corridor” is not commonly used in connection with anything but its services, an assertion rebutted by Respondent’s evidence of many articles using the term “capitol corridor,” including a recurring column by that name. Complainant also contends that it only recently learned of the existence of <capitolcorridor.com> as a reason for its six-year delay in asserting its rights. The Panel gives this unsupported assertion little weight, as it is difficult to believe that the owners of <capitolcorridor.org> could reasonably remain unaware of the existence of <capitolcorridor.com> for over six years.
The Panel finds that redirection to the <mycapitol.com> website was a legitimate, non-infringing use of the disputed domain name. The use of third-party advertising and links to its own services represented a bona fide offering under Policy ¶ 4(c)(i). See INVESTools, Inc. v. KingWeb, Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006). Respondent’s legitimate use of the disputed domain name created a legitimate right that precludes a finding for Complainant under Policy ¶ 4(a)(ii).
For a period of time between May 2006 and
July 2008, the disputed domain name was “parked” and directed users to a
“landing page” displaying sponsored links to competitors of Complainant. The Panel
finds that this use of the disputed domain name constitutes a bad faith use
under Policy ¶ 4(b)(iv). See
The remaining issue is whether Complainant has established that the domain name was also registered in bad faith.
Complainant argues that Respondent had constructive notice of its mark when Respondent registered the disputed domain name, giving rise to a presumption of bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). But domain name registrants are not required to perform a trademark search prior to registering a domain name. See Wicked Fashions, Inc. v. Webquest, FA530334 (Nat. Arb. Forum Sept. 15, 2005). Constructive notice therefore rests upon the fame of Complainant’s mark at the time the disputed domain name was registered. Complainant has not submitted evidence sufficient to establish that Respondent had constructive notice of its mark when it registered the disputed domain name in May of 2002.
Respondent has advanced a good-faith explanation for its use of the common term “capitol corridor” in connection with a demonstrated pattern of government- and capitol-related domain name registrations. The subsequent bad faith use of the disputed domain name weighs against Respondent’s contention that it registered the disputed domain name in good faith, but there is also evidence that it used the domain name in good faith for at least four years immediately after registration.
Although the question is not an easy one, the Panel finds on the facts of this case that Respondent’s specific account of its inspiration for the disputed domain name is plausible, and outweighs any inference of bad faith registration based upon the improper uses that occurred four years later.
In sum, Complainant has not persuasively established in the record that Respondent’s registration (as opposed to its later use) of the disputed domain name was in bad faith. Accordingly, Complainant has failed to establish Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
The Panel does not find Complainant’s arguments to have been unreasonable or improper. Accordingly the Panel declines to find reverse domain name hijacking.
Complainant having failed to establish at least one element, and in fact two elements, required under the Policy, the Panel concludes that relief shall be DENIED.
Michael Albert, Panelist
Dated: October 22, 2008
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