The Overland Sheepskin Company, Inc. v.
Mountain Valley Co. LLC
Claim Number: FA0902001249697
PARTIES
Complainant is The Overland Sheepskin Company, Inc. (“Complainant”),
represented by David A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <overlandoutfitters.com>,
registered with Network Solutions, 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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 25, 2009; the National Arbitration Forum received a
hard copy of the Complaint on February 25, 2009.
On February 26, 2009, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <overlandoutfitters.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name.
Network Solutions, Inc. has verified that Respondent is bound by the
Network Solutions, 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 March 10, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 30, 2009 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@overlandoutfitters.com by e-mail.
A timely Response was received and determined to be complete on April
6, 2009.
Respondent submitted an Additional Submission to the National
Arbitration Forum on April 10, 2009, which was deemed timely in accordance with
the National Arbitration Forum’s Supplemental Rule 7.
Complainant submitted an Additional Submission to the National
Arbitration Forum on April 14, 2009, which was deemed timely in accordance with
the National Arbitration Forum’s Supplemental Rule 7.
On April 15, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that it has registered the trademark OVERLAND OUTFITTERS with the United States Patent and Trademark Office registration no. 1,630,865 covering “luggage, duffel bags, carry-on bags, garment bats for travel, back packs, and animal skins; rugs and rugs intended for use as wall hangings.” Furthermore OVERLAND.COM, registration no. 2,524,706 covering “on line retail store services featuring clothing, handbags, sheepskins, rugs, and wall hangings.”
Complainant further contends that the domain name is substantially identical and confusingly similar to Complainant’s federally registered marks OVERLAND OUTFITTERS and OVERLAND.COM, which Complainant has continuously used since at least as early as the federal registration dates thereof and in which Complainant claims and possesses proprietary rights.
Furthermore the domain name is substantially identical and confusingly similar to Complainant’s domain name <overland.com> created as early as September 1997.
Many of the goods of the type shown on Respondent’s <overlandoutfitter.com> web site are similar to or the same as those Complainant offers at Complainant’s <overland.com> website and that are covered by the aforementioned registrations.
Complainant operates
approximately 13 retail Overland stores throughout the
Upon Complainant’s information and belief, Respondent registered the domain name more than five years ago and subsequent to the January 8, 1991 and January 1, 2002 federal registration dates for Complainant’s OVERLAND OUTFITTERS and OVERLAND.COM marks, respectively.
Because the domain name was registered as a private registration, Complainant sent a certified mail letter to Respondent, care of Network Solutions who is the registrar of the domain name. The letter was received on June 5, 2008.
By means of the letter dated May 31, 2008, Complainant notified Respondent about Complainant’s proprietary rights in Complainant’s marks and requested Respondent to cease and desist from all use of the domain name as well as to transfer it to Complainant. Complainant did not receive a response to the letter.
The home page for Respondent’s domain name includes the notation “under construction.” To Complainant’s knowledge and belief the “under construction” notation has been included on said home page for more than a few years. Upon information and belief, in the five years since registering the domain name Respondent has not made any demonstrable preparations to use the domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services.
According to Complainant,
Respondent acts under anonymity and does not use the domain name or a name
corresponding to the domain name in connection with a bona fide offering of goods or services;
Furthermore Respondent has not been commonly known by the domain name.
Respondent is also not making a legitimate noncommercial or fair use of the
domain name.
Complainant contends that Respondent has used and uses the <overlandoutfitter.com> site solely as a parking site that includes links to sites offering goods competitive with those Complainant offers by persons who appear to be unrelated to Respondent.
By using the domain name
Respondent intentionally attempts to attract, for commercial gain, Internet
users to Respondent’s web site by creating a likelihood of confusion with
Complaint’s marks as to the source, sponsorship, affiliation, or endorsement of
Respondent’s website and or of products referred to on Respondent’s web site.
Upon information and belief Respondent registered the domain name for the
purpose of disrupting the business of Complainant.
Complainant finally
contends that Respondent registered the domain name to prevent Complainant from
reflecting Complaint’s Overland Outfitter mark in a corresponding domain name.
Respondent contends that Complainant’s general allegations of bad faith
do not suffice.
Further Complainant has neither alleged nor proved that Respondent
violated any of the factors listed in ICANN’s Uniform Dispute Name Dispute
Resolution Policy Paragraph 4(a)(b). Respondent has
not attempted to sell the domain name for profit. Nor has it ever competed with
Complainant for consumers or business. Nor has it ever sought to or financially
gained from diverting consumers from Complainant’s domain.
Five or more years ago Respondent registered the domain name <overlandoutfitter.com> with Network Solutions, LLC, which is in the
business of registering domain names. Respondent registered <overlandoutfitter.com> without knowledge of the existence or
identity of Complainant; until this arbitration proceeding, Respondent had never heard
of complainant or its website <overland.com>. Respondent did not register
this domain name in order to deprive Complainant of domain name or with the
intention of competing with Complainant.
Respondent registered <overlandoutfitter.com>
for the purpose of securing a domain to
host a website for its future business venture, a hotel and adventure excursion
company in
Since registering the domain <overlandoutfitter.com> with
Network Solutions, LLC, Respondent has not placed any of its own content on <overlandoutfitter.com> .
Respondent has neither used nor controlled the domain name.
In fact, until this dispute arose, Respondent
has not visited or accessed <overlandoutfitter.com>
in years. Respondent never affirmatively posted up any
of the content Complainant hereby contends creates a likelihood of confusion.
In fact, Respondent has no clear idea of how this content appeared on its
website.
Respondent understands that Network Solutions, LLC’s service agreement
– a 122 page adhesion contract, no less – with Network Solutions, LLC
authorized Network Solutions, LLC, to post what it calls its “Business Profile
Template.” Although the service agreement Network Solutions, LLC, authorizes
Network Solutions, LLC to include in this template items such as “sample
contact information, geographic area, products and services, areas fro
additional information and a map,” Respondent never authorized Network
Solutions, LLC to post content that could create a likelihood of confusion with
any company.
At all times relevant to this dispute, Network Solutions, LLC, not
Respondent, controlled and directed the content of <overlandoutfitter.com>.
Although Network Solutions, LLC’s service agreement enabled Respondent to
select an “Under Construction” page which would contain only Network Solutions,
LLC branding, Respondent did not make such a selection. Respondent was not
aware that such an affirmative selection was functionally necessary to prevent
potentially trademark infringing content from appearing on its domain name.
As stated, Respondent is unsure how, who, or by what means or processes
Network Solutions, LLC, selected the “product and services” that currently
appear on <overlandoutfitter.com>. Accordingly, Respondent has since written
to Network Solutions LLC’s legal counsel, asking them to inform Respondent how
such content appeared on the website.
To the furthest extent possible, Respondent has sought to act in good
faith and as a responsible citizen. Complainant cites a May 31, 2008 cease-and-desist
letter it sent to Respondent care of Network Solutions, LLC. Although
Respondent privately registered <overlandoutfitter.com> with Network Solutions. LLC,
thus authorizing Network Solutions, LLC to process and forward communications
directed to Respondent, Respondent never received this letter either via e-mail
or by post. Accordingly, until it was served with the Complaint, Respondent had
no knowledge that Complainant had asked it to cease and desist.
Therefore, in its letter to Network Solutions, LLC, Respondent asked
Network Solutions, LLC to confirm that Network Solutions, LLC did in fact
forward Complainant’s cease-and-desist letter to Respondent. Had Respondent
received notice of this cease-and-desist letter, Respondent would have taken
immediate steps to remove any potentially confusing content from the website.
There is no evidence Respondent registered the disputed domain name for
any reason other than to have a domain name for its hotel and expedition
company. Complainant has not presented any evidence that: (a) Respondent
registered the mark primarily for the purpose of selling or transferring it to Complainant;
or (b) Respondent is a competitor using the mark to disrupt Complainant’s
business; or (c) Respondent is using the disputed domain name to attract
customers to its website by deliberately causing confusion and benefiting from
the good will associated with Complainant’s mark.
Accordingly, Complainant has not established that Respondent registered
and used the domain name in bad faith.
Accordingly to Respondent, Complainant must also prove that Respondent
has no legitimate business interest in the disputed domain name. Respondent may
demonstrate its rights or legitimate interests in a disputed domain name by
demonstrating, among other things, use or demonstrable preparations for use of
the disputed domain name or a name corresponding to the disputed domain name in
connection with a bona fide offering
of goods or services.
As stated, above, <overlandoutfitter.com>
was registered by Respondent to serve
as the future website of Respondent’s future business venture in
Further ICANN’s Uniform Dispute Name Dispute Resolution Policy
Paragraph 4(a)(i) requires Complainant to prove that
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights.
Here, Complainant has not.
As stated, Respondent never intended to violate a company’s trade or
service mark. Any linguistic similarity between Complainant and <overlandoutfitter.com> is coincidental. Although identicality or
confusing similarity is determined without regard to minor variations in
spelling and without regard to top-level domain identifiers.
Complainant has two marks at issue: one is a trademark of “Overland
Outfitters” with a picture of an airplane and another is the service mark of
“overland.com.” Respondent’s domain name <overlandoutfitter.com>,
shares only the word “overland” with Complainant’s service mark. Moreover, the
terms “overland” and “outfitters” are “entirely [sic] common terms to which
Complainant does not have exclusive rights. Moreover, Complainant’s trademark
bears a picture of an airplane. It is this image, coupled with the generic
terms “overland” and “outfitters” that makes
Complainant’s mark unique and identifiable. Thus, without the airplane, the
mere association of the words “overland” and “outfitters” is not infringing.
Moreover, the Complainant alleges the domain is not substantially
similar or confusingly similar because <overlandoutfitter.com> is
visually and substantively different from <overland.com>. First, the
hyperlinks fro products identified on <overlandoutfitter.com> lead
to the websites of non-parties selling those goods; any consumer can easily and
quickly look at the URL and realize that they have been transported to a
completely different vendors’ website. Next, the graphics on <overlandoutfitter.com> depicts a woman wearing glasses wearing
corporate clothing, smiling, in what appears to be an office. Such an image contrasts
sharply against the pictures on <overland.com> of models wearing rugged,
outdoor clothing. Upon seeing this “corporate” image, any reasonable consumer
of Complainant’s (who is ostensibly seeking to buy rugged wear) would realize
that they have “Clicked” on the wrong website and navigate their way to <overland.com>.
Accordingly, Complainant’s allegations that the two websites are substantially
similar or confusing are specious.
Despite the foregoing, Respondent is in the process of removing any and
all potentially confusing content. Respondent has been in communications with
Network Solutions, LLC and is in the process of replacing the content which
currently (as of the undersigning of this Response) online with new content
that will moot these proceedings.
Respondent is taking good faith efforts to remove any risk of confusion
from <overlandoutfitter.com>.
This page depicts a hotel in
Any suggestion by Complainant that this edit to <overlandoutfitter.com> does not eliminate the risk of confusion is
unmerited. Neither Respondent’s business – nor its webpage – will sell any of
the products that Complainant currently sells. Moreover, the markets in which
Complainant and Respondent operate – and those potentially visiting these
websites – are completely different. While Complainant sells “luggage, duffel
bags, carry-ons bags, garment bags for travel, back packs and animal skins;
rush and rugs intended for use as wall hangings,” Respondent will use <overlandoutfitter.com> to advertise its hotel business in Covelo,
California. Indeed, what will soon appear on <overlandoutfitter.com> is
a picture of precisely that: a hotel that once existed in
Moreover, an explicit disclaimer of connection with Complainant alone
suffices to eliminate any risk of confusion to any of complainant’s consumers.
Respondent’s efforts to remove any content
that is offensive to Complainant further demonstrates its good faith. Indeed,
as soon as Respondent became aware of these proceedings, it reached out to
Complainant and offered to remove any offensive content. Complainant, however,
rejected Respondent’s overtures and proposals.
Complainant’s request for transfer of <overlandoutfitter.com> is
a drastic remedy. The law disfavors forfeiture. That, however, it precisely
what Complainant asks this arbitration panel to do: work a
forfeiture. In light of Respondent’s good faith and efforts to remove
any potentially confusing content from the domain name, transfer is unjust and
unmerited. Given the changes to <overlandoutfitter.com>
that will soon appear online,
Respondent argue that <overlandoutfitter.com>
and <overland.com> can co-exist
without any risk of confusion to either party. Accordingly, transfer is
unnecessary and Respondent request the arbitration panel deny Complainant’s request
for relief.
In its Additional Submission dated April 8, 2009, Respondent’s
authorized representative declared the following:
1. “On April 3, 2009, I signed and served on The
Forum and opposing counsel Mountain Valley Company’s Response to Complainant’s
Complaint, wherein Respondent stated that it has been in contact with Network
Solutions, LLC, the registrar of the disputed domain name, with respect to
removing any possibly infringing content from the disputed domain name. Respondent
stated in the Response that it intended to replace the current content on the
webpage with content advertising its future business venture in
2. Since signing and serving the Response, I have
learned that Respondent is currently unable to change or direct the content
which appears on the disputed domain name. According to Network Solutions, LLC,
the disputed domain name is currently in a locked status due to this
arbitration.
3. Attached hereto as Exhibit A is a true and
correct copy of an email Network Solutions, LLC sent Respondent on April 3,
2009, notifying respondent of this “lock.”
4. Because of this lock, Respondent is currently
unable to change, alter or remove any content from the disputed domain name.
This fact, however, does not in anyway affect Respondent’s intentions to remove
the content currently displayed on the disputed domain name and replace it with
Respondent’s test page, a copy of which was attached to the Response to the Complaint
as Exhibit C. For the ease of the arbitration panel and Complainant, Respondent
hereby re-attaches a true and correct copy of that test page at Exhibit B to
this Declaration.
5. Nor does the litigation lock affect in anyway
Respondent’s intentions to post a disclaimer on the disputed domain name
disavowing any connection to or affiliation with Complainant. As soon as the
litigation lock is removed from the disputed domain name, Respondent will
implement these changes to the disputed domain name. “
In its Additional Submission dated April 15, 2009 Complainant stated
the following:
Complainant has sufficiently established rights in the mark OVERLAND
OUTFITTERS by reason of United States Patent and Trademark Office Registration
No. 1,630,865 as well as rights in the mark OVERLAND.COM through United States
Patent and Trademark Office Registration No. 2,524,706.
There is no admissible evidence of record that supports Respondent’s
claim its domain name is not confusingly similar to OVERLAND OUTFITTERS or OVERLAND.COM.
Respondent’s argument – “overland” and “outfitters” are “…terms to
which Complainant does not have exclusive rights” – is inapplicable under
Policy ¶ 4(a)(i) as this portion of the Policy does
not require Complainant to demonstrate exclusive rights in a mark.
Moreover, Respondent’s comments that “overland” and “outfitters” are
common and generic terms, which comprise the domain name, are inapplicable
because a determination regarding them in that context is unnecessary under
Policy ¶ 4(a)(i). That section 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 marks. In any event,
any argument based on the weakness of the marks is irrelevant.
In light of the evidence of record and Complainant’s statements, it is
reasonable for the Panel to find that the domain name at issue is confusingly
similar to the complainant’s marks and that Complainant has met its burden of
proof under ¶ 4(a)(i) of the Policy.
There is no evidence of record that indicates Respondent is commonly
known by the terms “overland” or “outfitter” or anything substantially the same
as one or the other of those terms. Respondent’s limited liability company name
There is nothing in the record evidencing any activity, business or
otherwise, under the domain name by Respondent during the last five years or
since January 13, 2004, the date it registered the domain name. Respondent has
not indicated it has an explicit plan to offer services or products through the
web site, neither ha it described preparations it has
taken or will take, nor has it provided any information concerning the process
or strategy it has implemented or proposes to implement in connection with
opening and operating a business associated with the domain name.
Notwithstanding Respondent’s comments it will have a future business
associated with the domain name, it did not explain why “…Respondent had not
visited or accessed ‘overlandoutfitters.com in years” or why “…Respondent has
not placed any of its own content on ‘overlandoutfitters.com”’ or, “…used or
controlled the domain name.”
Based on the evidence of record, Complainant has made a prima facie
case regarding Respondent’s legitimate interest in the domain name.
Consequently, once a complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to show that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent presented no evidence and made no arguments that
demonstrates its rights or legitimate interest to the domain name under ¶ 4(a)(ii). Among circumstances that Respondent might have
articulated are those set forth in Policy ¶ 4(c), namely:
(i)
before
any notice of the dispute, the Respondent’s use of, or demonstrable
preparations to use the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods and services; or
(ii)
the
Respondent, as an individual, business, or other organization, has been
commonly known by the domain name, even if no trademark or service mark rights
have been acquired; or
(iii)
the Respondent is
making a legitimate non-commercial 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.
Based on the evidence of record, it is reasonable for the Panel to find
Respondent’s inactive use demonstrates Respondent has no rights or legitimate
interest in the domain name under ¶ 4(a)(ii) of the
Policy.
Regarding the third fact in defense of its position respondent relies
heavily on what it claims was done by someone other that it concerning the
placement of content at the domain name web site. Notwithstanding this position
Respondent failed to introduce into the record an affidavit, Declaration, or
other substantive and meaningful evidence supporting its claim it did not place
or know about the content until this proceeding was filed. Of significance
regarding the site’s content is the absence of any explanation about,
description, example, or evidence of content at the site placed at any time by
Respondent, whether initially when the domain name was registered or
thereafter. The current content and that which was there more than one year ago
includes advertising and promotional statements for products the same as and or
like those complainant offers under its marks in issue and that are competitive
with them, as well as links to third-party sites that offer products that
compete with whose complainant offers.
Respondent says it is not responsible for the current use of the
disputed domain name, because it was “not aware” or did not knowingly authorize
the posting of links to the web site. It claims it had no idea of the
infringing content until this proceeding was filed. Despite these claims, it is
reasonable for, the Panel to ignore this line of argument.
Previous panels have frequently considered this use of a disputed
domain name to amount to a parked status, where a third-party, often the
registrar or some parking service, provides links and advertisements on the web
site. Regardless of the service or who posted the material, most panels
consider the respondent-owner of the disputed domain name to be responsible for
whatever contents is posted to its web site.
Keeping this in mind, it is reasonable for this Panel to find that this
parked status does not alleviate Respondent of its responsibility or liability
under the Policy or negate a finding of bad faith.
Respondent’s failure after more than five years to make active use of
the domain name demonstrates that registration was a bad faith registration and
use. Moreover, by virtue of Complainant’s federal registration of OVERLAND
OUTFITTERS and OVERLAND.COM, Respondent has constructive knowledge of
Complainant’s rights in the marks by reason of 15 USC §1072 at the time
Respondent registered the disputed domain name. This circumstance supplies a
presumption of bad faith.
Complainant has no affiliation with Respondent and has never authorized
or consented to the use of its trademark in connection with the web site in
question or otherwise.
In the instant case, the Panel should find that Complainant has
established that Respondent registered and used the domain name in bad faith
within the meaning of Policy ¶4(a)(iii).
FINDINGS
The Panel finds that:
1.
the
Domain Name <overlandoutfitters.com>
is confusingly similar to
the Complainant’s marks,
2.
the
Respondent has not established any right or legitimate interest in the Domain
Name <overlandoutfitters.com>, and
3. the Respondent has registered and is using
the Domain Name <overlandoutfitters.com>
in bad faith.
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 asserts its rights in the OVERLAND OUTFITTERS and
OVERLAND.COM marks, which Complainant has registered with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,630,865 issued January 8,
1991 and Reg. No. 2,524,706 issued January 1, 2002, respectively). The Panel therefore finds that
Complainant has sufficient rights in the marks under Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co.
v. David Mizer Enters., Inc., FA 622122 (Nat.
Arb. Forum Apr. 14, 2006) (finding that the complainant’s
registration with the USPTO for the
Complainant contends that the <overlandoutfitters.com> is identical to Complainant’s OVERLAND
OUTFITTERS mark despite the addition of the generic top-level domain
“.com.” The Panel agrees and finds
accordingly under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239
(Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s
<abt.com> domain name is
identical to Complainant’s ABT mark since addition of a generic top-level
domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Diesel v. LMN, FA 804924 (Nat.
Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to
complainant’s mark because “simply eliminat[ing] the space between terms and
add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to
differentiate the disputed domain name from Complainant’s VIN DIESEL mark under
Policy ¶ 4(a)(i)”).
Complainant contends that the <overlandoutfitters.com> is confusingly similar to Complainant’s
OVERLAND.COM mark despite the addition of the generic word “outfitters.” The Panel agrees and finds accordingly under
Policy ¶ 4(a)(i).
See
Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb.
Forum Sept. 21, 2004) (finding that the addition of the generic term “collection”
to Complainant’s HARRY POTTER mark failed to distinguish the domain name from
the mark); see also Am. Express Co. v.
MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the
respondent’s <amextravel.com> domain name confusingly similar to Complainant’s
AMEX mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)).
While Respondent contends that the <overlandoutfitters.com> domain
name is comprised of common, descriptive terms and as such cannot be found to
be identical or confusingly similar to Complainant’s marks, 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 marks and whether the disputed domain name is identical or confusingly
similar to Complainant’s marks. 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 Complainant must show that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent
does not assume the burden of proof, but may establish a right or legitimate
interest in a disputed domain name by demonstrating in accordance with
paragraph 4(c) of the Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services prior
to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Tech., Inc. v. Int’l Elec. Communications, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Soussi, D2000-0252 WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent, who is listed in the WHOIS
information as “Mountain Valley Co. LLC,” is not commonly known by the
disputed domain name. The Panel agrees
and finds accordingly under Policy ¶ 4(c)(ii). See Coppertown
Drive-Thru Sys., LLC v.
Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the
respondent was not commonly known by the <lilpunk.com> domain name as
there was no evidence in the record showing that the respondent was commonly
known by that domain name, including the WHOIS information as well as the
complainant’s assertion that it did not authorize or license the respondent’s
use of its mark in a domain name).
Complainant also asserts that Respondent has only used the disputed domain name as a parked web page that displays links to Complainant’s competitors. Since the Panel finds that Respondent has made this commercial use, the Panel also finds that Respondent has not made an actual use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
While
Respondent contends that the disputed domain name’s corresponding website
displays links generated by the Registrar, the Panel finds that Respondent
bears the ultimate responsibility for the content of these websites and that
Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb.
Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for
the content of any website using the domain name at issue, and cannot pass that
responsibility off to its registrar or domain name service provider.”); see also StaffEx Corp. v. Pamecha, FA
1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the
registrar, GoDaddy, has posted these [competing] links for the website
associated with the Domain Name.
However, the Panel finds this is no excuse and holds Respondent
accountable for the content posted to the site that resolves from the Domain
Name.”).
Complainant contends that the
display of competitive advertisements on the website resolving from the
disputed domain name constitutes a disruption of Complainant’s business. The Panel finds that Respondent has engaged
in bad faith registration and use under Policy ¶ 4(b)(iii)
since it determines that Respondent harbored the primary intent to disrupt
Complainant’s business. See David
Hall Rare Coins v.
Complainant argues that
Respondent has created a likelihood of confusion for commercial gain as to
Complainant’s sponsorship and affiliation with the disputed domain name and
corresponding website. Since the Panel
agrees, it finds that Respondent has engaged in bad faith registration and use
under Policy ¶ 4(b)(iv). See
The Panel also finds that
Respondent, as owner of the disputed domain name, bears the ultimate responsibility
for the content displayed on a corresponding website, and that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See St. Farm Mutual Auto.
Insr.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <overlandoutfitters.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: April 29, 2009
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