The Overland Sheepskin Company, Inc. v. Mountain Valley Co. LLC
Claim Number: FA0902001249697
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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
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
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).
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.
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.
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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