Claim Number: FA0907001274853
Complainant is Missouri Association of RV Parks and Campgrounds (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <campinmissouri.com>, registered with Godaddy.com, 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.
Prof. Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 23, 2009.
On July 21, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <campinmissouri.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 July 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 19, 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 August 19, 2009.
On August 24, 2009 an Additional Submission was timely received from the Complainant in compliance with Supplemental Rule 7. On August 31, 2009 an Additional Submission was timely received from the Respondent also in compliance with Supplemental Rule 7.
On August 27, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Prof. Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it “owns the trademark CAMPINMISSOURI.COM” and that it registered the domain name <campinmissouri.com> in July 2000. Complainant also asserts that since its registration of the domain name it has used the trademark as the web address for its website that provides listings for camping-related business and services. Complainant further contends that one of the former employees of its domain name administrator, Affinity Guest Services, Inc. (Affinity) without authorization, accessed Complainant’s domain account and transferred the domain name in dispute to an entity known as Mid Life Crisis, Inc., who was also using Affinity as its domain name administrator at the time. Mid Life Crisis, Inc. operated a campground that advertised its services on Complainant’s website. Mid Life Crisis, Inc. in turn allegedly engaged the Respondent as its new domain name administrator. Complainant argues that Respondent now claims Complainant’s former domain name, which is by nature an identical and confusingly similar mark, as its own. Complainant states that Respondent did not, nor does it currently have any rights or legitimate interests in the disputed domain name and that in fact Respondent’s registration and use of the disputed domain name is in bad faith.
Respondent contends that “Complainant has no rights in the phrase CAMPINMISSOURI.COM that are protectable through the UDRP process…” because the phrase fails to function as a trademark, because the Complainant does not have a federal or state registration and because Complainant inadequately alleges even common law rights. Respondent also asserts that CAMPINMISSOURI.COM is generic or descriptive and lacking secondary meaning and that Complainant’s version of events leading to Respondent’s registration of the disputed domain is “nothing more than unsworn hearsay” that “does not provide a reliable basis for the Forum to decide UDRP matters”. Respondent further argues that Complainant failed to establish that Respondent did not have rights or legitimate interests with respect to the disputed domain name and that the domain name should not be considered registered or used in bad faith since Respondent is not interested in selling, renting or transferring the domain name. Respondent noted that since the disputed domain resolves to Complainant’s website it can not be properly asserted that it is using the disputed domain to avert customers from Complainant or not offering bona fide services.
C. Additional Submissions
Complainant’s additional submissions reiterated Complainant’s contentions regarding its alleged valid rights in the mark CAMPINMISSOURI.COM emphasizing that it was claiming rights in the whole term including the .com portion. Complainant attempted to refute each of Respondent’s arguments regarding Complainant’s supposed lack of rights in the domain name and Complainant also underscored its alleged support for proof of secondary meaning in its alleged mark. Complainant additionally noted Respondent’s failure to affirmatively show any rights or legitimate interests in the disputed domain name. Complainant further questioned Respondent’s stance in denying that its behavior violated any of the UDRP examples of bad faith while simultaneously not denying any of the facts asserted by Complainant as the basis for proof of bad faith and registration. Complainant’s additional submissions included a sworn “Declaration Of [ ] in Support of Complaint’s Amended Complaint Against Sugar Mountain Design Company” from the Vice President of Affinity Guest Services, Inc. who confirmed Complainant’s version of events leading to the loss of the disputed domain name.
Respondent’s additional submissions observed Complainant’s additional
submissions through the proverbial looking glass comparing the arguments to
Respondent’s excerpts from the works of Lewis G. Carroll are not totally inappropriate here. Despite the opportunities and efforts taken by each side to stake their relative claims to the disputed domain name the most pertinent facts upon which to draw the best legal conclusions seem to be somewhere down the rabbit hole.
Complainant is a non-profit trade association
representing RV parks and campgrounds in the state of
Upon discovering that Respondent had taken control of the domain name in question Complainant had counsel contact Respondent regarding the return of the domain name. Mid Life Crisis, Inc. answered for the Respondent indicating that all correspondence should be directed to them. Mid Life Crisis, Inc. also indicated in that response that on March 24, 2009 Affinity “was directed to release control of domain names owned by Mid Life Crisis, Inc and turn that control over to Sugar Mountain Design Co.” including the domain name <campinmissouri.com>. No reason was given for the directive nor was any explanation given for including the disputed domain name as one of those owned by Mid Life Crisis, Inc. The response further stated that out of goodwill, Mid Life Crisis, Inc has “redirected this domain name to display the MOARC website” per an agreement between the VP of Mid Life Crisis, Inc. and the Executive Director of MOARC. The agreement was to allegedly remain in effect until the end of 2009 when MOARC could begin to advertise a new domain name or until MOARC could show that it owned the disputed domain prior to Affinity’s March 24, 2009 “inadvertent” transfer of the same to Mid Life Crisis, Inc. Respondent and/or Mid Life Crisis, Inc. apparently had a change of heart since the time the response was mailed, deciding not to release the domain name back to MOARC per their alleged agreement but instead hold it with plans to use it to resolve to a website that advertises its own camping related business and services.
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 admittedly not registered the CAMPINMISSOURI.COM mark with any governmental agency but governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant’s initial statements
appear to suggest that by registering the domain name <campinmissouri.com> they also “own” trademark rights in the
CAMPINMISSOURI.COM mark. Such a position would be faulty since domain name and
trademark procurement are separate processes that do not confer automatic
rights in the other. A domain name can give rise to trademark rights and a
trademark can be used as a domain name but mere registration of one does not
automatically bestow one with rights to both. Complainant does argue further
that it has established common law rights in the CAMPINMISSOURI.COM mark. This
argument is only sustainable upon Complainant’s proof of secondary meaning
since its mark is somewhat descriptive. Secondary meaning is used to indicate
that an unprotectable descriptive mark has attained a level of distinctiveness
warranting its recognition and protection as a trademark. A descriptive mark is
one where the mark terminology describes the goods or services provided in full
or in part. Since the Complainant’s service is the provision of website
resources for those who may want to camp in
Complainant has used the mark since
2000 for providing internet information related to the camping business and
related services throughout the state of
Respondent acquired Complainant’s domain name that Complainant was using as its common law trademark for the purpose of using the disputed domain in a similar fashion as Complainant was using it. Respondent’s <campinmissouri.com> domain name is identical to Complainant’s CAMPINMISSOURI.COM mark pursuant to Policy ¶ 4(a)(i). See Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identically of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”). While Respondent contends that the <campinmissouri.com> domain name is comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Complainant has proven this element.
Respondent’s submissions chastise the Complainant for failure to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. However it is not Complainant’s burden to prove a negative. The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the <campinmissouri.com> domain name.
The WHOIS information lists Respondent as “Sugar Mountaindesign” which
has indicated that it is acting on behalf of Mid Life Crisis, Inc. which is
also not commonly known by the <campinmissouri.com>
domain name. Further, Respondent was not
authorized to use the CAMPINMISSOURI.COM mark. Respondent argues that since it
is the administrator for Mid Life Crisis, Inc., that does business as an RV and
camping park in
Respondent has also failed to demonstrably prepare to use the <campinmissouri.com> domain name because the disputed domain name still resolves to Complainant’s website. Although the Respondent develops the occasional website and its principal has stated that it may use the website to advertise its own campground sometime after 2009 such speculative declarations do not equate with preparation to use the disputed domain. Nor does an alleged goodwill gesture of using the domain name to resolve to the Complainant’s website insulate the Respondent from the need to provide some affirmative indication that concrete steps are being taken by the Respondent toward proper use of the disputed domain. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant has proven this element.
Respondent admits that its principal, Mid Life Crisis, Inc. received the <campinmissouri.com> domain name from a third-party (Affinity) who formerly worked in domain name administration for both Complainant and Respondent. Respondent’s knowledge of this third-party’s status as a former employee provides evidence of knowledge of Complainant’s mark. Respondent’s knowledge of Complainant’s mark, and Respondent’s registration of the disputed domain name provides proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name); see also Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended). Respondent fails to actively use the disputed domain for anything other than to resolve to a website established by Complainant before the disputed domain name was transferred to Respondent. The lack of active use does not preclude a finding of bad faith nor does a claim of active use supported only by the dedication of the domain name to Complainant’s pre-existing website. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith); see Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <campinmissouri.com> domain name be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C.
Dated: September 10, 2009
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