Skate House Ltd. v. Edward Wright
Claim Number: FA0210000128795
Complainant is Skate House Ltd., Portland, OR (“Complainant”) represented by Gary H. Lau, of Stoel Rives LLP. Respondent is Edward Wright, Atlanta, GA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skatehouse.com>, registered with Enom.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Ralph Yachnin, Alan L. Limbury and David P. Miranda, Chair.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 30, 2002; the Forum received a hard copy of the Complaint on October 31, 2002.
On November 1, 2002, Enom confirmed by e-mail to the Forum that the domain name <skatehouse.com> is registered with Enom and that the Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 November 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 21, 2002 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 November 27, 2002.
Complainant’s additional submission was received on November 27, 2002.
On December 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin, Alan L. Limbury and David P. Miranda, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it has developed common law trademark rights to the marks SKATE HOUSE and SK8HOUSE.COM based upon extensive advertising and use since 1995 with respect to its retail services for the sale of in-line skates and related accessories. Complainant contends that Respondent Wright has registered and is using the domain name <skatehouse.com> in bad faith. Visitors to the <skatehouse.com> domain are redirected to a commercial website belonging to one of Complainant’s largest competitors, Skatepile, LLC.
Respondent contends that Complainant has no enforceable rights under the Policy because the term “SKATE HOUSE” is a common descriptive generic term, which is the subject of substantial third party use and was in existence before Complainant began using it. Respondent contends that it has a legitimate interest in the disputed domain name having registered it in connection with its plan for a website for products, services and information related to the field of in-line skating. Its use of the domain name, in connection with redirection to a third party generates advertising revenue, constitutes use in connection with a bona fide offering of goods or services.
C. Additional Submissions
Complainant’s Supplemental filing is considered by the majority of the Panel, however, one panelist objected to the additional submission being in violation of UDRP rules, limiting additional submissions to those sought by the panel. Am. Online v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002).
The Panel finds that Complainant has common law trademark rights to SK8HOUSE.COM and the domain name <skatehouse.com> is confusingly similar to Complainant’s mark. Complainant has established that Respondent has no rights or legitimate interests in the domain name <skatehouse.com> and has registered and is using that domain name in bad faith, thus warranting the transfer of the domain name to Complainant.
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.
Identical and/or Confusingly Similar
Complainant asserts that it has trademark rights in SKATE HOUSE and SK8HOUSE.COM. Complainant has submitted evidence of its use of the marks in various advertisements and mail order services, as well as its online store located at <sk8house.com>. Although Complainant has applied for a service mark for SKATE HOUSE with the United States Patent and Trademark Office (Ser. No. 78,138,329), the application provides Complainant with no additional rights. Complainant uses its asserted marks in relation to the sale of in-line skates, skate accessories, protective gear, clothing and skate media. Complainant has used the marks in relation to its retail services since 1995.
The Panel finds that although the term SKATE HOUSE may be merely descriptive with respect to products, services and information related to in-line skating, Complainant also claims common law rights to SK8HOUSE.COM and has submitted proof of use of that mark in advertising as the source of Complainant’s goods and services. Respondent’s arguments and submissions are directed solely to Complainant’s SKATE HOUSE mark and Respondent does not direct any submissions contrary to Complainant’s claim to the asserted SK8HOUSE.COM mark. In fact Respondent’s Response, at page two, indicates an acceptance that “sk8” refers to Complainant.
Complainant has submitted sufficient evidence to establish that it has common law trademark rights in SK8HOUSE.COM. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the Complainant has rights’ means that ownership of a registered mark is not required, unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol.4 (2000).
The Panel finds that the domain name in question, <skatehouse.com>, is confusingly similar to Complainant’s common law trademark SK8HOUSE.COM.
Rights or Legitimate Interests
Complainant asserts that Respondent is using the disputed domain name in order to redirect Internet users to a website that competes with Complainant’s goods and services. Complainant has submitted evidence that its competitor “Skatepile” pays Respondent to use the <skatehouse.com> domain name to divert Internet users to Skatepile’s website. Respondent is using the disputed domain name for no purpose other than to redirect Internet users to a competitor of Complainant, and is not using 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 pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant’s site to a competing website).
Furthermore, Respondent is not commonly known as <skatehouse.com> or SKATE HOUSE because it is not using the mark to identify itself or any good or service, and therefore Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on the website that would justify use of the word NOKIA within the domain name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent’s claim that its “mere intent to publish” at some future date an online portal for in-line skating establishes its legitimate interest in the domain. This proposition is rejected as Respondent has not submitted any proof of use of or demonstrable preparations to use the domain name in this manner, as required pursuant to Policy ¶ (4)(c)(i). The fact that Respondent is generating revenue from the redirection of the domain name to a competitor of Complainant is not a legitimate business purpose, but rather the type of conduct that the ICANN Policy is intended to prevent.
Registration and Use in Bad Faith
Complainant asserts that Respondent registered and used the disputed domain name in bad faith because it is using <skatehouse.com> to deliberately attract and divert Internet users to a website that competes with Complainant’s business. Complainant has submitted evidence and Respondent admits it is being paid by Skatepile, Complainant’s competitor, to use the disputed domain name for this very purpose. Therefore, Respondent is using the disputed domain name to create a likelihood of confusion for Respondent’s commercial gain which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).
Complainant further asserts that Respondent is using the disputed domain name in order to disrupt Complainant’s business by diverting Internet users looking for Complainant at <skatehouse.com> to Complainant’s competitor, Skatepile. This behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the Respondent, a company financially linked to the Complainant’s main competitor, registered and used the domain name in question to disrupt the Complainant’s business).
Furthermore, Complainant notes that Respondent attempted to sell the disputed domain name to Complainant for $20,000, a cost far exceeding out-of-pocket expenses. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”).
The Panel determines that the domain name <skatehouse.com> shall be TRANSFERRED to Complainant. Respondent, Wright, and Registrar ENOM, is ordered and directed to TRANSFER <skatehouse.com> to Complainant, Skate House Ltd.
Hon. Ralph Yachnin,
Alan L. Limbury and
David P. Miranda, Chair
Dated: January 3, 2003
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