Arctic Structures, LLC, an
Alaska limited liability company v. Jennifer Ellison
Claim Number: FA1001001304076
PARTIES
Complainant is Arctic Structures, LLC, an Alaska limited liability company (“Complainant”), represented by John W Colver, of Jones & Colver, LLC, Alaska, USA. Respondent is Jennifer Ellison (“Respondent”), West Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keystonehotel.com>, registered with Moniker
Online Services, Inc.
PANEL
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.
Hon. Nelson A. Diaz (ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 20, 2010. With its Complaint, Complainant also chose to
proceed entirely electronically under the new Rules for Uniform Domain Name
Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by
submitted an “opt-in” form available on the Forum’s website.
On January 21, 2010, Moniker Online Services, Inc. confirmed by e-mail
to the National Arbitration Forum that the <keystonehotel.com> domain name is
registered with Moniker Online Services, Inc.
and that the Respondent is the current registrant of the name. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On January 27, 2010, a Written
Notice of the Complaint, setting a deadline of February 16, 2010 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@keystonehotel.com by
e-mail.
A timely Response was received and determined to be complete on February 15, 2010.
Respondent chose to opt-in to the electronic process with its
submission and submitted its Response in electronic copy only.
Complainant’s Additional Submission was received on February 19, 2010
in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on February 19, 2010 in
compliance with Supplemental Rule 7.
On February 26, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Nelson A. Diaz as Panelist.
Respondent’s second Additional Submission was
received on March 1, 2010. This
Additional Submission was not in compliance with Supplemental Rule 7.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has
used the name/mark “Keystone Hotel” in connection with the providing of
hotel accommodations to business patrons in Valdez, Alaska since at least
August 1, 1994. In 2004, Raoul Stockler (Pursell) an owner of the complainant,
on behalf of the Complainant, applied for, received and began to use the domain
name <keystonehotel.com>. The
domain name <keystonehotel.com>
was issued to Complainant by directNIC in 2004. The domain name <keystonehotel.com> was used in
connection with a website created by Complainant for Complainant’s business,
the “Keystone Hotel” in Valdez, Alaska. The website was hosted by HalfPrice
Hosting in 2004 and was posted on the internet as a means for Complainant to
advertise, to communicate with, and solicit business patrons for its Keystone
Hotel in Valdez, Alaska, and to allow business patrons to complete an online
booking for a stay at the Keystone Hotel.
Complainant’s registration for the domain name <keystonehotel.com> lapsed in 2008. While it was lapsed, the Respondent
registered the name <keystonehotel.com>
in her own name, copied the website which Complainant had posted on the
internet and posted Respondent’s own alternative web site on the internet which
posed as the website for Complainant’s Keystone Hotel in Valdez, Alaska,
through which Respondent has solicited Customers. Respondent is not actually in
the hotel business herself, does not own the Keystone Hotel in Valdez, Alaska,
and has no known legitimate use for the domain name <keystonehotel.com>.
B. Respondent
The domain <keystonehotel.com> expired in
October 2008, after going through the "redemption period" the
complainant failed to renew the domain. On about 11/20/2008 we acquired the
domain through NameJet expired domains auction with the intention of developing
a hotel booking site for Keystone, Colorado, a popular travel destination. “Until
we are ready to launch the new hotel booking site for Keystone, Co, as a
service we left the previous content up for the benefit of the Keystone Hotel
in Valdez, AK. At the time the domain
was acquired there were no registered "keystone hotel",
"keystonehotel.com" or any other confusingly similar
trademarks/servicemarks with the USPTO. Complainant's trademark "keystone
hotel" was filed on 11/05/2009 a year after the domain was registered.”
C. Additional
Submissions
On March 1, 2010 Respondent filed an Additional Submission. The Forum does not consider this submission to be in compliance with Supplemental Rule #7. The Forum’s Supplemental Rule 7(e) only permits one Additional Submission (7(a)) or response to Additional Submission (7(c)) per Party. However, we the Panel reviewed the submission and considered it to be irrelevant to the issues at hand.
FINDINGS
Under
ICANN Policy ¶ 4(a)(i) the Domain Name is “confusing
similar,” Under Policy ¶ 4(a)(ii)
Respondent has “no rights or legitimate interests,” and Under Policy ¶
4(a)(iii) it was registered and used 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 does not hold a registration for the KEYSTONE HOTELS mark with a governmental authority, but the Panel finds governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels have determined that a federal registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. 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 contends it has used the KEYSTONE HOTEL mark in association with Complainant’s hotel business since 1994. Complainant originally registered the <keystonehotel.com> domain name in 2004 before inadvertently allowing it to lapse in October of 2008. Respondent registered the disputed domain name on November 20, 2008. The Panel finds Complainant has established common law rights in the KEYSTONE HOTEL service mark through continuous and extensive commercial use of the mark since 1994, predating Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which both made the mark distinctive and generated “significant goodwill”); see also Artistic Pursuit LLC v. calcuttaweb-developers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that a complainant established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before a respondent registered its disputed domain name).
Complainant contends Respondent’s <keystonehotel.com>
domain name is identical to Complainant’s mark.
The disputed domain name
contains Complainant’s entire mark and simply adds the generic top-level domain
“.com.” The Panel finds the addition of
a generic top-level domain is irrelevant to a Policy ¶ 4(a)(i)
analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Treeforms, Inc. v. Cayne Indus. Sales Corp.,
FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s
<treeforms.com> domain name is identical to the complainant’s TREEFORMS
mark). If so, the Panel finds
Respondent’s <keystonehotel.com> domain name is identical to Complainant’s KEYSTONE HOTEL
mark under Policy ¶ 4(a)(i).
While Respondent contends that the <keystonehotel.com> domain name is comprised of common generic, descriptive and geographical terms and as such cannot be found to be identical to Complainant’s mark, 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 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.”).
The Complainant has made 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.”).
Complainant contends Respondent is using the disputed domain name,
which is identical to Complainant’s mark, to resolve to a copy of Complainant’s
authentic website with a link for “online reservations” that resolves the
competing third-party domain name <hotels.com>. The Panel finds this use is neither a bona fide offering of goods or services
or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i)
or (iii), respectively. See Meyerson
v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding
that where a respondent has failed to offer any goods or services on its
website other than links to a variety of third-party websites, it was not using
a 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 also
Skyhawke Techns., LLC v. Tidewinds
Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise
Complainant and its competitors’ products.
The Panel finds that this use of the disputed domain name does not
constitute 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 Mortgage Research Center LLC v.
Miranda, FA 993017 (Nat.
Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also
attempting to pass itself off as [the] complainant, presumably for financial
gain, the Panel finds the respondent is not using the
<mortgageresearchcenter.org> domain name for 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 Am. Int’l Group, Inc.
v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the
respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name).
Complainant asserts that it has not granted Respondent permission to
use its KEYSTONE HOTEL mark.
Additionally, there is no evidence in the record suggesting that
Respondent is commonly known by the disputed domain name. The WHOIS information associated with the
disputed domain name lists Respondent as “Jennifer
Ellison.” The Panel finds Respondent is
not commonly known by the <keystonehotel.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also 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).
Additionally, Complainant was the original
registrant of the <keystonehotel.com>
domain name in 2004 and Respondent registered the disputed domain name after
Complainant mistakenly allowed the registration to lapse in 2008. The Panel finds this is further evidence that
Respondent lacks rights and legitimate interests in the <keystonehotel.com> domain name under
Policy ¶ 4(a)(ii).
See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s
prior registration of the same domain name is a factor in considering the
respondent’s rights or legitimate interests in the domain name); see also Zappos.com, Inc. v.
Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact
that Complainant had previously held the <wwwzappos.com> domain name
registration and has mistakenly allowed it to expire is further evidence that
Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(a)(ii).”).
Respondent is using the
disputed domain name to resolve
to websites imitating Complainant’s authentic website with a link for “online
reservations” that resolves the competing third-party domain name
<hotels.com>. The Panel finds
Respondent is using the <keystonehotel.com>
domain name to disrupt Complainant’s business by diverting Internet users to
Complainant’s competitors. The Panel
concludes this is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see
also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding
that the respondent registered and used the domain name <eebay.com> in
bad faith where the respondent has used the domain name to promote competing
auction sites).
Complainant contends Respondent is using the disputed domain name,
which is identical to Complainant’s mark, to resolve to a copy of Complainant’s
authentic website with a link for “online reservations” that resolves the
competing third-party domain name <hotels.com>. Complainant contends that since the disputed
domain name is identical to Complainant’s mark, Internet users are likely to be
confused as to Complainant’s affiliation or sponsorship of the disputed domain
name and resolving website. The Panel
finds this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat.
Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”); see also Capital One Fin. Corp. v.
Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding
bad faith registration and use because the respondent used the domain name to
redirect Internet users to a website that imitated the complainant’s website
and to fraudulently acquire personal information from the complainant’s
clients).
Lastly, Complainant asserts it held the disputed domain name from its
initial registration in 2004 until the registration was inadvertently allowed
to lapse in October of 2008. Respondent
took over the registration of the <keystonehotel.com>
domain name sometime on November 20, 2008.
The Panel finds Respondent’s registration of the disputed domain name
after Complainant’s inadvertent lapse in registration is further evidence of
bad faith registration and use under Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133
(Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was
previously held, developed and used by Complainant, opportunistic registration
of the domain name by another party indicates bad faith, absent any
justification that illustrates legitimate use.”); see also RH-Interactive
Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16,
2003) (holding that the complainant’s prior registration and use of the
disputed domain name and the respondent’s registration of the domain name
immediately after the complainant failed to timely renew its registration
“gives rise to an inference of registration in bad faith pursuant to Policy ¶
4(a)(iii)”).
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 <keystonehotel.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: March 12, 2010
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