Ho-Chunk Nation v. Suzanne Field / Dells Ducks
Claim Number: FA 1358046
Complainant is Ho-Chunk Nation (“Complainant”), represented by Joel D. Leviton of Fish & Richardson P.C., P.A., Minnesota, USA. Respondent is Suzanne Field / Dells Ducks (“Respondent”), represented by Joseph W. Byrne of Boardman, Suhr, Curry & Field LLP, Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hochunknation.com> ("the Domain Name") , registered with Network Solutions, LLC.
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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2010; the National Arbitration Forum received payment on November 12, 2010.
On November 15, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <hochunknation.com> Domain Name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hochunknation.com. Also on November 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 7, 2010.
On December10, 2010, an Additional Submission was received in a timely manner in accordance with Supplemental Rule 7.
On December 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
On December 15, 2010 the Respondent lodged an additional written statement.
On December 20, 2010 the Panelist issued an Order requesting further information from both parties.
On January 7, 2011 the Complainant and the Respondent both lodged Responses to the Order.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant's submissions can be summarised as follows:
Ho-Chunk Nation ("Ho Chunk") is an indigenous, sovereign and federally recognised Indian tribe native to Wisconsin, USA. The first recorded history of the Ho-Chunk tribe dates back to 1634. The Constitution and By Laws of the tribe were officially ratified and approved by the Commissioner of Indian Affairs in 1963. Currently there are over 6,000 tribe members and the tribe owns over 4,000 acres of land.
Ho-Chunk conducts lawful gaming in an exercise of inherent sovereignty and in accordance with the Indian Gaming Regulatory Act. Since at least as early as 1991, Ho-Chunk has used its HO-CHUNK mark continuously in connection with casino services and since 2000 continuously in relation to hotel and restaurant services. It also owns two federal registrations, including HO-CHUNK for casino, hotel and restaurant services. Ho-Chunk acquired both common law and registered rights in its HO-CHUNK name and service mark long before the Respondent registered the Domain Name in 1999.
Respondent registered the Domain Name in bad faith to capitalise on the goodwill associated with the Ho-Chunk Nation and its well known resort and casino services. Respondent uses the Domain Name to derive advertising and click through revenue by displaying numerous revenue-generating links that lead to web sites advertising and promoting third party products and services, including Native American crafts and merchandise as well as casino and hotel services that compete with Ho-Chunk's services. Respondent is using the Domain Name to generate advertising revenue by creating a likelihood of confusion with Ho-Chunk's name and service mark. The Domain Name incorporates the official name of the tribe in its entirety and the public is highly likely to assume mistakenly that the Domain Name is in some way connected with or sponsored by Ho-Chunk. Respondent's web site prominently features a Hochunknation.com banner at the top of its page falsely suggesting that the site is affiliated with or sponsored by Ho-Chunk.
De minimis alterations of a name do not minimise or alter the resulting likelihood of confusion
Respondent has not used the Domain Name in connection with a bona fide offering of goods and services, is not making non commercial fair use of the name and has never been known as or referred to as Ho-Chunk or Ho-Chunk Nation. Respondent is not authorised or licensed by Ho-Chunk to use its Ho-Chunk or Ho-Chunk Nation name and marks.
The Respondent is well aware of Ho-Chunk and its trade mark.
B. Respondent
The Response can be summarised as follows:
Respondent is a lifelong resident of the city of Wisconsin Dells, Wisconsin, USA. Native Americans, including members of the Ho-Chunk Nation, have formed a significant part of the history of Wisconsin Dells. During her many years in this area the Respondent experienced lifelong relationships with many Native Americans, including members of the Ho-Chunk Nation, both of a business and personal nature. When she was young, every summer her mother took her to the local Indian village to buy Indian made goods and she attended the Wisconsin Dells Indian Ceremonial .
For 34 Years Respondent with her husband has owned and operated several businesses located in Wisconsin Dells, including a gift shop from 1976 until it was destroyed by fire in March 2009. Over the years thousands of unique Native American goods and artifacts were sold from this gift shop, many of which were made by Native American members of the Ho-Chunk Nation.
Native Americans, including members of the Ho-Chunk Nation, have always been an integral part of the Respondent's personal and business life. As a result of these relationships, Respondent has collected a vast amount of information and pictures over the years concerning Native Americans and their history including the history of the Ho-Chunk Nation.
The Domain Name was registered in April 1999. Respondent's sole intention and purpose for registering the Domain Name was to use it in connection with a web site showcasing the information and pictures that she had collected over the years due to her genuine interest in this history. However, due to the demands of running businesses, a period of almost 3 years of hospice care for her mother and the setbacks caused by the fire, the efforts to create the intended web site have been delayed. However, the Respondent still intends to create this site.
It was only recently brought to the Respondent's attention that her Registrar is using the Domain Name in connection with a parked web page. Prior to this proceeding being commenced, Respondent was not aware this parked page existed. Respondent had no involvement in the set-up or use of this parked page. Respondent, upon learning about the page, requested that it be removed and disabled; however as a result of these proceedings the Domain Name is legally locked and her Registrar was unable to disable the parking page.
The Respondent has never used the Domain Name for profit or otherwise in relation to any web site. She has never received any money from her Registrar or any commercial gain or profit from the registration or use of the Domain Name.
Complainant does not allege or assert that it has any trade mark rights in the descriptive name Ho-Chunk Nation. As such, the Complainant has not established that it has rights in a trade mark that is identical to the Domain Name.
Complainant has provided no evidence that it has any trade mark rights, common law or otherwise, in the mark HO-CHUNK for casino services dating back to 1991 or hotel and restaurant services dating back to 2000. The applications for the Complainant's registered marks were made in 2002, two years after the Respondent registered the Domain Name.
The Domain Name is not confusingly similar to any of the registered marks in which the Complainant has rights, the word mark HO-CHUNK and the design and word mark HO-CHUNK CASINO. The web site at the <ho-chunk.com> domain name only shows use of the words "Ho-Chunk Gaming." Internet printouts provided by the Complainant have not been properly authenticated and are not dated. They should not be considered, but if they are, they are only evidence that "Ho-Chunk Nation" has been used to describe various aspects of Complainant's tribal government and not as a trade mark.
As such the Complainant does not have any rights in a trade mark that is confusingly similar to the Domain Name.
The Respondent has a legitimate interest in the Domain Name. The Respondent's preparations for her web site pre-date any notice she received relating to the dispute. Respondent's use of the Domain Name for her web site is a legitimate, non commercial or fair use of the Domain Name. It will be made without commercial gain and will not be used to mislead or tarnish any trade marks.
Respondent did not register and use the Domain Name in bad faith.
Complainant has not established that it had any rights in any trade marks as of the date that the Respondent first registered the Domain Name and, therefore, there can be no finding of bad faith. The Respondent is not aware and was not aware at the time she registered the Domain Name that the Complainant has or had any trade mark rights in Ho-Chunk Nation.
The Respondent did not register the Domain Name to sell it. The name was not registered to prevent the Complainant from registering a corresponding domain name. The Complainant always uses its name with a dash between "Ho" and "Chunk" and so has not been prevented from registering their precise name as a Domain Name. The Respondent is not a competitor of the Complainant and did not register the name to disrupt the business of the Complainant.
The printouts that the Complainant has produced of alleged pages accessible through the Domain Name are not authenticated or dated and should be disregarded. There is no evidence as to how long such pages are alleged to have been accessible. The Respondent's registrar did use the Domain Name to allow a parked page, but the Respondent only found this out after this proceeding was commenced and because of the legal lock placed on the Domain Name by the commencement of the proceedings the Respondent was unable to get it removed. The Respondent has never received any money from the parked page.
C. Additional Submissions
Further points made in the Complainant’s Additional Submission can be summarised as follows:
For eleven years the Respondent has held the Domain Name and failed to post any meaningful non-commercial content or otherwise make any attempts to remedy the impression that her page was affiliated with or endorsed by the Complainant. Yet when the Complainant previously approached the Respondent regarding this issue, she refused to cooperate. Moreover, as to the argument that she had no control or awareness of the commercial content on her own web site despite receiving previously formal notice of Complainant's trade mark rights and its desire that she remove the commercial content connected to the Domain Name, the Respondent failed to make any changes. The registrant of a domain name is responsible for the content attached to it.
Respondent admits she owns and operates a gift store which engages in the wholesale purchase of Native American goods and so she has a significant vested interest in having consumers believe that she and her website are officially endorsed by or affiliated with the Complainant. This casts severe doubt on the Respondent' s unsupported claims that her longstanding plans for the Domain Name involve purely non commercial aspects. The "objective" consequence and effect of Respondent's conduct has always been to free ride on Complainant's significant goodwill for commercial gain. Her own explanations regarding her relationship with the Complainant indicate her consistent intent to profit from the Complainant’s goodwill.
Combining a trade mark with a generic term that is associated with the trade mark owner renders the Domain Name confusingly similar to the mark. Additionally, where a Respondent's domain name is identical to the Complainant's mark except for the removal of a hyphen from the mark and the addition of the generic top-level domain, it is considered identical for the purposes of the Policy. Respondent has no basis to distinguish between the Domain Name and the Complainant's HO-CHUNK mark. The removal of a hyphen and the addition of the generic term "nation" do not sufficiently alleviate the likelihood of customer confusion. Additionally, because the Complainant is formally known as the Ho-Chunk Nation, Respondent's claim that the Complainant has no right to prevent others from using the full tribal name in a commercial context is utterly without merit. The Complainant refers to the US Trade Mark registration THE GREAT SEAL OF THE HO-CHUNK NATION which expressly incorporates the full tribal name.
The Respondent's contentions that she grew up with members of the Ho-Chunk Nation merely evidences her awareness of the Complainant at the time she registered the Domain Name. The Respondent's plans for the web site were never adopted and the only objective manifestation of her domain ownership has been the operation of a commercial parked page which generates click though revenues to misdirect consumers to competitors of the Complainant.
The passive holding of the site supports a finding of bad faith. The Respondent is holding the Domain Name hostage from its rightful owner the Complainant.
Further Points made in the Respondent's Additional Submissions can be summarised as follows:
The web site printout provided by the Complainant is unauthenticated and undated, but even if it were competent evidence, it shows nothing more than on some unspecified date this web site was accessible using the Domain Name. It does not provide evidence that the Respondent has been using the Domain Name for eleven years for commercial gain. The Respondent has never used the Domain Name and has not received any commercial gain from it. The Respondent only learned about the parking page as a result of this proceeding. Complainant has provided no evidence of and Respondent disputes the accuracy of Complainant's description of its prior contacts with the Respondent.
Respondent disputes that she has maintained a commercial website for over a decade at a name identical to the Complainant or its trade marks, that Internet users are misdirected to other websites which offer competing hotel and casino services and Native American merchandise from the site attached to the Domain Name and that the Respondent has a vested interest in having consumers believe that she and her web site are affiliated with the Complainant.
THE GREAT SEAL OF THE HO-CHUNK NATION trade mark mentioned by the Complainant is for an elaborate design mark incorporating those words. It does not provide evidence of any trade mark for the trade mark rights in "Ho Chunk Nation" alone and by themselves.
According to the registration certificates of the Complainant, the registrations are owned by Ho-Chunk Nation, a Wisconsin corporation. Complainant is not, however, a Wisconsin Corporation, but is an indigenous, sovereign and federally recognised Indian tribe. Complainant has not provided any evidence to establish that it has any relationship to the Corporate party listed as owner of the registered trade marks.
Complainant did not provide an affidavit or declaration to support its case.
Nation is not a generic term for casino or hotel services.
The registrations recite dates of first use of the marks in relation to casino services which pre-date the Respondent's April 1999 domain name registration date; however, dates of first use specified in a registration do not constitute evidence. Complainant has provided no evidence to establish it has acquired any common law rights in any Ho-Chunk mark prior to respondent's registration in April 1999. At the time of the registration, the Respondent was not aware of any trade mark rights owned by the Complainant in "Ho Chunk Nation." As such, the Respondent's registration could not be in bad faith.
D. Responses to the Order
Additional points from the Complainant's Response can be summarised as follows:
The Complainant provided dated evidence of use of its HO-CHUNK trade mark in relation to casino services from 1992 and 1993 and copies of its correspondence with the Respondent.
In the applications for its U.S. registrations for the marks HO-CHUNK and HO-CHUNK CASINO and design, the Complainant was mistakenly identified as a Wisconsin corporation. Amendment requests were filed to properly identify the Complainant as a federally recognised Indian tribe. The USPTO has issued an amended certificate of Registration in respect of HO-CHUNK CASINO and design, but the one for HO-CHUNK has not been entered yet. The Complainant has not yet filed an amendment request for the registration for THE GREAT SEAL OF THE HO-CHUNK NATION and design.
Additional points from the Respondent's Response can be summarised as follows:
The Respondent exhibited historical material, information and pictures that survived the fire, much of which is undated, the correspondence between her and the Complainant and some e mails she received asking about purchasing the domain name and her responses. The Respondent submits that the e mails and correspondence show that as of January 30, 2007 and July 30, 2002 the Domain Name was not being used for any purpose.
The Respondent has finally succeeded in having the parked "under construction" page connected to the Domain Name removed and disabled.
The Complainant is an indigenous, sovereign and federally recognised Indian Tribe which has evidence going back to 1992 and 1993 that it has used its HO-CHUNK mark in relation to casino services. It has federal U.S. trade mark registrations consisting of or containing HO-CHUNK, including a registration for the HO-CHUNK mark registered in 2003 recording first use in commerce as 1991. The Respondent registered the Domain Name in 1999 and says she did so for use as a website containing history about the Complainant; however, it has never been used for this purpose and was connected to a page containing commercial links to web sites not connected to the Complainant.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Complainant has federal U.S. trade mark registrations consisting of or containing HO-CHUNK, including a registration for the HO-CHUNK mark registered in 2003 recording first use in commerce as 1991. The Complainant has also produced dated evidence of use of the HO-CHUNK mark back to 1992 and so has shown that it has common law rights in the mark dating back to this date. The Domain Name consists of the Complainant’s HO-CHUNK mark without the hyphen and with the generic words "nation" and the top level designation ".com." The removal of the hyphen, the addition of the generic word "nation," reflecting the full name of the Complainant, and the top level designation “.com” in the Domain Name does not serve to distinguish the Domain Name from the Complainant's HO-CHUNK mark. See Ritz Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Space Imaging LLC v. Brownell, AF-0298 (e-resolution Sept. 22, 2000) (finding confusing similarity where the respondent's domain name combines the complainant's mark with a generic term that has an obvious relationship to the complainant's business); see also Jerry Damson Inc. v Tex. Int'l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) ("The mere addition of a generic top level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark.") As such the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
Paragraph 4 (b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. Links to commercial third party web sites have appeared on a page attached to the Domain Name for commercial gain. The Respondent maintains that she was not aware of the commercial links attached to the Domain Name and has not received any money in relation to this. However, it is established in many decisions under the Policy that a Respondent is legally responsible for material attached to a domain name. St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent. [The] respondent has given those service providers permission to use the Disputed Domains . . . . [The] respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that [the] respondent is aware of the general nature of the services provided by those organizations and the business model that they employ . . . . The key fact here is that [the] respondent, in collaboration with the domain parking service providers, is exploiting [the] complainant's goodwill.”).
Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <hochunknation.com> domain name be TRANSFERRED from Respondent to Complainant
Dawn Osborne, Panelist
Dated: January 17, 2011
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