USA DANCE, INC. v. Rhapsody Ballroom
Claim Number: FA1102001372072
Complainant is USA DANCE, INC. (“Complainant”), represented by Thomas J. Donovan of McLane, Graf, Raulerson & Middleton, Professional Association, New Hampshire, USA. Respondent is Rhapsody Ballroom (“Respondent”), represented by Suzette Marteny of Bayshore Law Group, P.L.L.C., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usadance.com>, registered with TUCOWS, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2011; the National Arbitration Forum received payment on February 8, 2011.
On February 9, 2011, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <usadance.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 February 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2011 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@usadance.com. Also on February 22, 2011, 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 March 14, 2011.
A timely Additional Submission was received from Complainant on March 21, 2011.
A timely Additional Submission was received from Respondent on March 28, 2011.
On March 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
All submissions were considered by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complaint is based on the following trademarks/service marks: USA Dance, Inc., Registration No. 3,340,771 on November 20, 2007 and USA Dance (and Design), Registration No. 3,647,396 on June 30, 2009. On December 19, 2002, Complainant filed a U.S. Service mark application for the mark USA DANCE, INC., which led to the issuance of U.S. Registration No. 3,340,771 for the mark on November 20, 2007. From 1984 until 2005, Complainant’s corporate name was UNITED STATES AMATEUR BALLROOM DANCERS’ ASSOCIATION, INC. On January 10, 2005, Complaint officially changed its name to “USA DANCE, INC.”
“USA DANCE” and “USA DANCE, INC.” uniquely identify the Complainant’s services and the disputed domain name is confusingly similar to both of the Complaint’s federally registered marks under the UDRP.
Respondent holds no rights or legitimate interests in the <usadance.com> domain name. There was no reason for Respondent to have registered <usadance.com> other than its knowledge of Complainant’s name change in 2005 to “USA DANCE, INC.”
Complainant has not authorized Respondent to use the USA DANCE mark in conjunction with a domain name.
Respondent’s <usadance.com> domain name resolves to a commercial website and Respondent is attempting to misappropriate Internet traffic seeking Complainant’s site for Respondent’s own commercial gain through the incorporation of a confusingly similar variant of Complainant’s marks in the disputed domain name.
The Respondent’s prior relationship with the Complainant and the fact that the Respondent’s domain name is virtually identical to Complainant’s service marks demonstrates that the Respondent had knowledge of the Complainant’s mark when registering the domain name and was trying to take advantage of the Complainant’s goodwill in the mark to attract Internet users to Respondent’s website.
Respondent is owned and operated by Richard and Laurie Collett. Richard and Laurie Collett were members of Complainant’s Southern Star Chapter until about 2004. The Colletts continue to maintain a close relationship with USA Dance, Inc., Tampa Chapter.
Because of the close relationship maintained between Respondent and the Tampa Chapter, Respondent knew, or reasonably should have know, of the Complainant’s name change to USA DANCE and its mark and logo.
Respondent acquired the domain name from the prior owner sometime in 2007, after learning of Complainant’s name change.
Respondent’s continued use of the domain name is in bad faith. Based on the WHOIS record, TC Concepts registered the domain name in 1999, before USA Dance, Inc. had acquired trademark rights in its marks. Respondent is not entitled to rely on or “tack onto” the prior registration by TC Concepts.
B. Respondent
Respondent obtained the domain name for a legitimate business purpose. Respondent has owned and operated Respondent Rhapsody Ballroom (“Rhapsody”) in Tampa Florida since October 1992. In April 2006, Respondent opened and has since maintained an Ebay store selling dance shoes and dancewear for all styles of dance.
In or around June 2007, Respondent discovered that the domain name <usadance.com> was available for sale. On June 30, 2007, Respondent expended considerable funds to purchase the Domain Name, along with its archived web pages and feeder pages. Respondent’s sole intention was to use the Domain Name and website to advertise and promote Respondent’s online dancewear sales through the eBay store. Respondent has legitimately used the Domain Name and website to drive traffic to and generate sales from the Ebay store. Respondent has invested substantial time and money updating and maintaining the Domain Name and the website.
Complainant chose not to purchase the domain name, although it knew it was for sale.
Complaint did not receive its trademark registrations until after Respondent acquired and began using the Domain Name.
Complainant cannot establish that it had any enforceable rights prior to Respondent’s acquisition and use of the Domain Name.
Respondent purchased the Domain Name with no knowledge of Complainant’s trademark rights. Complainant has not shown and cannot show that Respondent registered or used the domain name in bad faith.
Respondent’s website has a clear disclaimer and link to Complainant’s website to avoid confusion and clarify that Respondent and Complainant are not affiliated.
Complaint’s and Respondent’s websites are distinctly different from each other. Complainant’s site is directed to promoting and organizing ballroom dance events. Respondent’s site is directed to selling dancewear for all styles of dance.
Complainant has engaged in numerous acts of bad faith in its numerous attempts to gain control of the Domain Name through fraudulent and surreptitious means.
C. Additional Submissions
Complainant
Complaint has shown widespread common law usage of the USA DANCE mark and logo in commerce before Respondent’s registration date. Complainant has demonstrated widespread, nationwide use in commerce sufficient to demonstrate secondary meaning and common law rights.
In addition to Complainant’s prior common law rights, as a matter of federal law, under Section 7(c) of the Lanham Act, the Complainant has, effective as of its application filing date, “constructive use of mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services in the registration….”
The Response omits any discussion of whether Respondent knew of Complainant’s common law rights.
Complainant does not disclaim exclusive rights relative to any marks or domain name that combine the terms “USA” and “DANCE” and “INC” that are used in a manner that is confusingly similar to Complainant’s mark for the same or related goods and services.
Respondent’s arguments that Complainant’s mark is merely descriptive are without merit.
Respondent demonstrated bad faith when it registered the disputed domain name with the intent to use the disputed domain name to drive traffic to both its Ebay store as well as its directly competitive Rhapsody Ballroom business.
Respondent is using the mark in a manner that is likely to cause confusion with Complainant’s mark. Respondent’s disclaimer does not eliminate the likelihood of confusion.
Complainant’s post-dispute activities have no bearing on the UDRP factors.
Respondent
There is no dispute between Complainant and Respondent on the relevant facts.
Though the ICANN dispute resolution Policy is broad enough to cover both registered and common law rights in trade and service marks, the Policy is not unlimited.
There is no recourse under the Policy unless a complainant has rights at the time the domain name is registered.
The Policy requires proof of both bad faith registration and bad faith use.
There is no bad faith where the domain name was registered before Complainant began using the mark.
Complainant cannot establish that its rights predate the registration date of the domain name.
The domain name was registered more than three years before Complainant filed its intent-to-use trademark application and more than five years before Complainant began using the mark.
Complainant’s marks are weak and descriptive and do not support a finding of likelihood of confusion.
Respondent had no knowledge of Complainant’s trademark registrations.
Respondent has made legitimate use of the domain name as Rhapsody Ballroom does not compete with Complainant and there is not likelihood of confusion between an online dancewear store and the United States national governing body for the dance sport.
Complainant acquiesced in Respondent’s use of the domain name.
Respondent’s disclaimer shows good faith and dispels any likelihood of confusion.
Complainant has failed to prove that Respondent engaged in any acts of bad faith.
Complainant’s bad faith attempts to steal the domain name are relevant and should be determinative.
On January 28, 1999, TC Concepts registered the domain name <usadance.com> for its client.
In the Fall of1999, Dancewear store returned operations of <usadance.com> back to TC Concepts.
In the Fall of 1999, TC Concepts offered the <usadance.com> domain name for sale.
On December 19, 2002, Complainant, United States Amateur Ballroom Dancing Association, filed an intent to use service mark application for USA Dance, Inc.
On January 10, 2005, United States Amateur Ballroom Dancing Association changed its name to “USA Dance, Inc.”
September of 2005 is the first use in commerce established for the USA Dance service mark registrations No. 3,340,771 and No. 3,647,396.
On June 30, 2007, Respondent, Rhapsody Ballroom, purchased <usadance.com> from TC Concepts.
For the reasons set forth below, the Panel finds Complaint has not proven it is entitled to relief.
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.
Complainant claims rights in the USA DANCE, INC. mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,340,771 filed December 19, 2002; issued November 20, 2007). The Panel finds this trademark registration sufficiently proves Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges the <usadance.com> domain name is confusingly similar to its USA DANCE, INC. mark. Complainant argues Respondent simply omits the spaces between the “USA” and “DANCE” portions of its mark and then deletes the generic corporate designation “inc.” from Complainant’s mark. Additionally, Complainant contends the affixation of the generic top-level domain (“gTLD”) “.com” to a mark does not negate a finding of confusingly similar. The Panel finds that Respondent’s changes fail to adequately distinguish its domain name from Complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel holds Respondent’s <usadance.com> domain name is confusingly similar to Complainant’s USA DANCE, INC. mark pursuant to Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <usadance.com> domain name predates Complainant’s alleged rights in the 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 <usadance.com> domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
While Respondent contends that the <usadance.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar 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.”).
Complainant has proven this element.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent, Rhapsody Ballroom, states that it operates a public ballroom with independent dance instructors. In addition, Respondent states that it has maintained an Ebay store selling dance shoes and dancewear since April 2006. Respondent claims that it acquired the <usadance.com> domain name for considerable funds on June 30, 2007 to promote and advertise its online dancewear store. Respondent asserts it has invested substantial time and money updating and maintaining the resolving website. Based on the evidence in the record, the Panel concludes that Respondent uses the <usadance.com> domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services).
Respondent argues that it has rights or legitimate interests in the disputed domain name due to its inclusion of a disclaimer on the resolving website. Respondent claims it has placed a disclaimer on its resolving website in a prominent, conspicuous place disclaiming any affiliation with Complainant to avoid confusion. Respondent states that its disclaimer also includes a link to Complainant’s website. The Panel finds Respondent’s use of a disclaimer on its resolving website supports a finding that it has rights and legitimate interests in the <usadance.com> domain name under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent had rights or legitimate interests in the <aoltrafficschool.com> domain name by virtue of the respondent’s prominent use of a disclaimer); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (“The fact that Respondent is using the . . . visible disclaimer on its website further indicates a bona fide offering of the traffic school services.”).
Complaint has not proven this element.
Since the Panel finds that Respondent has rights or legitimate interests in the <usadance.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent argues that its website is distinguishable from Complainant’s website and not likely to cause confusion. Respondent states Complainant’s website provides information on promoting and organizing ballroom dance events. By contrast, Respondent states that its website is directed to selling dancewear for all styles of dance. Therefore, the Panel finds that Respondent has not intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark and Respondent has not engaged in bad faith under Policy ¶ 4(b)(iv).
Respondent alleges the president of Complainant’s Southern Star Chapter in Tampa, Florida knew about and encouraged Respondent’s acquisition of the <usadance.com> domain name. Respondent claims that Richard and Laurie Collett, its owners, informed Michael Johnston, president of the Southern Star Chapter, that they intended to acquire the disputed domain name to use in connection with Respondent’s dancewear sales business. Respondent states that Mr. Johnston was unaware that Complainant owned any trademark registrations. Respondent submits a signed affidavit from Mr. Johnston in which he states, “I understood that Collett and Barclay used usadance.com to sell dancewear for all styles of dance, and I encouraged Collett and Barclay in this endeavor. I was unaware that USA Dance, Inc. held any federal trademark registrations for the mark USA DANCE.” Furthermore, Respondent argues that Complainant was aware that the disputed domain name was for sale but chose not to purchase the domain name because it was too expensive. Instead, after Respondent acquired the domain name, Respondent claims that Complainant wanted it to voluntarily transfer the domain name to Complainant rather than make an offer to purchase the domain name for a reasonable price. Based on the evidence in the record, the Panel finds that Complainant’s agent was aware of Respondent’s plan to acquire the domain name and Complainant was aware the disputed domain name was for sale. Accordingly, the Panel finds Respondent registered the <usadance.com> domain name in good faith under Policy ¶ 4(a)(iii).
Respondent also argues that is has not engaged in registration or use in bad faith because it posts a disclaimer on the website resolving from the disputed domain name. The Panel finds that Respondent’s use of a disclaimer on its resolving website mitigates a finding of bad faith under Policy ¶ 4(a)(iii). See Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where the respondent conspicuously informs viewers that his site is not affiliated with the complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of the respondent which precludes any determination that the respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website); see also Compaq Trademark B.V. v. SNPCO Prods., FA 208587 (Nat. Arb. Forum Dec. 22, 2003) (citing the respondent’s use of disclaimers as one factor in determining that the respondent lacked bad faith pursuant to the Policy).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <usadance.com> domain name REMAIN WITH Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 4, 2011
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