CV Ranch, L.P. v. DefaultData.com a/k/a
Brian Wick
Claim Number: FA0212000139595
PARTIES
Complainant is CV Ranch, L.P., Dallas, TX (“Complainant”) represented by Christine L. Lofgren,
of Jeffer, Mangels, Butler &
Marmaro LLP. Respondent is DefaultData.com a/k/a Brian Wick, Denver, CO (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <carmelvalleyranch.com>,
registered with Network Solutions, 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.
Judge Irving H. Perluss (Retired) as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on December 23, 2002;
the Forum received a hard copy of the Complaint on December 26, 2002.
On January 8, 2003, Network Solutions,
Inc. confirmed by e-mail to the Forum that the domain name <carmelvalleyranch.com> is registered with Network Solutions,
Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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 8, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of January 28, 2003 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@carmelvalleyranch.com by e-mail.
A timely Response was filed
electronically, but Respondent’s exhibits were received after the deadline for
the Response on January 30, 2003. The
Panelist, in the exercise of his discretion, will consider Respondent’s
exhibits. The Panelist wants all
parties to have a fair hearing on the merits.
On February 7,
2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant, C.V. Ranch, L.P., is
the owner of the award-winning resort located in Carmel, California known as
Carmel Valley Ranch. Complainant
asserts that it has expended substantial resources over the past fifteen years
developing the Carmel Valley Ranch name and mark. Complainant is the holder of U.S. Patent and Trademark Office
(“USPTO”) Reg. No. 2,002,081 for the Carmel Valley Ranch Resort service
mark. Complainant, on September 25,
2002, requested that its mark be amended to Carmel Valley Ranch.
2. The Ranch is situated on a 1700-acre
countryside estate in the Saint Lucia Mountains and features a world-renown
18-hole championship golf course. The
Ranch includes 200 homes built around the golf course, a golf club, a tennis
club and an elegant main clubhouse with 144 suites for visitors.
3. Respondent DefaultData.com a/k/a
Brian Wick registered the disputed domain name <carmelvalleyranch.com> on November 19, 2001.
4. The disputed domain name is
confusingly similar to Complainant’s mark.
5. Respondent has no rights or a
legitimate interest in the disputed domain name. The name was registered long after Complainant’s first use of its
service mark in June, 1987.
6. Respondent cannot defend its
registration on the ground of “parody.”
The website at the URL Domain Name includes images of spinning dice, a
kangaroo superimposed over the map of Australia, and a miner. The website includes an elaborate disclaimer
claiming that the website is “parody,” however, the website content never
mentions Carmel Valley Ranch by name or refers to the resort, and, accordingly,
is not parody.
7. Respondent has no affiliation with
Complainant’s organization or with the Carmel Valley Ranch Mark, and Respondent
is not authorized or licensed to make use of the subject mark in connection
with any offering or purpose.
8. Respondent has registered and has
used the domain name in bad faith.
Respondent has demonstrated a pattern of registering infringing domain
names.
9. Respondent’s website has a
disclaimer but the disclaimer does not dispel the initial interest confusion
generated by the use of the disputed domain name at issue. The widespread use of the Carmel Valley
Ranch mark by Complainant permits the inference that Respondent was
constructively aware of the mark prior to registering the disputed domain name.
B. Respondent
1. Respondent, and others, are entitled
to use the disputed domain name in the exercise of their First Amendment
rights.
2. The reason Complainant is amending
its mark from “Carmel Valley Ranch Resort” to “Carmel Valley Ranch” is an
attempt to gain control of <carmelvalleyranch.com>
so they can reduce competition from independent third-party realtors who want
to give “Carmel Valley Ranch” geographic subdivision home buyers and sellers
more options with whom to negotiate commissions, listing and marketing of their
homes, town homes and other properties.
Complainant also seeks to control directory services information and the
flow of free speech information and other information within a “Carmel Valley
Ranch” homeowners neighborhood association.
3. Complainant does not have exclusive
rights in the “Carmel Valley Ranch” service mark.
4. Carmel Valley is the name of a town
and “ranch” is a style of modern-day home, and this use of a geographic
location and a generic word warrant a finding of bona fide registration and use
by Respondent.
5. “Carmel Valley Ranch” also is the
name of a horse training and racing business in San Diego, California which
operates a website at <CarmelValleyRanch.net>. This business has no relation to the Complainant and it is not
even the same industry as the Complainant, yet both use the same mark.
6. Respondent has reserved hundreds of
Internet addresses to provide a community information forum, a homeowner’s
forum and a vehicle for free property listings for independent realtors and homeowners.
7. Complainant has failed to fulfill
the burden of establishing Policy Paragraphs 4(a)(i) and (ii); therefore, an
analysis under Policy Paragraph 4(a)(iii) is unnecessary.
FINDINGS AND CONCLUSIONS
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.
There
can be no question but that the disputed domain name and Complainant’s service
marks, as amended, are identical.[1]
Whether
Respondent has a legitimate interest or rights in the disputed domain name is the
crux of this proceeding.
Apparently,
Respondent does not here assert, as he has in other matters, that he has the
defense of “parody” in the exercise of his First Amendment rights.[2]
In
any event, Respondent would not prevail, as he has not in other matters,
because none of the content on his website mentions or makes reference to
Complainant’s mark.[3]
Here,
however, Respondent does claim that the First Amendment protects his rights to
the disputed domain name.
In
1976, the United States Supreme Court did hold that “commercial speech” is
within the First Amendment “free speech” clause of the Constitution.[4] The uses that Respondent proposes for his
website are “commercial,” e.g.,
listings of homes for sale.
The
difficulty with Respondent’s position, however, is that First Amendment
protection does not apply to false, misleading or deceptive commercial speech.[5]
The
Panelist has found and has concluded that the disputed domain name is identical
to Complainant’s mark, and, thus, it is confusingly similar. It must follow that the use of the disputed
domain name by Respondent would be misleading.
Thus,
Professor McCarthy teaches us that:
“. . . the traditional likelihood of
confusion theory will usually insulate the remedy from First Amendment challenge
because before remedies can successfully be invoked, the court must find a
likelihood of confusion, mistake or deception.
As Judge Kozinski noted, ‘[s]o long as trademark law limits itself to
its traditional role of avoiding confusion in the marketplace, there’s little
likelihood that free expression will be hindered.’”
“For speech even to come within First
Amendment analysis, ‘it at least must concern lawful activity and not be
misleading.’ This is a threshold
analysis, and if not passed, there need be no balance of governmental policy
against the scope of the restraint.”
(Footnote omitted.)[6]
It
is of great interest to read Professor McCarthy’s comment on free speech on the
Internet. He states (McCarthy, supra, Section 31:148.1, p. 31.244.1):
“The concern for accommodating free
speech has been extended to the use of the mark of a company that is the target
of a critical web site in the domain name or in the metatags of the web site.”
“But domain names are different. Most cases have held that regardless of free
speech principles, a web site containing criticism of a company or an
organization cannot be identified by a domain name confusingly similar to the
name or trademark of the target group.
The right to disseminate criticism on the Internet cannot trump the
public’s right not to be deceived by a confusingly similar domain name. And the critic has no free speech ‘right’ to
confuse web users into thinking they are entering a web site of the target in order
to expose them to the defendant’s message of criticism of the target.” (Footnote omitted.)
Respondent
next agues that Complainant’s mark consists of a geographical term and a
generic term and, thus, the mark is available to all who wish to use it. In addition, he points to a San Diego horse
ranch that uses the identical domain name <carmelvalleyranch.com.>.
With
respect to composite geographic marks, Professor McCarthy states: (McCarthy, supra, Section 14.11, pp. 14.26-27)
“If a geographical term is combined with
other elements to form a composite mark, the resulting combination may not have
any descriptive connotations. The total
commercial impression created by a composite mark may be merely arbitrary or
suggestive even though its separate parts may be geographically
descriptive. The composite may be more
than the mere sum of its parts. The
validity of a composite mark must be determined by looking at the mark as a
whole. A composite mark should not be
fragmented into its various pieces. A
composite geographical mark should not be dissected into its parts to determine
whether it is primarily geographical or not.
It is the likely reaction of customers to the total mark that is at
issue. A composite mark must be
considered in its entirety. For
example, the Ninth Circuit analyzed the trademark CALIFORNIA COOLER for a
wine-fruit juice as a composite of a geographically descriptive term and a
generic term. Applying the rule that
validity is to be determined by viewing the composite as a whole, the court
concluded that the composite could become a distinguishing mark even if its
individual components could not.
Similarly, the combination WASHINGTON SPEAKERS BUREAU for a lecture
agency in Washington, D.C. was found to be a descriptive combination: ‘[The] addition of “Washington” to the
phrase “Speaker’s Bureau” converts the generic term to a descriptive
mark.’” (Footnotes omitted.)
The
Panelist finds and concludes, accordingly, that Complainant’s mark is a
descriptive mark. This conclusion is
buttressed by the presumption that the name is not generic when a mark,
as here, is registered in the United States Patent and Trademark Office.[7]
With
respect to the San Diego horse farm and the domain name <carmelvalleyranch.com>,
such utilization is not relevant in this proceeding. In MGM-Pathe Communications v. Pink Panther Patrol (S.D.N.Y. 1991)
774 F.Supp. 869, 873, it was said: “. .
. the Patrol contends that another registered trademark for the words ‘pink
panther’ exists, and at least 15 other establishments, including a bar and a liquor
store, use the Pink Panther name. These
arguments are unavailing. . . . The
fact that there are other establishments that use the name Pink Panther does
not contradict the harm suffered by MGM from the Patrol’s use of the mark.”
But
argues Respondent, “I have placed a disclaimer on my web site.” This, however, is not sufficient to prevent
initial interest confusion in cases such as this. (See Madonna v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (citing Brookfield Comm., Inc. v. West Coast Entertainment
Corp. (9th Cir. 1999) 174 F.3d 1036, “[r]espondent’s use of a
disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or
misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent’s actions.
Such confusion is a basis for finding a violation of Complainant’s
rights.”)
The
ultimate finding and conclusion is that Respondent does not have a legitimate
interest or rights in the disputed domain name.
The
Panelist finds and concludes that Respondent has registered and used the
disputed domain name in bad faith pursuant to Policy Paragraph 4(b)(ii). Respondent has demonstrated a pattern of
registering infringing domain names; thus, fulfilling the requirements of the
Policy.[8]
The
Panelist also finds and concludes that Respondent was fully aware and was on
actual notice of Complainant’s rights in its mark when he registered the
disputed domain name. The registration
of a domain name despite actual or constructive notice of Complainant’s mark is
evidence of bad faith.[9]
DECISION
Based
on the above findings and conclusions and pursuant to Rule 4(i), it is decided
that the domain name <carmelvalleyranch.com>
registered by Respondent DefaultData.com a/k/a Brian Wick, be and the same
is transferred to Complainant C.V. Ranch, L.P.
JUDGE IRVING H. PERUSS
(Retired), Panelist
Dated: February 21, 2003
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[1] See Hanover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2000) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic to-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).
[2] Despite his free speech claim, Respondent no longer owns the domain name <dykemaggossett.com>, The Panel transferred the domain name to the well-known law firm, Dykema Gossett PLLC. The Respondent claimed that the law firm was trying to take away his free speech rights, because he was attempting to use the domain name to parody the legal system. The Panel found that “Respondent’s ‘free speech’ rights [were] not being suppressed,” and that it would be “beyond the scope of a UDRP proceeding to consider any issues such as the boundaries of free speech generally and the manner and extent to which a trademark may be used without liability for infringement.” Dykema Gossett PLCC v. DefaultData.com and Wick, FA 97031 (Nat. Arb. Forum May 29, 2001). See also Morrison and Foerster v. Wick, 94 F.Supp.2d 1125 (D. Colo. 2000).
[3] See PETA v. Doughney, 263 F.3d 359, 355 (4th Cir. 2001) (In order to be a parody a domain name using a trademark must convey two messages simultaneously 1) that it is the original and 2) that it is not the original and is instead a parody. If the domain name only conveys the first message it will confuse the consumer. The domain name <peta.org> cannot be a parody because it only conveys the association with the original trademark, and does not simultaneously convey that it is a parody.
[4] Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council (1976) 425 U.S. 748.
[5] Cincinnati v. Discovery Network, 507 U.S. 410 (1993) (Blackmun concurring); see generally McCarthy, Trademarks and Unfair Competition, Sections 31:139, et seq. (updated 9/2002).
[6]McCarthy,
supra, Section 31:142, p. 31-230.
[7] McCarthy, supra, p. 12-29.
[8] See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy Paragraph 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith); see also Am. Online, Inc. v.iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
[9]See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).