Haas Outdoors, Inc. v. c/o MOSSYOAKRETRIEVERS.COM
Claim Number: FA1110001410162
Complainant is Haas Outdoors, Inc. (“Complainant”), represented by Bradford C. Ray of Watkins Ludlam Winter & Stennis, P.A., Mississippi, USA. Respondent is c/o MOSSYOAKRETRIEVERS.COM (“Respondent”), represented by Christopher K. Sandberg of Lockridge Grindal Nauen PLLP, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mossyoakretrievers.com>, registered with DOTSTER.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2011; the National Arbitration Forum received payment on October 6, 2011.
On October 4, 2011, DOTSTER confirmed by e-mail to the National Arbitration Forum that the <mossyoakretrievers.com> domain name is registered with DOTSTER and that Respondent is the current registrant of the name. DOTSTER has verified that Respondent is bound by the DOTSTER 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 October 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@mossyoakretrievers.com. Also on October 7, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 28, 2011.
Complainant submitted an Additional Submission on November 2, 2011, without the required filing fee, which was subsequently received on November 07, 2011. Panel, in the discretion accorded to her under Supplemental Rule 7, has ruled to accept such submission.
On November 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.
Complainant requests that the Panel issue a decision that the domain name of <mossyoakretrievers.com> registration be cancelled.
CONTENTIONS
A. Complainant
Haas Outdoors is one of the nation’s largest manufacturer’s and developers of camouflage clothing and accessories. MOSSYOAK brand camouflage has operated for over twenty-five years in the hunting industry. Moreover, Complainant has over 700 licenses on all types of hunting equipment and apparel, including collars, leashes, beds, bowls, and hunting training products for dogs, as well as for outdoor television shows. Haas Outdoors maintains its website at <mossyoak.com>.
Haas Outdoors is the owner of Federal Trademark Reg. Nos. 1,525,739, 2,00,245 and 2,227,642, which Certificates of Registration are attached as Exhibit “A” to the Complaint.
On October 5, 2006, Respondents registered the domain name <mossyoak.com>. Said domain name contains no altered spelling and is confusingly similar to the Haas Outdoor registered marks.
Respondent’s domain name was registered twenty (20) years after Haas Outdoor’s rights had been established by first use in 1986 and at last seven (7) years after Haas Outdoors registered the marks with the USPTO.
Moreover, the Respondents’ tree logo, in conjunction with the use of term Mossy Oak is likely to cause confusion and lead consumers to believe that the Respondents are affiliated with Haas Outdoors.
Haas Outdoors has granted no license to Respondents for their business of breeding and sale of hunting dogs, and thus, Respondent’s use of the name with their dog breeding business is not a bona fide offering of goods and services.
Respondents are not commonly known by the <mossyoakretriever.com> domain name, which was registered long after Haas Outdoors established its rights in and to the famous marks.
Complainant lastly contends that Respondent has registered the disputed domain name in bad faith, as it is clear that Respondent is taking advantage of consumer confusion as to the source, affiliation and sponsorship of the disputed domain name, and profiting from the goodwill associated with the Mossy Oak Marks.
B. Respondent
Respondent contends that Complainant’s marks are limited by their registrations to fabric and clothing and therefore are unrelated to the purebred Labrador
Retrievers which are the subject matter of Respondent’s website
<mossyoakretrievers.com>. None of Haas three referenced marks has anything to do with live animals, dogs, dog breeding, or the sale of pure Labrador Retrievers.
Respondent contends that it never had an intention to trade on Complainant’s trade name, but rather that its domain name originated from the Respondent’s owners’ address on Oak Road, which property contains oak trees, upon which moss grows. This is a good faith basis for the name. Respondent’s further evidence of good faith is their offer to put a disclaimer on their website.
Respondent asserts that they have not achieved commercial gain through their website; rather its purpose is as a hobby. Respondent contends that their logo is not confusingly similar to Complainant’s and that oak trees are merely decorative images in the background.
Respondent cites as evidence of Complainant’s bad faith that Complainant seeks to strip Respondent of disputed name, so that Complainant can use same to enter into the kennel business.
C. Additional Submissions
Complainant
Complainant, in its Additional Submission states that Respondent presents no factual evidence, but instead relies upon the legal arguments of its counsel.
Respondent has presented no authority that the breeding and selling of hunting
dogs is not a related product or service to the hunting industry, to which Haas Outdoors belongs. Respondent’s offer to place a disclaimer on their website is proof of their belief that consumers would be confused.
Complainant contends that Respondent has presented no proof that the domain is being used in connection with a bona fide offering of goods or services as Respondent has admitted that it is not marketing and selling Haas Outdoor products.
Respondent has presented no proof that it is commonly known by the domain, but rather cites that such awareness occurs over time as a result of the achievement of the dogs under the Mossy Oak kennel name.
Respondent has shown bad faith by creating a likelihood of confusion as to the source affiliation and endorsement of Respondents website. Respondent’s explanation for source of name (from address and the presence of moss growing oaks on its property) is ludicrous.
Respondent lastly asserts, based upon no pro-offered evidence, that Haas Outdoors may be setting up its own kennel operations and is using this process to take Respondent’s domain name. The attached affidavit of Rob Barefield rebuts this assertion as being without factual support.
(1) The domain name registered by Respondent, that is, <mossyoakretrievers.com>, 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.
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.
Preliminary Issue: Deficient Additional Submission
Complainant submitted an Additional Submission without the required fee, which was subsequently received by National Arbitration Forum on November 7, 2011, although said check was dated October 31, 2011. Panel rules, in the discretion accorded to her by Supplemental Rule 7, that the temporary bifurcation of the submission and the attendant filing fee is not so egregious as to mandate said submission to be deemed deficient. Rather, the decision making process is aided by the new facts provided to Panel, both in the submission and in the attendant exhibits, including an affidavit. See, e.g., Bd. Of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late).
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant alleges that it uses its MOSSY OAK mark in connection with its camouflage products, including licensing of its name for dog accessories such as leashes, collars, bowls and bedding. Complainant provides evidence of its trademark registrations with the United States Patent and Trademark Office (“USPTO”):
MOSSY OAK & Design (Reg. No. 1,525,739 registered February 21, 1989);
MOSSY OAK (Reg. No. 2,003,245 registered September 24, 1996); and
MOSSY OAK & Design (Reg. No. 2,227,642 registered March 2, 1999).
The Panel determines that Complainant has established rights in its MOSSY OAK mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant claims that Respondent’s <mossyoakretrievers.com> domain name is confusingly similar to its MOSSY OAK mark because Respondent only has removed the space from Complainant’s mark and added the generic term “retrievers” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that these alterations to Complainant’s MOSSY OAK mark fail to remove the disputed domain name from the realm of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel concludes that Respondent’s <mossyoakretrievers.com> domain name is confusingly similar to Complainant’s MOSSY OAK mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make 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 argues that Respondent is not commonly known by the <mossyoakretrievers.com> domain name. Complainant claims that it has not authorized or licensed Respondent to use its MOSSY OAK mark. Complainant asserts that Respondent does not own any trademark registrations with the USPTO for the disputed domain name. The WHOIS information for the disputed domain name lists “c/o MOSSYOAKRETRIEVERS.COM” as the registrant of the domain name. The Panel determines that, while the WHOIS information seems to imply that Respondent is commonly known by the disputed domain name, Respondent is not commonly known by the <mossyoakretrievers.com> domain name under Policy ¶ 4(c)(ii) as Respondent has presented to Panel no further evidence of such a fact. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
According to Complainant, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <mossyoakretrievers.com> domain name. Evidence (Exh. B) shows that Respondent is using the disputed domain name to resolve to a website that advertises breeding and the sale of hunting dogs, which website is not legally associated with Complainant’s business. The Panel finds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <mossyoakretrievers.com> domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
From the causal connection between a hunting supply business (which also licenses products for hunting dogs) and as between the sale of hunting dogs, multiplied by the common denominator of a nearly identical name, even the casual observer can infer from these factors, that there is an obvious connection, as to source, between Complainant and Respondent. The obvious connection of these domain names is sufficient to show evidence of Respondent’s bad faith registration.
However, Panel has been particularly persuaded as to bad faith registration of the disputed name, not only due to their similarity, but also due to Complainant’s “famous” or well known names, to which one in the same or similar business is surely aware. Complainant first registered its trademark in 1989, and obtained subsequent registrations in 1996 and 1999, per Complainant’s Exhibit A. Further, Complainant gained exposure through television shows extolling the outdoor life.
It can be legitimately inferred that Respondent’s operation in the hunting dog business and relationships with its customers necessarily gave it exposure to the marks and licenses of Complainant prior to its registration of the infringing domain name of <mossyoakretrievers.com> on October 5, 2006. Thus, Panel concludes that Respondent registered the disputed name in bad faith.
Panel is also persuaded by Complainant’s Additional Submission that Respondent is using the disputed domain in bad faith, by its citation and evidence that Respondent’s website uses a tree in its logo.
Lastly, Respondent is attempting to gain the commercial benefit of selling Labrador retrievers, that is, hunting dogs, through its website of <mossyoakretrievers.com> by creating confusion as to Respondent’s association with the hunting supply business of Complainant, and Panel may infer that it is profiting thereby.
For the above cited reasons, Panel holds that Respondent has registered and used the <mossyoakretrievers.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mossyoakretrievers.com> domain name be CANCELLED.
Carol Stoner, Esq., Panelist
Dated: November 16, 2011
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