New Generation, Inc. d/b/a Casual Adventure, Inc. v. East Coast Web Site Design
Claim Number: FA1111001413742
Complainant is New Generation, Inc. d/b/a Casual Adventure, Inc. (“Complainant”), represented by Kevin T. Oliveira of Odin, Feldman & Pittleman, P.C., Virginia, USA. Respondent is East Coast Web Site Design (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <casualadventure.com>, registered with Dotster.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2011; the National Arbitration Forum received payment on November 1, 2011.
On November 1, 2011, Dotster confirmed by e-mail to the National Arbitration Forum that the <casualadventure.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 November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@casualadventure.com. Also on November 2, 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 November 22, 2011.
On December 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant, New Generation, Inc. d/b/a Casual Adventure, Inc. and Casual
Adventure, (“Casual Adventure”) is engaged in the business, generally, of retailing clothing, equipment and other articles for outdoor activities and providing clothing, equipment and other articles for outdoor activities.
Casual Adventure is the owner of trademarks in CASUAL ADVENTURE, including its logos as follows: (a) the logo containing the stylized word CASUAL ADVENTURE; (b) the logo containing the stylized word CASUAL ADVENTURE and an outdoor scene graphic; (c) CASUAL ADVENTURE in standard characters; and (d) in the domain name CASUALADVENTURE.COM (“the CASUAL ADVENTURE marks”). These CASUAL ADVENTURE marks are used in conjunction with services related to retailing clothing, equipment and other articles for outdoor activities and providing clothing, equipment and other
articles for outdoor activities and the Complainant may broaden use of the CASUAL ADVENTURE marks for any goods and services related to retailing clothing, equipment and other articles for outdoor activities and providing clothing, equipment and other articles for outdoor activities.
Complainant, Casual Adventure, alleges it has used the disputed domain name as the official web site and home of its presence on the Internet since on or about May 7, 1999.
Complainant alleges the disputed domain name is nearly identical to the trademark CASUAL ADVENTURE using only a top-level suffix (“.com”) in the domain name in addition to the complete and entire use of the trademark CASUAL ADVENTURE.
Complainant alleges Respondent has no rights or legitimate interest with respect to the disputed domain name, which had been registered originally by Complainant. Complainant informs that Respondent’s only employee, Mr. Thierry, had been an employee of Complainant and had worked with Complainant as Complainant’s employee on establishing the web site at <casualadventure.com> after this first registration. At that time, Mr. Thierry, as an employee of the Complainant had access to corporate documents and records and, in particular, this registration for administrative purposes and maintenance purposes. Complainant alleges that Mr. Thierry, without being instructed or otherwise permitted to do so, changed the contact information, later the Registrar and, finally, the registrant of the disputed domain name.
Complainant informs that to date the Respondent has not yet apparently publicly used the disputed domain disruptive to the bona fide offering of goods and services of the Complainant. Complainant also informs it tried to contact the Respondent to settle this matter amicably, without success, as no response from the Respondent has been received and no change in accord with the Complainant’s requests as transmitted by counsel has been made apparent.
Complainant further states that Respondent has not been known by the domain name, has not acquired trademark or service mark rights on the disputed domain name and is not making any legitimate noncommercial use or fair use of the disputed domain name.
Complainant alleges the disputed domain name was registered and is being used in bad faith.
Complainant alleges that Respondent’s web site contains further use of the disputed domain name and past (cached) images of the Complainant’s web site and represents and claims as Respondent’s own work Complainant’s web site by a direct link to the Complainant’s web site despite the fact that the Respondent is not involved or active in development, maintenance or operations of the Complainant’s web site. Such effort to associate with Complainant, in combination with the registration of the disputed domain name, is or must be an attempt by Respondent to exploit the CASUAL ADVENTURE marks.
Complainant further contends that the use of incomplete and inaccurate contact information with regard to the registration of domain names should constitute bad faith in its own right. Complainant also contends that mere passive use of a domain name, including by claiming ownership without authorization, is bad faith. Further, stealing a domain name is itself an indication of abusive intent and the fact that the domain name, rightfully belonging to the Complainant as owner is out of the Complainant’s control, is a further abusive threat to the Complainant.
B. Respondent
Respondent alleges that the disputed domain name was never registered by Complainant, but rather by the first company hired to develop their website.
Respondent alleges about 6 months later he proposed a better design and was hired by Complainant to take over design and management the of the <casualadventure.com> website. He informs he started his own company (East Coast Web Site Design), worked on the website as an employee of East Coast Web Site Design, which was a different from his employment at Complainant’s company.
Respondent alleges when he took over the management of the website the disputed domain name was in an account owned by the original design company not Complainant. Respondent informs he transferred the domain to his Dotster account. Respondent alleges having the disputed domain name in his account in no way prohibited Complainant from developing its website.
Respondent alleges no clients were obtained as a result of this information being on the <eastcoastwebsitedesign.com> website.
Respondent informs he replied to the email sent from current <casualadventure.com> designer Greg Laporta inquiring about the expiration and ownership of the domain, stating that the domain name was set to automatically renew so there was no danger of it expiring. Respondent also informs he stated in such reply that him and Neil (Complainant) needed to discuss money owed for work he had done to the site, and that once that was done they would discuss transfer of the domain name.
Complainant claims to have established its rights in the CASUAL ADVENTURE mark by registering it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,434,350 registered March 24, 1987). Complainant submits the federal trademark certificates which appear to indicate that the mark is duly registered and that Complainant is the rightful owner. Therefore, the Panel finds that Complainant has established its rights in the CASUAL ADVENTURE mark under Policy ¶ 4(a)(i) by registering it with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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).
The Panel has reviewed Complainant’s Exhibit F and finds that the disputed domain name was originally registered under Complainant’s name.
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 that Respondent’s disputed domain name is confusingly similar to its CASUAL ADVENTURE mark. According to Complainant, the <casualadventure.com> domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com” and removing the space between the terms. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s CASUAL ADVENTURE mark under Policy ¶ 4(a)(i) because the changes fail to differentiate the domain name from the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); 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)).
The Panel finds that Complainant has met the first requirement of the Policy.
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 asserts that Respondent is not commonly known by the disputed domain name. Complainant states that the WHOIS information supports its assertion by listing the registrant of the disputed domain name as “East Coast Web Design.” Respondent does not claim to be commonly known by the disputed domain name and provides no information to support a contrary finding. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Both Complainant and Respondent submit that Respondent was formerly engaged by Complainant to develop a website in conjunction with the disputed domain name. The Panel finds that Respondent’s prior employment with Complainant indicates that Respondent does not have rights or legitimate interests in the disputed domain name, under Policy ¶ 4(a)(ii). See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark). The Panel finds that there is no evidence that Respondent was ever instructed or authorized to transfer the disputed domain name to its own name.
Complainant argues that Respondent has registered and is using the disputed domain name in an attempt to prevent it from using the domain name itself, indicating bad faith registration and use. Complainant states that Respondent changed the contact information and registrant information for the disputed domain name without its knowledge, which is not contested by Respondent. Complainant argues that the effect of this change was to “transfer” ownership unlawfully to Respondent, after Complainant had been the rightful owner of the disputed domain name. Complainant states that Respondent did this in an attempt to prevent Complainant from using the disputed domain name. The Panel finds that Respondent’s actions suggest it intended to prevent Complainant from registering and using the disputed domain name itself which provides supporting evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it”).
Complainant argues that Respondent is attempting to divert Internet users to its own website for commercial gain, constituting bad faith registration and use. Complainant submits screen shots which prominently display the East Coast Web Designs Company name and offers web design services from the site. Internet users may be confused by the disputed domain name and its apparent affiliation with Complainant and, as a result, Complainant’s affiliation with Respondent’s website. The Panel finds that it is possible that Respondent generates new customers from this scheme in attempt to increase revenue from the website. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant also argues that it owned the disputed domain name prior to Respondent, which indicates that Respondent’s subsequent registration and use was done in bad faith under Policy ¶ 4(a)(iii). Complainant submits the WHOIS information for the disputed domain name from 2001, which appears to indicate that it was the registrant of the disputed domain name at that time. Complainant argues that Respondent, as an employee of Complainant, removed Complainant from the WHOIS information and substituted itself without Complainant’s knowledge. Based upon Complainant’s prior ownership of the disputed domain name, the Panel finds that Respondent registered and uses the disputed domain name in bad faith 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 InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”).
Finally, Complainant contends that the circumstances surrounding Respondent’s registration and use of the disputed domain name indicate that it had at least constructive knowledge of Complainant’s rights in the CASUAL ADVENTURE mark if not actual knowledge. The Panel finds that the circumstances suggest that Respondent had, in fact, actual knowledge of Complainant’s rights in the mark, and finds that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <casualadventure.com> domain name be TRANSFERRED from Respondent to Complainant .
Luiz Edgard Montaury Pimenta, Panelist
Dated: December 15, 2011
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