Bonnier Active Media, Inc. v. ERS INTERNATIONAL CORP c/o John Rickey
Claim Number: FA1205001443760
Complainant is Bonnier Active Media, Inc. (“Complainant”), represented by Amber N. Davis of Beusse Wolter Sanks Mora & Maire, P.A., Florida, USA. Respondent is ERS INTERNATIONAL CORP c/o John Rickey (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outdoorlife.tv>, registered with GoDaddy.com, 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.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2012; the National Arbitration Forum received payment on May 14, 2012.
On May 14, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <outdoorlife.tv> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2012 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@outdoorlife.tv. Also on May 22, 2012, 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 June 11, 2012.
Complainant submitted a timely Additional Submission on June 13, 2012.
Respondent submitted a timely Additional Submission on June 13, 2012.
On June 13, 2102, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits:
B. Respondent
Respondent submits:
C. Additional Submissions
In the Additional Submission, Complainant submits:
There is no active admiralty law case against Complainant. Respondent’s baseless documents have not been filed in any court of law. It appears Respondent has found an online form and inserted his contact information and the contact information of Complainant and Complainant’s legal counsel into the form.
In the Additional Submission, Respondent submits:
· Complainant and its representatives have “exhausted their administrative remedies” and are further billed an additional $3,000,000 for failing to meet the requirements and/or defaulted on items #2, 3 and 8.
· Complainant and its attorney are ordered to pay all damages with Real Money, surrender any and all Public Hazard Bonds, and other Bonds, Insurance Policies and any monies available from the attorney restitution funds.
The Panel finds:
1. Complainant owns trademark rights in the OUTDOOR LIFE mark.
2. The Disputed Domain Name is identical to Complainant’s mark.
3. Respondent has no right or legitimate interest in the Disputed Domain Name.
4. Respondent has registered and is using the Disputed Domain Name 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 Matter
When Complainant contacted Respondent with a cease and desist and demand letter, Respondent responded with a “Negative Averment Under Admiralty Law” demanding $5,600,000.00 within 10 days. Complainant responded to this by pointing out that Respondent’s claims had nothing to do with the Disputed Domain Name, denying all allegations and again demanding transfer of the Disputed Domain Name. Respondent then sent a document to Complainant that was entitled “First Notice of Fault and Demand for Payment” which demanded a payment of $6,700,000.00 within three days. Complainant filed this Complaint and in response, Respondent claims Complainant now owes Respondent $7.7 million from “a dispute that was resolved through the administrative process in Admiralty Law”. The Panel notes, however, that Respondent has not provided any evidence to support this claim. There is no evidence of any recognizable cause of action. While in some circumstances a Panel may choose under Rule 12 of the UDRP to request further information from Complainant and Respondent regarding alleged legal proceedings, because there is no evidence of any legitimate court filing and there is no evidence to show any connection between the alleged proceedings and the Disputed Domain Name, the Panel sees no point in requesting additional information.
Complainant claims to have rights in the OUTDOOR LIFE mark under Policy ¶ 4(a)(i). In support of this claim, Complainant submits several printouts from the USPTO showing that it owns several trademark registrations for the OUTDOOR LIFE mark (e.g., Reg. No. 1,002,765 registered January 28, 1975). The Panel finds that Complainant’s trademark registrations with the USPTO are sufficient for Complainant to establish rights in the OUTDOOR LIFE mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that the <outdoorlife.tv> domain name is virtually identical to its OUTDOOR LIFE mark. Complainant argues that the Disputed Domain Name merely adds a generic top-level domain (“gTLD”) “.tv” to its mark. The Panel notes that the Disputed Domain Name actually adds the country-code top-level domain (“ccTLD”) “.tv,” for the country of Tuvalu. The Panel also notes that the Disputed Domain Name removes the space between the terms OUTDOOR and LIFE in Complainant’s mark. Removing a space between the words of a mark, however, and adding the ccTLD “.tv” are not sufficient to render the Disputed Domain Name distinct from the mark. See Best Western Int’l, Inc. v. Wieczorek, FA 96557 (Nat. Arb. Forum March 27, 2001) (finding that the <bestwestern.tv> domain name is identical and confusingly similar to the BEST WESTERN mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <outdoorlife.tv> domain name is identical to Complainant’s OUTDOOR LIFE 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 Disputed Domain Name as the WHOIS information indicates that the domain name registrant is “ERS International Corp. and John Rickey.” Further, Complainant asserts that it has never authorized Respondent to use the OUTDOOR LIFE mark in any way. The information available in the WHOIS information and all other evidence on record does not show Respondent is commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii) See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues the Disputed Domain Name is not connected with an active website. Complainant asserts that, when an Internet user types <outdoorlife.tv> into a web browser, the domain name does not take that user anywhere because no website has been created. The Panel finds that Respondent’s failure to make active use of the Disputed Domain Name is not 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). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant has established the initial burden to show Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not presented any evidence that would indicate that it has been commonly known by the Disputed Domain Name. Respondent says the <outdoorlife.tv> domain name is owned by “Mr Rickey/ERS International Corporation” and is used as a video player, but provides no evidence of that either or how the OUTDOOR LIFE mark is related to a “video player for a subfolder module on the website”. Respondent has simply provided no evidence to show that Respondent has any rights or legitimate interests in the Disputed Domain Name.
Complainant argues that Respondent registered and is using the Disputed Domain Name in bad faith under Policy ¶ 4(b)(i). Complainant asserts that, upon being contacted by Complainant, Respondent sent Complainant a “Negative Averment Under Admiralty Law” and demanded $5,600,000 in a damage payment. However, while Complainant asserts that this is a sale offer and provides case citations dealing with offers to sell domain names, the Panel notes this correspondence was not a sale offer for the transfer of the Disputed Domain Name, but a demand for payment on an alleged default judgment against Complainant. Because of this, the Panel finds Complainant has not presented evidence to show Respondent primarily registered the Disputed Domain Name to sell it to Complainant or its competitors.
Complainant also argues that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Complainant’s business. However, because Complainant asserts that Respondent has not connected the domain name with active content, the Panel finds that Complainant did not present sufficient evidence for a bad faith finding under Policy ¶ 4(b)(iii).
The factors identified in Policy ¶ 4(b), however, are merely illustrative and are not meant to be an exhaustive list of bad faith factors to be considered by the Panel. In determining whether the registration and use of a Disputed Domain Name is in bad faith, the Panel may examine the totality of the circumstances surrounding the registration and use of the Disputed Domain Name. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant asserts that Respondent has not connected the <outdoorlife.tv> domain name to active content. Complainant argues that when an Internet user attempts to access the Disputed Domain Name they are not brought anywhere because no website has ever been created for the Disputed Domain Name. Respondent’s failure to make active use of the Disputed Domain Name is evidence that Respondent registered and is using the <outdoorlife.tv> domain name in bad faith under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Furthermore, Respondent says the <outdoorlife.tv> domain name is owned by “Mr Rickey/ERS International Corporation” and is used as a video player for a subfolder module on the website but has provided no evidence to establish this or to show any connection with the OUTDOOR LIFE mark. Lastly, Respondent makes incomprehensive demands for the payment of money from Complainant and its lawyers in circumstances where no evidence is brought to establish any legitimate claim against them. All these circumstances together establish the Disputed Domain Name has been registered and is being used in bad faith.
Complainant also contends that, in light of the fame and notoriety of Complainant's OUTDOOR LIFE mark, it is inconceivable that Respondent could have registered the <outdoorlife.tv> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Because of the Panel’s finding of bad faith in this case, we will not address this argument here.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <outdoorlife.tv> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: June 21, 2012
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