Salt Life Holdings, LLC v. Richard Campisi
Claim Number: FA1208001458929
Complainant is Salt Life Holdings, LLC (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is Richard Campisi (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <saltylife.com> and <saltylife.net>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2012; the National Arbitration Forum received payment on August 22, 2012.
On August 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <saltylife.com> and <saltylife.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@saltylife.com and postmaster@saltylife.net. Also on August 23, 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 September 10, 2012.
On September 12, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns the SALT LIFE trademark registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,959,429 registered June 7, 2005).
2. Complainant uses the SALT LIFE mark for clothing and apparel, jewelry, and restaurant and bar services, among other things.
3. The <saltylife.com> and <saltylife.net> domain names are confusingly similar to the SALT LIFE mark, adding only the letter “y” to the trademark and a generic top-level domain (“gTLD”).
4. Respondent has no rights or legitimate interests in respect of the domain names.
5. Respondent is not commonly known by the disputed domain name and Complainant has never licensed or authorized Respondent to use the SALT LIFE mark.
6. The domain names have been registered and are being used in bad faith.
7. Respondent uses the disputed domain names to promote his business, “the Salty Dude,” including the sales of clothing and apparel in competition with Complainant through his website <saltydudes.com>. This was initially done by means of a link on the <saltylife.com> and <saltylife.net> domain names to <saltydudes.com> and, since the link was removed, by references on the <saltylife.com> and <saltylife.net> websites to “The Salty Dude” that still remain.
8. Respondent registered the disputed domain names with actual and constructive knowledge of Complainant’s rights in the SALT LIFE trademark.
9. Respondent’s directly competing use of the disputed domain names is evidence of bad faith.
10. Respondent offered to sell the disputed domain names after Complainant sent him a cease and desist letter, which is evidence of bad faith registration and use.
B. Respondent
Respondent made the following contentions.
1. Respondent has copyrighted the terms “Saltylife” and “Saltylife It’s a Way of Life.”
2. Respondent was in the process of trademarking the terms but abandoned those registrations on the request of Complainant through its attorney.
3. Respondent built two websites associated with the disputed domain names, namely <saltylife.com> and <saltylife.net> in April 2012 and they contained a link to his other website <saltydudes.com> which he used to promote his goods, that included outdoor and beach clothing. Respondent removed that link at the behest of Complainant through its attorney, but he did not believe that his use of the disputed domain names was interfering with Complainant’s use of the SALT LIFE mark or its business.
4. Since removing the link, Respondent has used the disputed domain names for personal use and not for commercial purposes.
5. Respondent has declined the demand of Complainant to remove references on his <saltylife.com> and <saltylife.net> websites to “The Salty Dude”.
6. Respondent has not made any money through the disputed domain names and only uses them for his own personal use.
1. Complainant is a United States company with its headquarters in Jacksonville, Florida, engaged in promoting the outdoors and in particular the surfing and ocean life and providing clothing and other accessories for those engaged in pursuing that interest. It has several trademarks for SALT LIFE, the earliest of which was the trademark SALT LIFE, registered on June 7, 2005, being Reg. No. 2,959,429 registered by Complainant with the United States Patent and Trademark Office ("USPTO") on that date. Its domain name for <saltlife.net> was registered on 6 December 2003. On the same date the domain name <saltlife.com> was registered by To The Game LLC. Complainant uses these domain names to promote its products under the name SALT LIFE. It has dealers in various States of the United States and also conducts an online sales business.
2. Respondent is domiciled in Florida and registered the <saltylife.com> and <saltylife.net> domain names on 29 September 2010 and 17 October 2010, respectively.
3. Respondent also conducts an online business using the domain name <saltydudes.com> and the website to which it resolves. This website promotes goods of the ocean apparel genre and other related accessories under the name SALTY DUDE.
4. The websites to which the <saltylife.com> and <saltylife.net> domain names resolve initially carried links to <saltydudes.com>, but they were removed by Respondent at the request of Complainant in or about May 2012. The websites <saltylife.com> and <saltylife.net> do not now carry any commercial content. However, the website <saltylife.com> refers to The Salty Dude by using the words “THE SALTY DUDE”, “THE SALTY DUDE” and “ Aqua photos and unique pics of the salty life of salty dude and his travels.”. The website <saltylife.net> also carries references to ”The Salty Dude”.
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.
The Panel believes that before discussing the issues it is useful to set out the factual background of this dispute.
FACTUAL BACKGROUND
Complainant is a United States company engaged in promoting the outdoors and in particular the surfing and ocean life and providing clothing and other accessories for those engaged in pursuing that interest. Its earliest trademark for use in its business was the trademark SALT LIFE, registered on June 7, 2005, trademark Reg. No. 2,959,429 registered by Complainant on that date with the USPTO. However it started business earlier than that and Its domain name for <saltlife.net> was registered on 6 December 2003 in the name of Salt Life Holdings LLC. On the same date the domain name <saltlife.com> was registered by ToThe Game LLC. Complainant uses these links to promote its products and to conduct an online sales business.
Respondent also promotes the outdoors and in particular the surfing and ocean life through his photographs. He does this through his websites situated at <saltylife.com> and <saltylife.net>, the websites to which the disputed domain names resolve. As will be seen, he also provides clothing and other accessories for those engaged in pursuing these interests and he does so through the website <saltydudes.com>. Respondent registered the <saltylife.com> and <saltylife.net> domain names on 29 September 2010 and 17 October 2010 respectively. By that time Complainant was a going concern. A search of the Wayback Machine[1] for 23 September 2010, the closest date of an available screenshot prior to the registration of the first of the disputed domain names shows that at that date <saltlife.com>, Complainant’s website, through which it conducted its business, was active and promoting a broad range of mens’, womens’, childrens’ and casual and out door clothing, as well as related accessories. Accordingly, when Respondent registered the first of his two disputed domain names, on 29 September 2010, Complainant was in business, in Florida and using the trademark SALT LIFE and the domain name <saltlife.com> for its website.
As will be seen later in this decision, on 15 December 2010 Complainant’s attorneys wrote to Respondent objecting to Respondent’s application to register SALTY LIFE IT’S A WAY OF LIFE as a trademark for tee shirts and adding that it, Complainant, objected to Respondent’s use of that brand to sell goods that could be confused with Complainant’s own goods. Three days later, on 18 December 2010 the domain name <saltydudes.com> was registered by Domains by Proxy LLC.
Just before that time, Complainant’s website at <saltlife.com> was still active and carried content much the same as it had on 23 September 2010. A screenshot from The Wayback Machine for 23 November 2010, the closest one that is available and prior in time to the registration of <saltydudes.com> on 18 December 2010 shows that Complainant’s business was functioning and selling a similar range of clothing and accessories as had been revealed by the screenshot for 23 September 2010.The extent of its business operations is not known, but it appears to have been centred on Florida and to be an online business, although with dealers elsewhere.
Other events that occurred between 2003 and the filing of the Complaint on 21 August 2012 have been described in submissions from both parties. To make the decision clearer, the Panel will set out here in tabular form those events and the dates on which they occurred.
A. 6 December 2003
1. Domain name <saltlife.com> registered by To The Game LLC
B. 6 December 2003
1. Domain name <saltlife.net> registered by Salt Life Holdings LLC
C. 7 June 2005
1. SALT LIFE registered as Trade Mark by Complainant
D. 29 September 2010
1. RC[2] registers domain name <saltylife.com>
E. 17 October 2010
1. RC registers domain name <saltylife.net>
F. 8 November 2010
1. Application by RC to register SALTY LIFE IT’S A WAY OF LIFE with USPTO as a Trade Mark
G. 8 December 2010
1. Application by RC to register SALTY LIFE with USPTO as a Trade Mark
H. 15 December 2010
1. Letter from Complainant’s attorney to RC objecting to his application to register Trademark and warning him against selling goods under the name SALTY LIFE IT’S A WAY OF LIFE
I. 18 December 2010
1. <saltydudes.com> registered as a domain name by Domains by Proxy LLC
J. 21 December 2010
1. Letter from RC to Complainant’s attorney: Never heard of Complainant or its products; had stopped work on TM application after email from USPTO of 13 November 2010.Will not use name on goods until TM application approved.
K. 9 February 2011
1. Letter from Complainant’s attorney to RC noting abandonment of his application to register SALTY LIFE IT’S A WAY OF LIFE as a TM, but that he does not intend to abandon the application and intends to resume use of SALTY LIFE IT’S A WAY OF LIFE if application is successful. Demand that RC abandon application to register SALTY LIFE IT’S A WAY OF LIFE as a TM and that it should not be used.
L. 18 February 2011
1. Application to register SALTY LIFE IT’S A WAY OF LIFE as a TM abandoned.
M. April 2012.
1. RC builds websites for <saltylife.com> and <saltylife.net>.
N. 17 May 2012
1. Letter from Complainant’s attorney to RC noting Trade Mark application and also the other application to USPTO for registration of SALTY LIFE as a Trade Mark. Noting abandonment of TM applications. Notes that RC has domain names <saltylife.com> and <saltylife.net> and is using them to direct customers to <saltydudes.com>. Demands he cease using the domain names and transfer them to Complainant.
O. 24 May 2012
1. Reply from RC. He denies infringement but has removed pages from websites that link to www.saltydudes.com and is using them for private beach and water photos with his friends. Offers to sell Domain names.
P. 6 June 2012
1. Letter from Complainant’s attorney to RC noting that link to <saltydudes.com> removed but noting Domain names are still active and demanding the sites be disabled. Agrees to pay only the registration costs of the disputed domain names.
Q. 21 August 2012
1. Complaint Filed.
R. 8 September 2012
1. Response filed.
The first question that arises is whether the Complainant has a trademark or service mark on which it can rely. Complainant adduces evidence of several trademarks for SALT LIFE, the first of which was registered on June 7, 2005, namely the SALT LIFE trademark Reg. No. 2,959,429 being registered by Complainant with the USPTO on that date.
The Respondent has not challenged the trademarks of the Complainant. The Panel accepts the evidence tendered by Complainant to prove the trademarks relied on. The Panel therefore finds that Complainant has established that it has several trademarks on which it can rely (“the SALT LIFE trademark”).
That, of course, is not the end of the argument, because the next and more difficult question is whether Respondent’s disputed domain names are either identical or confusingly similar to Complainant’s trademark.
Complainant submits that the domain names include the whole of the trademark and that all that has happened is that Respondent has added the letter “y” to the trademark to create the domain names. It then relies on the well established principle that such a minor addition cannot negate an identicality or confusing similarity that is otherwise present.
Respondent does not advance detailed submissions on this issue, other than to say in effect that that the spelling of the domain names is different from the spelling of the trademark and that, as they are different, the domain names cannot be confusingly similar.
The comparison required to be made is carried out by applying the test of how the objective bystander would judge the two expressions. Applying that test, the Panel’s view is, first, that the domain names are similar to the trademark because the spelling of the one is virtually the same as the spelling of the other, the only difference being the addition of the letter “y” to the trademark. They also look and sound similar, although the trademark consists of two words, whereas the domain names are expressed in one word, as of course they must necessarily be to create a domain name. But the question still remains: although they are similar, are they confusingly so? In the opinion of the Panel, the expression “saltylife” in the domain names would convey to most people the notion of an outdoor life associated with the sea and aspects of the salt water life invoked by that notion. Not all people would think when they saw the expression “salt life”, in the trademark, that it also related to the same notion. Some people would think so, but others would not. Some people would think that it was referring to entirely different matters, perhaps salt itself. An examination of the register of trademarks at the USPTO makes this clear, as it shows, for instance, that there are registered trademarks for BATH SALT LIFE and SALT LIFE REALTY. However, the opinion of the Panel is that the preponderance of likely viewers of the trademark would think that SALT LIFE, like “saltylife”, conveyed to them the notion of an outdoor life associated with the sea and aspects of the salt water life. Accordingly, such viewers would probably find the domain names similar to the trademark, because they deal with the same subject and would also find them confusingly so, as those viewers would think that the domain names belonged to the business associated with the SALT LIFE trademark. The Panel’s view, therefore, is that on the balance of probabilities, the domain names are confusingly similar to the trademarks.
Complainant has therefore made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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).
In support of its prima facie case, Complainant relies on three points. It says that the disputed domain names incorporate the whole of its trademark, that the Respondent has never been authorized to use its trademark in the domain names and that the Respondent has never been known by the domain names. Although not conclusive of the whole issue, the Panel finds that those matters relied on make out a prima facie case that Respondent does not have a right or legitimate interest in the disputed domain names. It then becomes a matter of whether Respondent is able to rebut the prima facie case against it and show how he has such a right or legitimate interest.
Paragraph 4(c) of the Policy sets out three grounds on which the Respondent may rely to establish his rights or legitimate interests in the disputed domain names. However, it is important to understand that a respondent is not confined to those three grounds, as they are “without limitation” and the Respondent may rely on any other fact or circumstance showing such a right or legitimate interest. The three specified grounds are:
“ …(i) before any notice to you of the dispute, your ( the Respondent’s) use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As Respondent is not represented and to ensure that the parties are treated with equality and that Respondent is given a fair opportunity to present his case , the Panel has given a wide understanding to the basis on which it understands that Respondent bases his right to the domain names. That understanding is that Respondent bases that right partly on paragraphs 4(c)(i) and (iii) and partly on the right, that is often advanced in these cases, of anyone to register a domain name using generic, descriptive, or common words, so long as they are used in that sense and not as a trademark and provided the registrant does not use the resulting domain names to target a trademark, its owner, or its products. The Respondent seeks to rebut the prima facie case essentially by submitting that he held the domain names from 29 September 2010 and 17 October 2010 respectively, that he built websites for them in April 2012, that they carried a link to his commercial site <saltydudes.com> until May 2012, but that thereafter he used them for private purposes, namely for photographs of beach and water subjects that he then shared with friends, but that in this latter stage he did not use the domain names for a commercial or other improper purpose. It seems reasonable, therefore to conclude that Respondent is seeking to bring himself within paragraphs (i) and (iii) above and also within the more general right to register and use domain names based on generic, descriptive, or common words. It should also be noted, where relevant, that the date when the dispute arose, for the purposes of paragraph 4(c)(i) was on or about 6 June 2012, as that was the date on which Complainant’s attorneys advised Respondent that the disputed domain names were still active and demanded that the sites be disabled despite the earlier concessions he had made. As Respondent did not agree to this, it may safely be said that as of that date the parties were in dispute.
Whether Respondent has a right or legitimate interest in the domain names must therefore be examined by reference to two periods of time, the first being from the time of registration of the domain names until the link to <saltydudes.com> was removed in May 2012 and the second being from that time until the Complaint was filed on 21 August 2012; in the first period Respondent was clearly using the domain names for a commercial purpose, because they were linked to the commercial website at <saltydudes.com>, but in the second period he was using them, in his submission, purely for the non-commercial purpose of displaying photographs of marine subjects for his interest and that of his friends.
In support of his submission, Respondent says that he originally copyrighted “Salty Life It’s a Way of Life” in September 2010 and “Salty Life” in November 2010 with the United States Copyright Office under the system of registered copyrights existing in the United States. He then applied for trademarks on the two expressions, but was contacted by the attorneys for the Complainant, in effect by letter of 15 December 2010 and again on 9 February 2011. The attorneys demanded that he abandon those trademark applications, which he did at least so far as SALTY LIFE IT’S A WAY OF LIFE is concerned, on 18 February 2011, although there seems a general assumption that both that application for a trademark and the one for SALTY LIFE were both abandoned. However, Respondent maintains that after that time, in April 2012, he built websites for the two disputed domain names.
This prompted another demand from the Complainant’s attorneys on 17 May 2012 to the effect that he disconnect the link between the websites of the two disputed domain names and <saltydudes.com>, which he also did, although apparently reluctantly. He advised the attorneys of this on 24 May 2012 but resolved, as he also advised them, to continue using the disputed domain names to host private beach and water photographs with his friends. This was not enough for Complainant, which objected to the domain names remaining active, claimed that this was “likely to cause confusion” and demanded that they be transferred to Complainant. This was apparently so because at that time, although the links to <saltydudes.com> had been removed from <saltylife.com> and <saltylife.net>, the websites still carried statements such as “The Salty Dude.”
Complainant’s opposing submissions on these immediate matters included under “Bad Faith”, are as follows. First, it says that Respondent originally used the disputed domain names to divert Internet users to Respondent’s own <saltydudes.com> website where Respondent’s competing “Salty Dude” t-shirts were marketed and sold. Secondly, Complainant maintains in substance that this situation existed at least around the time in May 2012 when it complained to Respondent and that it was altered but not improved around May-June 2012 when the link to <saltydudes.com> was removed, but the name “The Salty Dude” remained on the website as a virtual invitation to internet users to locate the website for “The Salty Dude.”
Before proceeding and before leaving this recital of the facts, the Panel notes a matter of some importance. The letter from Complainant’s attorneys to Respondent of 15 December 2010 set out in detail the trademark rights of Complainant in its trademark SALT LIFE, described its products, asserted that its marks had “become widely recognized throughout the United States as symbols of high-quality consumer goods, including but not limited to, clothing, and because our client is based in Florida, the SALT LIFE Marks are particularly well known in Florida.” The letter then went on to say that there was potential for confusion between the SALT LIFE mark and tee shirts already being produced by Respondent, that this amounted to trademark infringement and that, “because of the huge popularity of the SALT LIFE Marks in Florida and the similarity between the SALTY LIFE IT’S A WAY OF LIFE mark and (complainant’s)…SALT LIFE Marks, we do not believe that your adoption of the SALTY LIFE IT’S A WAY OF LIFE was a coincidence or done in good faith.” The Panel’s view is that this letter is important as it fixed Respondent with knowledge of Complainant’s marks and products, if he did not know of them before and made it clear that if he acted to exaccerbate the alleged confusion, Complainant would hold him responsible. It should also be noted that although the disputed domain names had been registered 2-3 months before, Complainant was apparently not aware of them or at least did not mention them in the letter. Nor were they mentioned by Respondent in his reply to the letter on 21 December 2010. Accordingly, it appears that although the disputed domain names existed at this time, they were not used and that the websites associated with them were not built until April 2012.
The Panel has examined the Respondent’s websites as they were on May 9, 2012, the date when the screenshot which is Complainant’s Annexure 7, was apparently taken. This shows that Respondent’s websites <saltylife.com> and <saltylife.net> contained links to <saltydudes.com>, which was and is a separate website of Respondent designed to promote and carry advertisements for his range of goods. Respondent’s websites <saltylife.com> and <saltylife.net> carried on that date the following statement:
“Salty Dude. Visit our store at Saltydudes.com for Tee shirts, visors, caps, decals, koozies, wristbands, skimboards, or click any link below to go to our secure website store for salty dude products.” (emphasis added).
When the user goes to <saltydudes.com>, one finds illustrated products described as koozies, visor, card holder, Fish visor, silicone and tee shirts, illustrated and for sale.
It is clear therefore that as at May 9, 2012 Respondent was using his <saltylife.com> and <saltylife.net> websites to promote and sell his own products described in more details and illustrated , at <saltydudes.com>.
Accordingly, prior to Respondent being given notice of the dispute, i.e. on 6 June 2012, Respondent was using the domain names in connection with an offering of goods or services, for he was using the domain names as a support or vehicle for a link to his other website where he was clearly offering goods for sale. If that activity was bona fide, it would give Respondent a complete defence, as it would by virtue of paragraph 4(c)(i) give him a right or legitimate interest in the domain names. But the question is: was it bona fide?
That question is difficult to answer, as it depends on the Respondent’s intention and motivation which are notoriously difficult to assess in UDRP proceedings where there is no evidence on oath, cross examination or other forensic tools. Nevertheless the panel is charged with reaching a conclusion, understood to be one that must be reached on the balance of probabilities and reaching it on the evidence and arguments put before it by the parties. The Panel has come to the conclusion that, as the domain names are confusingly similar to Complainant’s trademark, Internet users seeking Complainant and its offerings may well have arrived at Respondent’s websites and followed the links to <saltydudes.com>, where competing goods were promoted for sale, thinking that they were the goods of Complainant, or endorsed by it or confused as to whether or not they were at a website of Complainant or at another website offering different brands of products. Thus, Respondent’s offering of goods through the disputed domain names was not, in the opinion of the Panel, bona fide.
There are also several indications in the evidence that tend to support the conclusion just expressed. First, from the date when Complainant’s attorneys letter (sent by Federal Express) of 15 December 2010, objecting to the application to register the trademarks was received, Respondent knew of the existence of Complainant, that it had several trademarks for SALT LIFE, that they were used to sell beach wear and casual clothing and that Respondent’s proposed trademark SALTY LIFE IT’S A WAY OF LIFE, at least so far as Complainant was concerned, had the potential to cause confusion and trademark infringement. The letter of 15 December 2010 put Respondent on notice, or should have put him on notice, that he was at risk if he promoted similar products to Complainant by using the name “salty life” or any other name that might be confused with SALT LIFE. Respondent had not yet started to promote his goods on www.saltydudes.com, but when he did, at anytime after receipt of the letter of 15 December 2010, it must have been with knowledge of the danger of confusion. This tends to weaken any suggestion that Respondent’s offering of goods using the Salty Life websites was bona fide or had nothing to do with the similar name adopted by Complainant as the brand of its similar goods and used by it for some seven years previously and registered as a trademark some 5 years previously.
Secondly, a WHOIS search of <saltydudes.com>, the main vehicle by which Respondent promoted his goods, shows that it was registered as a domain name on 18 December 2010. The similar domain name in the singular form, <saltydude.com> had been registered by another party on 27 January 2010. It will be noted that 18 December 2010 was a few days after the letter of 15 December 2010 from Complainant’s attorneys was presumably delivered by Federal Express to Respondent and a few days before Respondent replied to that letter on 21 December 2010. The domain name was registered in the name of Domains by Proxy LLC although it is not known by the Panel who it was who was responsible for that registration. Although not unequivocal, this tends to suggest that although Respondent was not promoting his goods before 15 December 2010, but did so after he was notified of Complainant’s brand and lines of clothing and other products and the alleged danger of confusion.
The finding that the use of the two websites was, in the circumstances of this case, not bona fide is consistent with positions previously taken by other UDRP panels. See, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel’s conclusion then is that Respondent’s use of the disputed domain names from April 2012 until 24 May 2012 does not bring him within the terms of paragraph 4(c)(i) of the Policy as a bona fide offering of goods or services.
The same considerations lead to the conclusion that although the two words “salty” and “life”, separately or together, are generic, descriptive and dictionary words, on the evidence Respondent used them in domain names, aware of the fact that a trademark of a similar name was already being used to promote similar goods and that his use of the domain names for the same purpose would give rise to a claim of confusion between the two brands.
Respondent is therefore unable to show a right or legitimate interest in the domain names on either basis.
The next question is whether the events after that time, i.e. after Respondent removed the links to <saltydudes.com> and during which time Respondent submits that he was using the domain names solely for personal and non-commercial purposes give Respondent a right or legitimate interest in the domain names. In other words, do those events show that he was, during that time and when the Complaint was filed, “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As we have seen, Respondent’s position is that on 24 May 2012, he wrote to Complainant’s attorneys denying trademark infringement but adding that he had removed the pages from the websites that contained the links to <saltydudes.com> and that thereafter he would confine his use of the domain names to support websites for his private beach and water photos to be shared with friends. If Respondent could establish that his use of the domain names during this time was non-commercial, the Panel would be able to find that he had a right or legitimate interest in them. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (“The use of domain names for non-commercial purposes is a recognized method of proving rights and legitimate interests on the part of such user even when the use may cause some disadvantage or harm to other parties.”); see also Baja Marine Corp. v. Wheeler Techs., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that the respondent has rights and legitimate interests in the domain name where the respondent made a non-commercial use of the <bajaboats.com> domain name and received no funds from users of the site connected to the domain name).
Complainant’s argument on this aspect is that after it remonstrated with Respondent about the links to www.saltydudes.com , he removed them, but that he continued to use <saltylife.com> and <saltylife.net> to promote “The Salty Dude” and by that means to promote products that were in competition with Complainant and likely to be confused with them.
Again, the Panel has examined the screenshots that are Complainant’s Annex 8, being screenshots of the <saltylife.com> and <saltylife.net> websites and also of <saltydudes.com> as they were on August 16, 2012, i.e. after the dispute arose, but before the Complaint was filed on 21 August 2012.
The <saltylife.com> and <saltylife.net> websites carry various photographs of marine life, the sea and sky suitably captioned. Unlike the screenshots taken on May 9, 2012, those taken on August 16, 2012 do not contain any express promotion of or links to the products of “The Salty Dude.” However, <saltylife.com> refers several times to The Salty Dude by using the words “THE SALTY DUDE”, “THE SALTY DUDE” and “Aqua photos and unique pics of the salty life of salty dude and his travels !” They do not say how to contact him, give his website address or promote any of his products. However, the promotion of his name as THE SALTY DUDE, given that he had used that name and apparently is still using it as a business name for the range of products at issue here and his use of the expression “ salty life” when Complainant’s trademark is SALT LIFE, raises the inference that internet users seeking Complainant’s goods may well be encouraged to seek him out and buy his goods, confused as to whether they are Complainant’s or Respondent’s goods.
The website <saltylife.net> is to the same effect, although there are fewer photographs on that site and the announcement “…coming soon……acqua photos of the salty life of the salty dude.catch the wave…….!” As well as two other references to ”The Salty Dude”. However, the page from that website as it is today has an addition to it which does not appear on the page as comprising Annex 8. The addition is as follows: ”See our ujnique photos and visual art copyrights on our other website.”
To summarise, by August 16, 2012, Respondent’s websites www.saltylife.com and www.saltylife.net and were not commercial and had no links to or connection with his website at <saltydudes.com> where his products were promoted, although they carried several references to The Salty Dude.
The website <saltydudes.com> as at August 16, 20912,starts with the welcome: “Welcome to Salty Dudes.com.Home of Salty Dude apparel.”
It is purely commercial, with advertisements for tee shirts, fish tees, caps, cardholders, boogie boards, surfboards, wristbands and other products. There are also references to other goods and also to services such as shipping and return, contact and privacy. Thus anyone reaching that website under the belief that it is the website of the same person promoted on <saltylife.com> and <saltylife.net> could not help but conclude that this was a commercial website where goods were for sale.
The question therefore is whether Respondent’s most recent use of the domain names is “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Again, this question is difficult to answer in a UDRP proceeding, rather than a court proceeding, for the reasons given above, but the Panel is charged with making a decision and on the balance of probabilities. The Panel’s conclusion is that the use of the domain names now under consideration is not “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” That is so for the following reasons. First, the Panel’s view is that Respondent had initially embarked on promoting outdoor clothing and related products through <saltydudes.com> and using <saltylife.com> and <saltylife.net> to further that objective; accordingly, it seems probable that he still had that intention when he removed the links to <saltydudes.com>, for he retained the references to “The Salty Dude” and must be presumed to have intended that those references would influence internet users. Clearly, internet users would not find it difficult to locate the Internet address of “The Salty Dude” as, even today, a Google search for “The Salty Dude” leads immediately to his web address. Secondly, the above analysis shows that there was a commercial element in the use of the domain names which puts it outside paragraph 4(c)(iii) of the Policy. Respondent’s case has been that the <saltylife.com> and <saltylife.net> websites were not commercial, at least after the links to <saltydudes.com> were removed, but were solely for his photographs and personal reflections, whereas his commercial name and brand were “The Salty Dude” and that it was the <saltydudes.com> website that was his commercial website promoting goods for sale. There was therefore no need for him to promote his commercial name and brand on the <saltylife.com> and <saltylife.net> websites. But as he has done so, by several uses of the expression The Salty Dude , the result is open to the interpretation that this was done to promote his commercial name and the goods offered for sale under that name. It is therefore difficult to describe this process as “noncommercial” or as “without intent for commercial gain.”
The view of the Panel on this difficult question, therefore is that Respondent does not establish a right or legitimate interest in the domain names by relying on paragraph 4(c)(iii) of the Policy.
Had the facts been that Respondent had never promoted his goods under the Salty Dude brand and by using the <saltylife.com> and <saltylife.net> websites, as he initially did, the Panel’s view of this case may well have been different. However, promoting his goods as he did, under the name “The Salty Dude” and by using the two disputed domain names as he has since the links were removed, in part to promote the commercial name “The Salty Dude”, persuades the Panel that he was still using them for the commercial purpose of promoting goods similar to those of Complainant. Accordingly, that use cannot be said to be “a legitimate noncommercial or fair use of the domain name(s).”
As the Panel has now dealt with the case of Respondent on this issue, it has to conclude that he has not rebutted the prima facie case against him and accordingly the Panel finds that Respondent has no rights or legitimate interests in the domain names.
The Panel therefore finds that Complainant has made out the second of the three elements it must establish.
Both the terms of paragraph 4(a)(iii) of the Policy and many decided cases have established that Complainant must show both that the disputed domain names were registered in bad faith and used in bad faith.
The Policy also gives some guidance on its application by providing in paragraph 4(b) as follows:
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The evidence does not bring the case within paragraph 4(b)(i), (ii) or (iii) and the Panel would not be prepared to find bad faith on any of those bases. In the individual facts of the case the Panel is not prepared to find that Respondent’s invitation to Complainant to buy the domain names, at the time he did, is evidence of bad faith, although in some fact situations that conclusion may be justified. The situation with respect to paragraph 4(b)(iv) is however entirely different and it would already be appreciated from the analysis under Rights and Legitimate Interests that the Panel finds the facts of the case bring it within that paragraph. The Panel’s view on the totality of the evidence and the submissions of the parties and applying the test of the balance of probabilities, is that:
i. Respondent used the disputed domain names for commercial gain;
ii. by attempting to attract internet users to his websites, namely <saltylife.com> and <saltylife.net>; or to
iii. another online location, namely <saltydudes.com>;
iv. by creating a likelihood of confusion with Complainant’s SALT LIFE trademark;
v. the potential confusion being whether the source of his products and services was Complainant or whether those products and services were sponsored, affiliated with or endorsed by Complainant.
The Panel’s view is that this was done by registering the disputed domain names, using them for websites that carried links to <saltydudes.com>, promoting on that website goods that were in competition with Complainant and, subsequently, after the links were removed, continuing to promote on the same websites “The Salty Dude” and, as a consequence, goods offered for sale under that name.
The remaining question is whether the bad faith use of the domain names just described can also properly be construed to be bad faith registration. This again is a difficult question to decide as it depends on the intention and motivation of Respondent when he registered the domain names and there is no direct evidence on that issue. The Panel must therefore reach conclusions based on inferences that can properly be drawn from the evidence. In that regard, the relevant dates are 29 September 2010 and 17 October 2010 when the two domain name were registered and the question is whether there was bad faith at that time of those registrations. At about the same time, Respondent was in the process of registering with the United States Copyright Office copyright in the two expressions, Salty Life It’s a Way of Life and Salty Life. He was also, in November – December 2010 in the process of registering two trademarks in the same name. The Panel cannot but think that applications for copyright, trademarks and domain names indicate that Respondent’s motivation was to establish a commercial structure for his business, although clearly he also intended to use the two domain names for personal purposes. Moreover, at the time of registration of the domain names, Complainant’s trademark for SALT LIFE had been registered for over 5 years, its own domain names <saltlife.com> and <saltlife.net> had been registered for over 7 years, Complainant’s business was clearly well established, based in Florida as was Respondent and its, Complainant’s, goods were at the relevant time sold in other parts of the United States beyond Florida. Taking everything into account it seems reasonable to infer that the motivation Respondent had at the time he was actively promoting his goods by links on the two websites was also his motivation at the earlier time when the domain names were registered. That is the conclusion the Panel comes to in the light of the totality of the evidence and its assessment of what probably happened.
Accordingly, the Panel finds that Complainant has made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saltylife.com> and <saltylife.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: 24 September, 2012
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