Capitol Corridor Joint
Powers Authority v. CyberCapitol Ventures LLC
Claim Number: FA0809001222732
PARTIES
Complainant is Capitol Corridor Joint Powers Authority (“Complainant”), represented by Linda
Joy Kattwinkel, of Owen Wickersham & Erickson P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitolcorridor.com>, registered
with Moniker
Online Services, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Michael Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 2, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 4, 2008.
On September 3, 2008, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <capitolcorridor.com>
domain name is registered with Moniker Online
Services, Inc. and that the Respondent is the current registrant of the
name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On September 5, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 25, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@capitolcorridor.com by
e-mail.
A timely Response was received and determined to be complete on September 25, 2008.
A timely Additional Submission was submitted by Complainant. The National Arbitration Forum determined it
to be sufficient pursuant to the National Arbitration Forum’s Supplemental Rule
7 on September 30, 2008.
A timely Additional Submission was submitted by Respondent. The National Arbitration Forum determined it
to be sufficient pursuant to the National Arbitration Forum’s Supplemental Rule
7 on October 6, 2008.
On October 8, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the THE CAPITOL CORRIDOR trademark and design,
(Reg. No. 2,491,918 issued September 25, 2001), covering inter-city passenger
rail transportation services. Complainant also owns the CAPITOL CORRIDOR trademark
and design (Reg. No. 3,426,668, issued May 13, 2008). Complainant contends that the disputed domain
name <capitolcorridor.com> is
confusingly similar to its CAPITOL CORRIDOR trademark because it contains the
trademark in its entirety, and because it is identical to the trademark when
the space and the generic top-level domain “.com” are omitted.
Complainant contends that Respondent has no rights or legitimate
interests in the domain name because:
(1) prior to
notification of the suit, the domain name was either idle or displayed a page
featuring advertisements for services of Complainant’s competitors,
(2) Respondent has
never been commonly known by the domain name, and
(3) Respondent is not
making a legitimate noncommercial or fair use of the domain name without intent
for commercial gain to misleadingly divert consumer or to tarnish the
trademarks at issue. See Policy ¶
4(c).
Complainant also contends that Respondent registered and used the
disputed domain name in bad faith. Complainant
argues that the disputed domain name has been used to divert Internet users
away from Complainant’s services for Respondent’s commercial gain through
advertising, sponsored links, and diversion to Respondent’s services. Prior to July 23, 2008, the disputed domain
name was used to display a page featuring sponsored links to train information
and services which generated pay-per-click revenue for Respondent. On July 23, 2008, Complainant states that Respondent
reconfigured the disputed domain name to direct Internet users to its web page
at <mycapitol.com>, which displayed information about the
Complainant asserts that the domain name was registered in bad faith. It argues that CAPITOL CORRIDOR is a unique
and distinctive mark that has only been used to describe Complainant’s
transportation and transit information services and that it is therefore
impossible that Respondent’s registration of the <capitolcorridor.com> domain name was coincidental. It further argues that Respondent had a duty
as a repeat domain registrant to perform a search for trademark rights prior to
registering the domain name, a search which would have revealed Complainant’s
use of the CAPITOL CORRIDOR mark.
B. Respondent
Respondent contends that Complainant’s trademarks are not confusingly
similar to the disputed domain name because the trademarks cover visual designs
combining the words in question with a depiction of a train. Respondent further contends that “capitol,”
“corridor,” and “capitol corridor” are generic, descriptive terms, and that
Complainant’s disclaimer of any exclusive right to the word “corridor” in both
of its trademark applications precludes a finding that the disputed domain name
is confusingly similar to the mark as registered.
Respondent contends that it did not control the content or subject
matter of the advertisements displayed on the <capitolcorridor.com> website prior to July 23, 2008, and
that these decisions were made by Parked.com, where the Respondent “parked” the
domain for a period of time including June 2008. Respondent argues that, because Amtrak is the
sole provider of Complainant’s train services and the only train services
available through the <capitolcorridor.com>
website were Amtrak services, the links were not to competitors of Complainant.
Respondent does not deny that it derived
revenue from the sponsored links and advertisements on its parked website and
later from traffic redirected to <mycapitol.com>.
Respondent argues that Complainant’s six-year delay in bringing its
Complaint is evidence of an absence of consumer confusion or establishes rights
in the Respondent to use the domain name.
Respondent provides a declaration describing its pattern of registering
domain names containing political and governmental keywords in order to promote
its <mycapitol.com> website. Respondent
claims that it registered <capitolcorridor.com>
in good faith as a part of this pattern after being inspired by a column with the
title “Capitol Corridor” in the National Journal. Respondent also provides many
examples of use of the phrases “capitol corridor” and “capitol corridors” in
connection with governmental locales and activities.
Respondent urges this Panel to find reverse domain name hijacking by
Complainant, arguing that Complainant attempted to mislead the Panel by not
calling attention to the disclaimers of exclusive rights to the word “corridor”
in its trademarks, that the purpose of the action is to acquire the disputed
domain name in preparation for its planned redesign of its website, that the Complaint
was filed with the intent to harass, and that the Complaint was so without
merit that it was unreasonable to maintain it.
C. Complainant’s Additional Submission
Complainant, in its Additional Submission, asserts that Respondent’s
service of the Exhibits to its Response was not timely because Respondent
scheduled delivery of the Exhibits for a Saturday, resulting in Complainant not
receiving the Exhibits until the following Monday, one day before its
Additional Submission was due.
Complainant argues on the merits that the design elements should not be
considered in evaluating confusing similarity because a domain name can consist
only of characters and not of images, and that its disclaimer of one word of
its two-word mark does not invalidate the mark as a whole. Complainant also contends that it has a long
history of exclusive use of the term CAPITOL CORRIDOR as a trademark for its
services, giving it common law rights in the term.
Addressing Respondent’s argument that Complainant delayed six years in
bringing its Complaint, Complainant repeats a contention from its Complaint
that it only recently learned of the infringing domain name.
Complainant argues against a finding of reverse domain name hijacking,
pointing out that its Exhibits included the disclaimers regarding the word
“corridor,” arguing that its contentions are not unreasonable, denying an
improper connection between the redesign of Complainant’s website and the
bringing of its complaint, and denying any intent to harass.
D. Respondent’s Additional Submission
Respondent contends that it made a good faith attempt to comply with
the Rules and to serve Complainant with its Exhibits, and that Respondent would
not have objected if Complainant had moved to extend the filing deadline for
its Additional Submission.
Respondent argues that it has a legitimate interest in the domain name
because it may legitimately use a non-infringing, generic domain name for
profit. Respondent also states that it used the disputed domain name to redirect
to <mycapitol.com> prior to receiving any communication from Complainant,
during a period before the disputed domain name was “parked.” Respondent
asserts that the disputed domain name had not been parked prior to 2006 and
that Respondent did not have Complainant in mind when it registered the
disputed domain name.
Respondent disputes Complainant’s assertion that Respondent had a duty
to perform a trademark search prior to registering the disputed domain name.
Respondent also argues for a finding of reverse domain name hijacking
on the additional ground that Complainant is using the Policy in bad faith to
avoid paying for the disputed domain name, though Respondent has also submitted
evidence that it had not offered to sell the domain name to Complainant or
anyone else.
FINDINGS
This Panel finds that the disputed domain
name is confusingly similar to the CAPITOL CORRIDOR trademark but that
Respondent had acquired a legitimate interest in the disputed domain name prior
to contact by Complainant and that the domain name was not registered in bad
faith. Since Complainant’s assertions were
reasonable, this Panel does not find that Complainant engaged in reverse domain
name hijacking.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant has submitted uncontested
evidence of its registration of the THE CAPITOL CORRIDOR mark (Reg. No.
2,491,918 issued September 25, 2001), thus establishing rights that predate the
May 14, 2002 registration of the disputed domain name.
This Panel is persuaded by Respondent’s
argument that the disputed domain name cannot be identical to a design-plus-words
trademark because the domain name cannot incorporate design elements. See FRH Freies Rechenzerntrum Heiberufe v.
Ingenieurburo FRH Stuttgard, FA 102945 (Nat. Arb. Forum Jan. 18, 2002)
(determining that the <frh.biz> domain name was not identical to the
complainant’s registration for “stylized versions of the letters ‘FRH’
accompanied by the [complainant’s] name”). This does not mean, however, that a domain
name can never be confusingly similar to a design-plus-words trademark where
only one of multiple words has been disclaimed.
In the evaluation of confusing similarity, it
is significant that the words in Complainant’s mark are only a portion of the
mark as a whole. It is also significant
that domain names cannot incorporate design elements. Consumers rely upon the textual elements of a
design-plus-words trademark to find the associated goods and services online. Where only a portion of the word mark has been
disclaimed, a domain name that is practically identical to the word mark as a
whole can give rise to confusing similarity with respect to the underlying
design-plus-words mark. The Panel agrees
with Complainant’s implicit argument that the “THE” in THE CAPITOL CORRIDOR is
irrelevant here. Spaces and generic top-level domains such as “.com” may also
be ignored in comparing domain names and marks. See,
e.g.,
Pursuant to Policy ¶ 4(c), rights and
legitimate interests can inhere where:
(i) before any notice to Respondent of the dispute, Respondent used or prepared 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) Respondent has been commonly known by the domain name; or
(iii) Respondent makes 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.
It is undisputed that Respondent has never
been commonly known by and has not made a noncommercial or fair use of the
disputed domain name. The question is
whether Respondent has made a legitimate use of the domain name in connection
with a bona fide offering of goods or
services.
Complainant submitted evidence showing that
the disputed domain name resolved in June 2008 to a “landing page” containing
the words CAPITOL CORRIDOR and featuring links to third-party websites. The landing page bears an image of a train,
and the sponsored links are all directed to train-related services and
information. Nothing on the page touches on the legitimate interest Respondent
has advanced in discussing governmental news and events. The Panel finds that the landing page was not
a legitimate use by Respondent giving rise to rights under Policy ¶ 4(c). See Bank of Am. Fork v. Shen,
FA 877982 (Nat. Arb. Forum Feb 13, 2007).
Complainant has made a prima facie case that Respondent has no rights or legitimate
interests in the disputed domain name, shifting the burden to Respondent to
demonstrate its legitimate rights. See
Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb.
Forum Aug. 18, 2006).
Respondent has submitted evidence that the term
“capitol corridor” is common and descriptive and that Complainant delayed six years
before asserting its rights. Respondent
contends that, for at least four years, the disputed domain name redirected
users to its <mycapitol.com> website displaying information about the
For its part, Complainant argues that the
term “capitol corridor” is not commonly used in connection with anything but
its services, an assertion rebutted by Respondent’s evidence of many articles
using the term “capitol corridor,” including a recurring column by that name.
Complainant also contends that it only recently learned of the existence of <capitolcorridor.com> as a reason
for its six-year delay in asserting its rights. The Panel gives this unsupported assertion
little weight, as it is difficult to believe that the owners of <capitolcorridor.org>
could reasonably remain unaware of the existence of <capitolcorridor.com> for over six years.
The Panel finds that redirection to the <mycapitol.com>
website was a legitimate, non-infringing use of the disputed domain name. The use of third-party advertising and links
to its own services represented a bona fide
offering under Policy ¶ 4(c)(i). See INVESTools, Inc. v. KingWeb, Inc., FA 598845 (Nat. Arb. Forum
Jan. 9, 2006). Respondent’s legitimate use of the disputed domain name created
a legitimate right that precludes a finding for Complainant under Policy ¶ 4(a)(ii).
For a period of time between May 2006 and
July 2008, the disputed domain name was “parked” and directed users to a
“landing page” displaying sponsored links to competitors of Complainant. The Panel
finds that this use of the disputed domain name constitutes a bad faith use
under Policy ¶ 4(b)(iv). See
The remaining issue is whether Complainant
has established that the domain name was also registered in bad faith.
Complainant argues that Respondent had
constructive notice of its mark when Respondent registered the disputed domain
name, giving rise to a presumption of bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). But domain name registrants are not required
to perform a trademark search prior to registering a domain name. See Wicked Fashions, Inc. v. Webquest,
FA530334 (Nat. Arb. Forum Sept. 15, 2005). Constructive notice therefore rests upon the
fame of Complainant’s mark at the time the disputed domain name was registered.
Complainant has not submitted evidence sufficient to establish that Respondent
had constructive notice of its mark when it registered the disputed domain name
in May of 2002.
Respondent has advanced a good-faith explanation
for its use of the common term “capitol corridor” in connection with a
demonstrated pattern of government- and capitol-related domain name
registrations. The subsequent bad faith
use of the disputed domain name weighs against Respondent’s contention that it
registered the disputed domain name in good faith, but there is also evidence
that it used the domain name in good faith for at least four years immediately
after registration.
Although the question is not an easy one, the
Panel finds on the facts of this case that Respondent’s specific account of its
inspiration for the disputed domain name is plausible, and outweighs any inference
of bad faith registration based upon the improper uses that occurred four years
later.
In sum, Complainant has not persuasively
established in the record that Respondent’s registration (as opposed to its
later use) of the disputed domain name was in bad faith. Accordingly, Complainant has failed to
establish Policy ¶ 4(a)(iii).
Reverse
Domain Name Hijacking
The Panel does not find Complainant’s
arguments to have been unreasonable or improper. Accordingly the Panel declines to find reverse
domain name hijacking.
DECISION
Complainant having failed to establish at least one element, and in
fact two elements, required under the Policy, the Panel concludes that relief
shall be DENIED.
Michael Albert, Panelist
Dated: October 22, 2008
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