National Arbitration Forum

 

DECISION

 

Gander Mountain Company v. Global Outdoor Adventures

Claim Number: FA0505000474825

 

PARTIES

Complainant is Gander Mountain Company (“Complainant”), represented by Travis L. Bachman of Dorsey & Whitney LLP, 50 South Sixth Street, Suite 1500, Minneapolis, MN 55402-1498.  Respondent is Global Outdoor Adventures (“Respondent”), 210 Marine Drive, Amherst, NY 14228-1969.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <weliveoutdoors.com>, registered with Tucows Inc.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2005.

 

On May 12, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <weliveoutdoors.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 May 16, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 2005 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@weliveoutdoors.com by e-mail.

 

A timely Response was received and determined to be complete on June 7, 2005.

 

On June 13, 2005, Complainant, in accordance with The Forum’s Supplemental Rule #7, timely filed an Additional Submission which was considered along with the other materials received by the Arbitrator.

 

On June 9, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following assertions:

 

            1.  Respondent’s <weliveoutdoors.com> domain name is identical to

                 Complainant’s WE LIVE OUTDOORS mark.

 

            2.  Respondent does not have any rights or legitimate interests in the

                 <weliveoutdoors.com> domain name.

 

            3.  Respondent registered and used the <weliveoutdoors.com> domain

                 name in bad faith.

 

B.     Respondent does not deny that the domain name is identical to Complainant’s   

      mark.  Rather, Respondent asserts:  

 

1.      That it acted in good faith in registering and using the domain name

             <weliveoutdoors.com> when Respondent’s search found it was available.

 

2.      In addition, Respondent claims that Complainant is not entitled to the disputed domain name because Complainant’s trademark registrations do not explicitly identify internet usage as a purpose.

 

3.      Further, Respondent asserts that Complainant has engaged in reverse

                  domain name hijacking.

 

 

C. Additional Submissions

            Complainant re-asserts its initial contentions and denies that Complainant

            has engaged in reverse domain name hijacking.

 

FINDINGS

Complainant, Gander Mountain Company, was founded in Wilmot, Wisconsin in 1960 as a catalog operation.  Today, Complainant is a nationwide specialty retailer in the field of outdoor sporting goods and equipment with stores in more than a dozen states.

 

Complainant has used the WE LIVE OUTDOORS service mark in connection with its retail store services since April 6, 2003.  It is the owner of a U.S. service mark registration covering “retail sporting goods store featuring outdoor sportsman’s supplies, hunting, fishing and camping equipment, clothing and apparel, and motorized and non-motorized vehicles, namely boats, all-terrain vehicles, i.e. ATV’s and snowmobiles.”

Complainant also owns a U.S. service mark registration for the WE LIVE OUTDOORS mark in connection with “on going television programs featuring outdoor themes” and has used the mark commercially to identify these programs since at least as early as January 3, 2004.  In addition, on December 31, 2003, Complainant obtained domain name registrations for <weliveoutdoors.net>, <weliveoutdoors.info>, <weliveoutdoors.org>, <weliveoutdoors.biz>, and <weliveoutdoors.us>, all of which direct Internet users to Complainant’s main website located at <gandermountain.com>.

 

Respondent, Global Outdoor Adventures, is a subscription-based Internet community whose focus is “Bringing Outdoors Enthusiasts Together” by providing articles, photo galleries, news, events, electronic newsletters and discussion boards related to outdoors activities.  Respondent provides directories of clubs, organizations, retailers and other service establishments whose products and/or services are of interest and benefit to community members and to the general public.  Respondent offers limited web-space to non-profit clubs, small service providers, retailers and related organizations (charter captains, horse boarding and riding stables, bed & breakfasts, etc.).  Respondent also offers advertising and sponsorship opportunities to any who wish to help promote interest in the outdoors as a lifestyle.

 

Respondent’s initial web/Internet presence began as “Doctari’s Fishing Forum” in January 2000, providing information and insight into western New York fishing and club news, accessible from the URL http://sites.netscape.net/pitchcaster, in February 2000.  In November 2001, “Doctari’s Fishing Forum” was moved to a new URL within AOL from Netscape.  In July 2002, Respondent’s principals began discussing additional outdoor sports for the Internet community.  The search for domain names for this new Internet community commenced in December 2002.  In June 2003, Respondent purchased several domain names including <weloveoutdoors.com> and <globaloutdoors.com>.  After learning that it was available, on December 4, 2003, Respondent added <weliveoutdoors.com> to its registered domain name holdings because of concern over the word “love” in its other domain name.

 

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 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;

(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.

 

Identical or Confusingly Similar  

 

Complainant asserts that it has established rights in the WE LIVE OUTDOORS mark through registration with the United States Patent and Trademark Office (“USPTO”) Reg. Nos. 2,938,134 filed March 22, 2004, registered April 5, 2005 and 2,944,535 filed April 28, 2003, registered April 26, 2005.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that a respondent has the burden of refuting this assumption).

 

Once a mark has been registered, the date in which the registrant’s rights in the mark are effective revert back to the date the application was filed with the USPTO.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).  Respondent did not search to determine if the WE LIVE OUTDOORS mark was pending or had been registered.  Had it done so, Respondent would have learned that the application had been filed on April 28, 2003.

 

In addition, Complainant avers that it has common law rights in its mark as Complainant has used the WE LIVE OUTDOORS mark in commerce since at least as early as April 2003 for goods and services for the retail sporting goods market featuring outdoor sportsman’s supplies, equipment, apparel and vehicles.  Moreover, Complainant promotes and advertises its WE LIVE OUTDOORS mark on its website located at <gandermountain.com>.  Complainant may establish common law rights in the mark through its use in commerce.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that the complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of the complainant. Thus the complainant established that it ‘has rights’ under the ICANN Policy.).

 

Complainant alleges that the <weliveoutdoors.com> domain name is identical to its WE LIVE OUTDOORS mark because the only difference is the deletion of the spaces between the words and the addition of the generic top-level domain (“gTLD”) “.com.”  These slight changes are without legal significance for the purpose of determining whether the disputed domain name is identical to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case regarding Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

 

Complainant states that before Complainant contacted Respondent about the disputed domain name, the domain name did not resolve to any active website.  Complainant asserts that Respondent is now using the disputed domain name in connection with a website that offers subscription content in the nature of outdoor-oriented activities, newsletters and events planning.  Moreover, Respondent’s domain name offers Internet hosting services for outdoor-related organizations and features links to third party service providers and retailers that offer products and services in competition with Complainant.  Respondent is not using the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or in connection with a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that a respondent’s appropriation of the complainant’s mark to market products that compete with the complainant’s goods does not constitute a bona fide offering of goods and services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that a respondent had no rights or legitimate interests in the disputed domain name where it used the complainant’s mark, without authorization, to attract Internet users to its business, which competed with the complainant); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to the complainant’s mark and that the respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

 

Respondent is not commonly known by the <weliveoutdoors.com> domain name.  Furthermore, the domain name’s WHOIS information states that Respondent is known as “Global Outdoor Adventures.”  Respondent has failed to demonstrate rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb.10, 2003) (finding that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).   

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges that the <weliveoutdoors.com> domain name is confusingly similar to Complainant’s WE LIVE OUTDOORS mark.  Moreover, Complainant contends that Respondent commercially benefits when Internet users searching under Complainant’s mark are diverted to Respondent’s website.  Respondent is capitalizing on the confusing similarity of its domain name to benefit from the goodwill that Complainant has established in its mark.  Thus,  Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where a respondent registered and used an infringing domain name to attract users to a website sponsored by the respondent).

 

Complainant argues that Respondent’s registration of the disputed domain name, which is identical to Complainant’s mark, suggests that Respondent knew of Complainant’s rights in the WE LIVE OUTDOORS mark.  Additionally, Complainant asserts that Complainant’s trademark registration for the WE LIVE OUTDOORS mark on the Principal Register of the USPTO gave Respondent constructive notice of the mark.  Moreover, the fact that Respondent uses the domain name to promote interest in the outdoors, which competes with Complainant’s business, evidences Respondent’s knowledge of Complainant’s rights.  Apparently, Respondent chose the disputed domain name based on the qualities of Complainant’s mark, which evidences bad faith registration and use under Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the complainant’s mark when it registered the subject domain name”).

 

Additionally, Complainant avers that Respondent uses the <weliveoutdoors.com> domain name to direct Internet users to Respondent’s competing commercial website.  Accordingly, it may be said, Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under Policy ¶ 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and a respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant’s business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding a respondent acted in bad faith by attracting Internet users to a website that competed with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant’s marks suggests that a respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant’s business).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

REVERSE DOMAIN NAME HIJACKING

 

Respondent requested the Panel to find that Complainant has engaged in reverse domain name hijacking.  To establish reverse domain name hijacking, Respondent must show knowledge on the part of Complainant of Respondent’s rights or legitimate interests in the disputed domain name and evidence of harassment or similar conduct by Complainant in the face of such knowledge.   See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001).  Neither circumstance has been shown here.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <weliveoutdoors.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

Louis E. Condon, Panelist
Dated: June 23, 2005