Dolphin Quest, Inc. v. William DeHart
Claim Number: FA0608000767092
PARTIES
Complainant is Dolphin Quest, Inc. (“Complainant”), represented by Scott J. Major, of Miller, White, Zelano & Branigan, P.C., 2200 Clarendon Boulevard, Suite 1400, Arlington, VA 22201. Respondent is William DeHart (“Respondent”), 2931 Riedling Drive, Louisville, KY 40206, represented by Stewart E. Bland of Borowitz & Goldsmit, 401 West Main Street, Louisville, KT 40202..
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dolphinquest.com>,
registered with Dotster.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
Linda M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 1, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 2, 2006.
On August 2, 2006, Dotster confirmed by e-mail to the National
Arbitration Forum that the <dolphinquest.com>
domain name is registered with Dotster and that the Respondent is the current
registrant of the name. Dotster has
verified that Respondent is bound by the Dotster registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On August 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 23, 2006, 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@dolphinquest.com by e-mail.
A timely Response was received and determined to be complete on August
21, 2006. Additional submissions from
Complainant and Respondent were received and considered by the Panel.
On August 24, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Linda M. Byrne as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant argues that <dolphinquest.com > is identical to a trademark used by Complainant, DOLPHIN QUEST.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the <dolphinquest.com > domain name in view of its failure to use, or to make demonstrable preparations to use, the <dolphinquest.com> domain name in connection with a bona fide offering of goods or services.
Complainant contends that
Respondent’s registration and use of the <dolphinquest.com>
domain name is in bad faith. For
example, Complainant argues that the bad faith is evidenced by Respondent’s
links on the <dolphinquest.com>
website to competitors of Complainant.
B. Respondent
Respondent asserts that it owns rights or legitimate business interests
in the <dolphinquest.com>
domain name, because Respondent has made preparations to use the domain name in
connection with a career counseling business.
In an affidavit, Respondent’s representative refers to four Word
documents that were created over the years that purportedly relate to
Respondent’s business.
Respondent maintains that it did not act in bad faith because
Respondent was not aware of Complainant’s business, and because Respondent was
not aware that a third party, Register.com, was using the <dolphinquest.com> domain name in an unauthorized
manner.
C. Additional Submissions
Complainant’s Additional Submission (received on August 24, 2006) noted that, “[F]or at least a period of several months (and probably much longer than that), the Domain Name was parked at a page that featured pop-ups and links to sites for businesses providing dolphin interaction programs that compete with those offered by Complainant. Respondent claims that he was unaware of such usage. Assuming arguendo that this is the case, such lack of oversight by Respondent conflicts with his claim that the Domain Name forms an integral part of his ‘business plans.’ The fact that the Domain Name has been registered for over six years without meaningful use is further evidence that there have been no demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.” In the Additional Submission, the Complainant also argued that there has been no reverse domain name hijacking.
Respondent’s Additional Submission
(received August 28, 2006) states that Respondent has not engaged in
cybersquatting because this situation does not involve an abusive domain name
registration. The Respondent also notes
that the date of registration of the domain name (March 9, 2000) is after the
registration of Complainant’s two federal registrations for DOLPHIN QUEST. The Respondent also asserts that it has
“four (4) generations of business plans dating back to 2001, authenticated by
the sworn and notarized Affidavit of a highly certified, senior professional in
the field of career counseling.”
Respondent also notes that it took immediate action when it became aware
of “Register.Com’s standard practice of parking Domain Name sites.” Finally, Respondent argues that
Complainant’s “continued misrepresentations” constitute reverse domain name
hijacking.
FINDINGS
Complainant owns a U.S. trademark registration for DOLPHIN QUEST (Reg. No. 3,061,757, dated February 28, 2006) in association with interactive programs in which participants interact with dolphins in a marine environment, and in association with educational curricula concerning the conservation and preservation of dolphins and the marine ecosystem. Complainant also owns a U.S. trademark registration for DOLPHIN QUEST & Design (Reg. No. 2,600,953, dated July 30, 2002) for interactive dolphin programs and clothing items.
The Complainant organization has been in operation since the 1980s, and is world-renowned for its programs that allow guests to encounter dolphins in a marine environment. Complainant has used the DOLPHIN QUEST trademark since 1985. Complainant owns the domain name <dolphinquest.org>.
Respondent registered the <dolphinquest.com> domain name on
March 9, 2000.
In 2000, Complainant’s consultant sent an
e-mail to Respondent to ask whether the <dolphinquest.com>
domain name was available, and Respondent responded, “Currently we have plans
to use the name.” The Respondent also
stated that the domain name was originally owned by an organization in Costa
Rica that failed to renew it. On
August 2, 2006, after receiving the Complaint, Respondent sent an e-mail to
Complainant stating that Respondent intends to use the domain name in good
faith, and that Respondent had learned from the Complainant that “the domain
name is currently being used, ‘pirated’ if you will, apparently by Register.com
without our knowledge or consent. We
are in the process of rectifying this situation.” That same day, Respondent sent an e-mail to Register.com to
change the registrar for <dolphinquest.com>
to Dotster.
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.
In view of Complainant’s U.S. registrations for the DOLPHIN QUEST mark, this Panel finds that Complainant has demonstrated rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
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 the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
This Panel finds that the <dolphinquest.com> domain name is
confusingly similar to Complainant’s DOLPHIN QUEST mark. This Panel therefore
concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts
that Respondent is using the <dolphinquest.com> domain name to
redirect Internet users to Respondent’s website which features links to
third-party websites, some of which offer dolphin interaction goods and
services in competition with Complainant, as well as pop-up advertising and a
generic Internet search engine.
Complainant asserts that this is not a bona fide offering of
goods or services as contemplated by Policy ¶ 4(c)(i), because no specific
goods or services are offered at the website.
In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002), the panel found that there was no bona fide
offering of goods or services where the disputed domain name resolved to a website
composed of links to third-party websites, some of which competed with the
complainant. Complainant further asserts that Respondent’s website at the <dolphinquest.com>
domain name is not being put to a legitimate noncommercial or fair use as
contemplated by Policy ¶ 4(c)(iii), because Respondent is presumably receiving
pay-per-click referral fees from the links and advertisements at Respondent’s
website. In Wells
Fargo & Co. v. Lin Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003), the panel found that the respondent’s
use of a disputed domain name to host a website with pop-up advertisements and
links to third-party websites was not a legitimate noncommercial or fair use
because the respondent presumably received financial compensation when Internet
users were redirected to Respondent’s website.
Respondent states that it has not received revenue resulting from third-party links or pop-up advertisements, and Respondent asserts that its registrar, not Respondent itself, was responsible for the contents of the <dolphinquest.com> website at the time the Complaint was filed. Respondent also asserts that it is the co-founder of “Explore Career Quest, Inc.,” and it owns four domain names for its business operations, including the disputed domain name. Respondent claims it has extensive business plans from as early as 2001 outlining Respondent’s legitimate plans for the use of the <dolphinquest.com> domain name in connection with a bona fide offering of goods and services. Respondent argues that its use of the disputed domain name in connection with career counseling and testing will be distinct from Complainant’s use of Complainant’s genuine domain names in connection with dolphins in a marine environment.
This Panel finds Respondent’s arguments to be unconvincing. The Respondent, as owner of the disputed
domain name, should be able to effectively assert control over the contents of
the <dolphinquest.com>
website. It is unclear why Respondent’s
“Career Quest” activities would require use of the domain name <dolphinquest.com>. The Respondent has also failed to establish
demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and
services. In an affidavit, Respondent’s
representative refers to four Word documents that were created over the years
that purportedly relate to Respondent’s business. The nature and contents of these documents were not
disclosed. The Respondent has submitted
no business plan, invoices, advertising, trade name registrations, etc. to
evidence that it has made demonstrable preparations to use the domain name
since it was registered over six years ago.
This Panel concludes that Respondent lacks rights in the disputed domain name pursuant to Policy ¶ 4(a)(ii). because Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant
asserts that Respondent’s bad faith is demonstrated by the fact that the <dolphinquest.com> website
contained links to third parties, some of whom are competitors of
Complainant. In AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000), the panel found bad faith registration and use where the
respondent took advantage of Internet users’ confusion and profited from links
to third-party websites of the complainant’s competitors. Thus, it
appears that the Respondent, or Respondent’s representative, was using the
disputed domain name to attract Internet users to Respondent’s website and to
capitalize financially on Internet users’ confusion which is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant
claims that it has lost business due to Respondent’s <dolphinquest.com>
domain name. Specifically,
Complainant asserts that Internet users seeking Complainant's genuine website
are instead redirected to Respondent’s website filled with links to third-party
websites, some of which offer goods and services in competition with
Complainant. Internet users may then
follow those links to third-party websites and do business with Complainant’s
competitors instead of with Complainant.
This Panel concludes that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) because Respondent is using the <dolphinquest.com> domain name to disrupt Complainant’s business. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Respondent charged the Complainant with reverse domain name hijacking in this case. In order to prove the existence of reverse domain name hijacking, Respondent must demonstrate that the Complainant brought the claim in bad faith despite the knowledge that the Respondent has an unassailable right or legitimate interest in the disputed domain name, or that the Respondent lacks the requisite bad faith registration and use of the disputed domain name. Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001). The panel in Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002), also emphasized the necessity that the respondent prove that the complainant had knowledge of the respondent’s rights in the disputed domain name to establish reverse domain name hijacking. The Verkaik panel stated that, “to establish reverse domain name hijacking, respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the complainant in the face of such knowledge.”
This Panel concludes that there is
no concrete evidence that Complainant had knowledge of Respondent’s rights in
the disputed domain name. This Panel
therefore concludes that the Complainant did not engage in reverse domain name
hijacking.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dolphinquest.com>
domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: September 7, 2006
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