SkateboardDirectory.com v. 360 Boardsports
Claim Number: FA0608000771229
PARTIES
Complainant is SkateboardDirectory.com (“Complainant”), represented by Brett E. Lewis, of Lewis & Hand, LLP, 45 Main Street, Suite 818, Brooklyn, NY 11201, USA. Respondent is 360 Boardsports (“Respondent”), represented by Sarah Silbert, of Fulbright & Jaworski LLP, 555 South Flower St., 41st Floor, Los Angeles, CA 90071.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <360skatedirectory.com>
(hereinafter “the disputed domain name”).
It was registered with Go Daddy
Software, Inc. (“Go Daddy”) on March 26, 2006.
PANEL
The undersigned Panelists, David H Tatham, Hon. Tyrus R Atkinson and
David E Sorkin certify that they have acted independently and impartially and
to the best of their knowledge have no known conflict in serving as Panelists
in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(“the NAF”) electronically on August 4, 2006; the NAF received a hard copy of
the Complaint on August 7, 2006.
On August 7, 2006, Go Daddy confirmed by e-mail to the NAF that <360skatedirectory.com>,
the disputed domain name, was registered with it and that the Respondent
was the current registrant of the name.
Go Daddy has verified that Respondent is bound by its 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 18, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 7, 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@360skatedirectory.com by
e-mail.
A timely Response was received and determined to be complete on September
7, 2006.
A timely Additional Submission from Complainant was received by the NAF
on September 11, 2006 and was deemed to be complete pursuant to Supplemental
Rule 7.
A timely Additional Submission from Respondent was received by the NAF
on September 18, 2006 and was deemed to be complete pursuant to Supplemental
Rule 7.
On September 15, 2006, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the NAF
appointed David H Tatham, Hon. Tyrus R Atkinson and David E Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
In its Complaint, Complainant made the following statements, some of which were confirmed by a number of accompanying Exhibits or by a Declaration from its founder and publisher, Mr. Josh Rabinowitz.
Service Mark Information
Complainant contends that it is the
owner of the common law service marks SKATEBOARDDIRECTORY and
SKATEBOARDDIRECTORY.COM, which it referred to, for convenience’s sake, as the
“SKATEBOARDDIRECTORY Marks,” and it apparently claims such protection on its
website. Complainant contends that it
first used the SKATEBOARDDIRECTORY Marks in commerce in December 1999, and has
used them continuously thereafter in connection with unique news coverage of
skateboarding, snowboarding, clothing, and extreme sports business and culture,
a comprehensive, unique search engine covering over 1,000,000 web pages of skateboard
related and non-skateboard related topics, as well as links and website
descriptions of sites related to skateboards, skateboarders, snowboards,
snowboarders, surfing, surf camps, skateboard camps, wetsuits, electronics,
software, fine artists, musical artists, photographers, still cameras, video
cameras, clothing, protective equipment, sunglasses and goggles, MP3 players,
computers and operating systems, BMXing, windsurfing, video games and more. It
is contended that this search engine is much more than a directory and it is about much more than skateboards. Therefore, at a minimum, the use of the
component words comprising the mark is both arbitrary and suggestive,
respectively.
Complainant contends that it has developed into one of the leading
sources for news and information on skateboarding, snowboarding and other
extreme sports, in the industries that it covers. The SkateboardDirectory website routinely draws between 8,000 and
14,000 unique visitors per day, with from 30,000 to 100,000 page views. Complainant also sells space on its Website
to advertisers, and has generated nearly $200,000 in such revenue to date.
Complainant has also garnered
recognition in the press, and has been favorably reviewed by long-standing and
well-respected skateboarding websites. Among other accolades, Complainant was
mentioned in the "internet noteworthy" section of Concrete Wave
Magazine. Complainant is also mentioned
on the website of the International Association Of Skateboard Companies (The
“IASC,” of which Complainant is a Member and Service Provider), and in an IASC
email broadcast.
Complainant contends that, accordingly, it has attained common law trademark rights, through inherent and
acquired distinctiveness, and even niche fame, in the SKATEBOARDDIRECTORY Marks
through extensive use in
commerce in connection with the provision of news and information in the fields
of skateboarding, snowboarding and other extreme sports, as well as in the
provision of unique search engine services and the advertising of the goods and
services of others.
FACTUAL
AND LEGAL GROUNDS
The disputed domain name is a close variation on SKATEBOARDDIRECTORY. Its confusing similarity is exacerbated by the Respondent’s use of a series of confusingly similar domain names that were ultimately used to funnel web traffic to the disputed domain name, with links to Respondent’s website at <360skate.com>.
Respondent first registered the domain names <theskateboarddirectory.com> and <theskateboarddirectory.net>, which are identical to Complainant’s marks, save for the addition of the word “the,” preceding the words “SkateboardDirectory.” Respondent next registered the domain name <360skateboarddirectory.com>, which merely substitutes the generic “360” for the word “the”, and otherwise is identical to Complainant’s marks. Respondent subsequently began using <360skatedirectory.com>, which is an evolution of the above domain names, but nonetheless confusing, as the term “skate,” which is often synonymous with skateboarding, is used to refer to a Website categorizing skateboard information. The term “360” is also used to refer to a skateboarding maneuver. Panels have consistently held that, in similar cases, including where a term is abbreviated or shortened, confusing similarity exists, and Complainant referred to several Decisions in this regard.
[b.] No Legitimate Rights or
Interest
1. SkateboardDirectory has not licensed, transferred, assigned or otherwise authorized Respondent to use the SKATEBOARDDIRECTORY Marks, or any variations thereof, as domain names on the Internet.
2. Prior to the events at issue, Respondent was not known by, and did not do business under, any of the domain names at issue, but rather was an advertiser of skateboarding and related goods on Complainant’s website. As such, Respondent was fully on notice both of Complainant’s wide scale use and claimed trademark rights in the service mark SKATEBOARDDIRECTORY. Respondent, in fact, benefited financially from its commercial association with Complainant’s well-known mark, in the skateboarding community, before deciding to operate a competing Website at an infringing domain name.
3. Respondent has made no legitimate use of the disputed domain name in connection with a bona fide offering of goods or services. Respondent has operated a string of competing websites, using confusingly similar domain names and content, with many deliberate instances of trademark infringement. Prior UDRP panels have found that this type of competing use suggests a lack of legitimate rights and interests in a domain name.
4. Respondent had no trademark rights in or to Complainant’s Marks prior to registering the disputed domain name, and has not subsequently obtained any such rights in or to it. Indeed, Respondent’s registration of domain names that are nothing more than generic variations of the SKATEBOARDDIRECTORY Marks is a clear indication of Respondent’s lack of any legitimate rights or interests in or to them.
5. Respondent misappropriates Complainant’s goodwill to offer competing services. Simply put, it offers confusingly similar services under substantially the same names. This misappropriation suggests a lack of any legitimate interest in the Domain Name.
6. Respondent continued to use the disputed domain names in its infringing business, even after being placed on notice by Complainant that such use was in violation of its trademark rights. This is further evidence that Respondent lacks legitimate rights in the disputed domain name.
[c.]
Bad Faith
Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s websites by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s
websites or of a product or service on Respondent’s websites.
1.
As stated above, Respondent was an advertiser on
Complainant’s website, and fully aware of Complainant’s SKATEBOARDDIRECTORY
Marks. As an advertiser,
Respondent benefited from the fame and notoriety of Complainant’s trademarks,
which helped to generate sales of Respondent’s skateboarding-related goods over
a period of 18 months.
2.
Because Respondent was unhappy about the increase in
advertising prices, Respondent decided to start up a competing website under
the confusingly similar name of <theskateboarddirectory.com>, even as he
continued to advertise with Complainant, and benefit from such
advertising. Respondent registered the domain name
<theskateboarddirectory.com> on October 6, 2005, three days after
Complainant notified Respondent of an increase in its advertising rates. That, alone, indicates a vindictive intent,
sufficient for a finding of bad faith registration and use of each of
Respondent’s domain names, including the disputed domain name. The entire enterprise was polluted from its
inception.
3.
Once Complainant learned of what Respondent had done,
on March 24, 2006, it sent a cease and desist letter. Following the receipt of that letter, Respondent continued making
infringing use of the SKATEBOARDDIRECTORY Marks, first pointing the <skateboarddirectory.com> site to
<360skateboarddirectory.com>,
and later to <360skatedirectory.com>. Respondent never took any steps to dispel
the impression that his websites were not Complainant’s, and, to the contrary,
forwarded traffic and messaged its users in such a manner as to maximize
confusion. Respondent did so, while on notice of Complainant’s trademark
rights. This is evidence of
quintessential bad faith.
4.
In addition,
Respondent continued to register confusingly similar domain names, such as <360skatedirectory.com>,
and <360skateboarddirectory.com>, after the receipt of Complainant’s
first cease and desist letter.
Respondent’s knowing registration of additional confusingly similar
domain names – after acknowledging the validity of Complainant’s rights – is
further evidence of bad faith intent.
5. In this context, Respondent’s use of the metatag “skateboard directrory” [sic] in the source code of its website must be viewed as additional evidence of bad faith. Respondent deliberately targeted Complainant’s mark, hoping to lure Complainant’s users to its website. It is instructive in that regard that Complainant currently holds the top two spots in Google under the search term “skateboard directory.”
6. Upon information and belief, Respondent has, in bad faith, misappropriated the goodwill of Complainant’s mark in a scheme to divert Complainant’s customers to its confusingly similar websites, where it offers confusingly similar services to Complainant, and sells advertising. This type of wrongful use is routinely held to constitute bad faith.
7. For all of the foregoing reasons, including: (1) Respondent’s knowing and willful registrations of confusingly similar domain names to a common law trademark, with niche fame, (2) Respondent’s use of the Domain Name in connection with some of the same exact services offered by Complainant under its SKATEBOARDDIRECTORY Marks and <skateboarddirectory.com> domain name, to divert traffic to its websites, (3) Respondent’s sale of advertising on its confusingly similar websites, and (4) Respondent’s continued and increasingly confusing use of the Domain Name and metatags, as well as additional confusing domain names, after the receipt of multiple cease and desist letters, Respondent has acted in bad faith.
The
Response contained many references to previous UDRP and US federal court
Decisions, most of which have been omitted from this summary. In its Response, Respondent contended as
follows –
I.
Factual and Legal Grounds
Complainant
is trying to hijack a domain name, the primary, distinctive component of
which
is Respondent’s common-law trademark, 360SKATE. Since June 2004, Respondent has used its 360SKATE mark in its
domain name and corresponding website, which offers for sale skateboards and
skateboarding clothing and accessories.
A copy
of this site, dated June 19, 2006, was annexed to the Response. Also annexed were examples of full-page
advertisements for <360skate.com> that appeared in nationally-distributed
skateboarding magazines; examples of covers of magazines in which Respondent
advertises <360skate.com>, plus their media kits showing their
circulation and readership demographics; and records reflecting advertising
expenditures for <360skate.com> totaling $154,201.57.
Respondent
has also filed an application at the USPTO to register as a trademark a logo
that includes the phrase 360SKATE, and a copy of this application was annexed
to the Response. It was filed on July
29, 2005 and claimed August 1, 2004 as its date of first use.
Respondent
contends that its <360skate.com> site and the 360SKATE brand have become
very popular among skateboarding enthusiasts.
The 360SKATE user group on MySpace.com has 5,960 members, and an average
of nearly 3,000 individual users visit the <360skate.com> site daily,
viewing an average of nearly 40,000 pages on the site. Figures to prove this
viewing average were annexed to the Response.
Respondent
advertises its <360skate.com> site extensively on third-party websites
through Google and Yahoo advertisements, and in nationally-distributed
skateboarding magazines. Until recently Respondent advertised on Complainant’s
website. This is an Internet directory
providing links to third-party Websites on which Internet users can find
information about, and/or purchase goods and services pertaining to
skateboarding.
The
disputed domain name consists of Respondent’s 360SKATE mark and the generic,
descriptive word “directory.”
Respondent uses this domain name as the URL of an Internet directory
Website providing links to the <360skate.com> site and to third-party
websites providing news and information about skateboards and
skateboarding. The 360SKATE mark is
featured prominently on the site at the disputed domain name, and Respondent
has taken great pains to identify the site with the well-established
<360skate.com> site. Complainant
does not, and cannot, identify anything in the Policy, or the law of any
jurisdiction, prohibiting a trademark owner from using its own mark in a domain
name along with a generic descriptor of the services provided on the
corresponding website.
Respondent
contends that this matter is not within the scope of the Policy because
Complainant has no trademark rights in the words “skateboard directory.” The words “skateboard” and “directory” can
be found in any dictionary and they are, used alone or together, generic,
descriptive terms for the services offered by Complainant. The widespread use of Complainant’s alleged
mark and its component parts by third party websites demonstrates the ubiquity
and genericness of the phrase “skateboard directory.” Tellingly, even
Complainant makes generic use of “skateboard” and “directory” to describe the
content of the SkateboardDirectory.com Site.
This is compelling proof that Complainant’s alleged mark is generic, and
thus can never be a valid trademark.
In
light of Respondent’s rights in the 360SKATE mark, the clear and obvious
differences between the disputed domain name and Complainant’s alleged mark
SKATEBOARDDIRECTORY, and the generic nature of Complainant’s alleged mark, it
is highly unlikely that Complainant brought this action with a good-faith
belief that it is harmed in any way by Respondent’s use of the disputed domain
name, or that Respondent does not have a legitimate right in it.
Respondent
believes that, in fact, Complaint brought this UDRP action solely for the
purpose of harassing Respondent and preventing it from using its trademark on a
similar Website. Complainant’s bad faith is demonstrated by its use of Respondent’s trademark in its
title-tags (used by Internet
search engines to select, prioritize and describe search results) to misdirect
traffic from the
<360skate.com> site to Complainant’s site. Complainant has loaded
its meta-tags with the 360SKATE mark so that, when Internet users enter
“360SKATE” into an Internet browser, a misleading link (“360Skate.com on The
Skateboard Directory”) appears among the first 10 search results. When Internet users click on the link, they
are automatically redirected to a page on Complainant’s
<skateboarddirectory.com> site featuring links to unrelated skateboarding
sites offering goods and services directly competitive with those offered by
Respondent on the <360skate.com> site and a copy of this was annexed to
the Response.
Complainant’s
bad faith is further demonstrated by its misrepresentations in its Complaint, described
in detail below, regarding Respondent’s prior use of domain names incorporating
the generic words “skateboard” and “directory.” Any prior disagreement between the parties concerning these
long-deleted domain names was resolved informally. Complainant’s subsequent escalation of this matter to a UDRP
action is unsupported by the Policy. If
Complainant is allowed to prevail, it will own a domain name incorporating
Respondent’s mark 360SKATE in its entirety, adding only the descriptive,
generic word “directory.” Complainant
should not be allowed to use the UDRP process to obtain such an unjust result.
II.
Complainant Has No Trademark Rights In “Skateboard Directory.”
This
dispute is not within the scope of Paragraph 4(a) of the Policy because Complainant
has no
rights in its alleged mark SKATEBOARDDIRECTORY. Complainant has no state or federal trademark registration or
pending application for the phrase “SkateboardDirectory.” Complainant therefore does not benefit from
a presumption of validity for its claimed mark.
No
matter how much money and effort the user of a generic term may have poured
into promoting the sale of its merchandise or services, and what success it has
achieved in securing public identification, it cannot deprive competing manufacturers
or competitors providing the same or similar services of the product or service
of the right to call an article or service by its name.
A.
Complainant’s Alleged Mark Is Generic
A
generic term is “one that refers, or has to come to be understood as referring,
to the genus of which the particular product or service is a species.” Tahoe Luxury Properties, D2004-0151
(WIPO May 21, 2004) (citing Abercrombie & Fitch, 537 F.2d 4, 9 (2d
Cir. 1976)). In other words, if the
primary significance of a phrase or term is to describe the type of
product rather than to identify its producer, the term is generic: the
weakest possible form of an alleged trademark.
Complainant
cannot show that it has a valid mark because the phrase “SkateboardDirectory”
is generic. In determining whether a
phrase is generic, courts and Administrative Panels have considered: (1) the
dictionary meaning of the terms comprising the phrase; (2) evidence that the
phrase is understood as generic by the consuming public; and (3) evidence that
the plaintiff itself has used the phrase as a generic term.
According
to dictionary definitions annexed to the Response, a “Skateboard” is defined as
“a short board mounted on small wheels that is used for coasting and for
performing athletic stunts,” and “directory” is defined as “an alphabetical or
classified list (as of names and addresses).”
Thus, by definition, “skateboard directory” means a list of names and
addresses pertaining to skateboards or, as Complainant describes it on its home
page, a copy of which was annexed to the Complaint, a “search engine, information source and guide to . . . almost everything
about skateboards and skateboarding on the web.” The phrase “skateboard directory”
does nothing more than name a category of services comprised of Internet
directories providing links to sources of information about skateboards and
skateboarding, i.e., the exact category of services to which both
Respondent’s <360skatedirectory.com> site and Complainant’s
<skateboarddirectory.com> site belong. Even if Complainant’s alleged
mark is not generic for non-skateboarding-related services, Complainant can
claim no common-law rights with respect
to the services provided by the <360skatedirectory.com> site, i.e.,
a directory of links to information about
skateboards and related topics.
Thus,
the phrase “skateboard directory” is clearly generic. In the context of the Internet, the term
“directory” is used by countless Websites to describe a collection of
links to information about a particular topic.
One of Complainant’s Exhibits alone includes numerous examples of
the generic use of “directory” in combination with the word
“skateboard,” or its gerund “skateboarding,” by third-parties to describe
websites providing links to information about skateboards and
skateboarding e.g.
• “Skateboarding in the
Yahoo! Directory”
• “Google Directory – Sports
>Skateboarding”
• “Skateboarding Directory >
Skateboarding Websites . . . . Finally, the top
skateboarding trick tips, skateboarding pictures,
skateboard video clips …”
• “Switch Magazine Skateboarding Skate Directory .
. . . International
Skateboard Website especially for
and about skateboarding . . . .”
• “Skateboarding Extreme
Sports Directory”
• “Ultimate Skateboard Directory
. . . . Enter our free online skateboard
directory and message board for links and
tips on the best skateboard
products, companies and techniques . . . .”
• “Webriding : Skateboard
Directory . . . . Webriding is a directory offers a
selection of the best . . . Skateboard shops,
ramps, tricks . . . .”
Respondent
also provided numerous additional examples of his own culled from different
search engines of the generic use of the terms comprising Complainant’s alleged
mark by Internet search engines and third-party Websites.
The
term “directory” has been used generically by Administrative Panels to describe
websites providing a collection of links leading to information about a
particular topic, and the use of the term has been held to be generic and
descriptive of such sites so as to be incapable of adding distinguishing
material to a complainant’s mark. In
this context, Respondent referred to two UDRP Decisions: International
Organization for Standardization v. AQI, D2004-0666 (WIPO Dec. 6,
2004) (holding that Respondent’s use of the “generic and descriptive” term
“directory” in its domain name did not distinguish the domain name from
Complainant’s mark); Dermalogica, Inc. v. Pimpa Subsomboon, FA 448935
(Nat. Arb. Forum May 16, 2005) (ordering transfer of domain name consisting of
“the generic or descriptive phrase ‘directory’” appended to Complainant’s
registered mark “dermalogica” in a domain name used to “redirect Internet users
to a commercial website that features advertising and an Internet directory containing
links to skin care products”).
Respondent
pointed out that Complainant itself used the terms “skateboard” and “directory”
as generic terms to describe the contents of its website, and he pointed to
paragraphs 2-3 of the Declaration of Josh Rabinowitz, (making generic
use of “skateboard” and variations thereof); Complainant’s Exhibit D
(describing site as a “guide to . . . almost everything about skateboards and
skateboarding on the web”); Complainant’s Exhibit E, p.1 (quoting
<skateboardrampsandrails.com> describing SkateboardDirectory.com Site as
“The Internet’s foremost directory on everything related to skateboarding”);
Complainant’s Exhibit F, p. 4 (“They aim to be your directory and search
engine for skateboard sites on the internet.”).
B.
Complainant Has Not Shown That Its Alleged Mark Has Secondary Meaning
Under
United States law, a person can only acquire rights in a mark which is
descriptive by showing that the mark has acquired secondary meaning, i.e., that
consumers have come to identify the alleged mark with a specific source of
goods and services.
Even
if Complainant’s alleged mark is merely descriptive of its website, and not
generic, Complainant has failed to demonstrate that “SkateboardDirectory” has
acquired secondary meaning. The sum
total of Complainant’s evidence of secondary meaning consists of: (1) seven
quotes from Internet users; (2) one news article mentioning the
<skateboarddirectory.com> site; (3) an article about computer programming
written by Complainant’s principal, in an unidentified publication; (4) an
advertisement for <skateboarddirectory.com> and a short mention of the
site (using the generic descriptors “skateboarding” and “directory”) in the
International Association of Skateboard Companies’ July Newsletter; and (5)
data about the number of “hits” received by the <skateboarddirectory.com>
site, with no contextual information about how the site is ranked in comparison
to other websites.
The
foregoing is insufficient to prove that consumers who visit the <skateboarddirectory.com>
site distinguish it from any other skateboard directory Website on the
Internet, let alone that the site has achieved any measure of “notoriety” or
“niche fame” as Complainant maintains.
For
example, according to an annex to the Response, a printout from
<alexa.com>, in the last three months, the <amazon.com> website was
the 17th most visited site on the Internet, the third-party
<skateboarding.com> site was the 45,015th most visited site on the
Internet, and the <skateboarddirectory.com> website was the 124,850th
most visited site. Indeed, Complainant
has made no showing whatsoever to rule out the likelihood that any traffic to
its site can be attributed to consumers using the generic search terms
“skateboard” and “directory” when seeking a compilation of links to sites about
skateboards.
III.
The Disputed Domain Name is Neither Identical Nor Confusingly Similar to
Complainant’s Alleged Mark.
Complainant
has not shown that <360skatedirectory.com> is confusingly similar
to the
alleged
mark SKATEBOARDDIRECTORY. Complainant’s
argument consists mainly of an irrelevant recitation of previous domain names
registered by Respondent using the generic terms “skateboard” and “directory.” Respondent deleted these domain names in or
about June 2006. Complainant attempts
to argue that the deleted domain names were confusingly similar to
Complainant’s alleged mark, and that the confusing similarity of the deleted
domain names—which are not at issue in this matter—can somehow be imputed to
the disputed domain name. Complainant
cites no authority for its novel argument that “the taint of confusion passed from” the deleted domain names to
the disputed domain name. Moreover,
Complainant has not shown that anyone was confused by any of Respondent’s actions,
or that that any iteration of Respondent’s site at
<360skatedirectory.com> ever looked like Complainant’s site. Indeed, Complainant’s own Exhibits show that
even early versions of the <360skatedirectory.com> site prominently
featured the 360SKATE logo, and identified itself as “the 360 Skate Skateboard
Directory.”
Complainant’s
attempt to avoid a direct comparison between the disputed domain name and
“SKATEBOARDDIRECTORY” must fail.
Respondent’s domain name is not, as Complainant suggests, an abbreviation
of its alleged mark appended to “a
generic internet-descriptive prefix” as it is put in the Complaint. The primary, distinctive component of
Respondent’s domain name is Respondent’s valid, common-law mark, 360SKATE, to
which Respondent has appended the generic, internet-descriptive suffix,
“directory.”
IV.
Respondent has a Legitimate Interest in the Disputed Domain Name
Respondent
can show that it has a legitimate interest in a disputed domain name by
demonstrating
that it has been commonly known by the domain name in accordance with paragraph
4(c)(ii) of the Policy. Complainant
alleges that “[p]rior to the events at
issue, Respondent was not known by, and did not do business under, any of the
domain names at issue.” Complainant
is incorrect. First, there is only one
domain name at issue in this matter, <360skatedirectory.com>. Second, Respondent has shown that it began
using its 360SKATE trademark in connection with its skateboard-related business
as early as June 2004. Thus, Respondent
has been known by the name 360SKATE for over two years. Third, Respondent’s prior use of the
360SKATE mark and the <360skate.com> domain name constitutes “demonstrable preparations to use . . . the
[360SkateDirectory.com] domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services”
(emphasis added) before any notice to Respondent of the dispute in accordance
with paragraph 4(c)(i) of the Policy.
Finally, Respondent’s use of “skate” (which Complainant admits can be
used as a synonym for “skateboarding,”), and the generic term “directory,” to
describe the content of its skateboard directory Website demonstrates a
legitimate interest in the disputed domain name <360skatedirectory.com>.
V.
Respondent Registered and Used the <360skatedirectory.com> Domain Name In
Good Faith
Complainant
has not shown that Respondent’s use of its mark, in conjunction with the
generic
descriptor “directory,” constitutes a bad-faith use of the disputed domain
name, and Administrative Panels have held that such use cannot be a bad-faith
use.
Complainant’s
allegations that Respondent attempted to misdirect Internet users to the
<360skatedirectory.com>
site do not hold water. Respondent’s
use of its 360SKATE mark in its domain name renders the domain name incapable
of misdirecting Internet traffic from Complainant’s site. Nor does the use of the generic terms
“skateboard” and “directory” in the
360SkateDirectory.com Site’s meta-tags demonstrate bad faith. It would be virtually impossible for any
Internet directory of links to skateboarding websites to exist without the
inclusion of these words in its meta-tags.
Complainant’s argument is tantamount to a claim to have the exclusive
right to use the common words “skateboard” and “directory,” and the exclusive
right to operate an Internet directory to skateboarding websites. Complainant’s theory that Respondent engaged
in an elaborate scheme to gradually cause consumers to believe that Complainant’s
skateboard directory website had morphed into Respondent’s skateboard directory
website strains logic and credulity. In
fact, the evidence reflects nothing more than the prior registration by
Respondent’s principal of domain names using generic, descriptive words he
believed in good faith to be available for use by anyone, and his subsequent
efforts to placate Complainant and to distinguish his website from others by
incorporating the distinctive 360SKATE mark in the <360skatedirectory.com>
domain name, and increasing the site’s emphasis on the 360SKATE brand. As noted above, each and every example
provided by Complainant of various iterations of Respondent’s <360skatedirectory.com>
site prominently features the 360SKATE logo.
VI.
The Complaint constitutes an Abuse of the Administrative Proceeding
Complainant
has attempted to characterize Respondent’s registration of the disputed domain
name as an act of retaliation against Complainant for increasing its
advertising rates. To the contrary,
Complainant has demonstrated a bad-faith intent to harass and intimidate
Respondent. Complainant brought the
instant UDRP action for the bad-faith purpose of preventing Respondent from
reflecting its 360SKATE mark in a corresponding domain name. See Policy 4(b)(ii) and
4(b)(iii). Moreover, Complainant has
intentionally attempted to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with Respondent’s mark as to the
sponsorship, affiliation, or endorsement of Complainant’s website. Complainant uses Respondent’s 360SKATE
trademark in the title-tags of its website at <skateboardirectory.com> so
that Internet users who search for Respondent’s site using Respondent’s
360SKATE mark as a search term are led to believe that they can find
“<360skate.com> on The Skateboard Directory.” Internet users who take the bait are automatically redirected to
a page on Complainant’s <skateboarddirectory.com> site featuring links to
unrelated skateboarding sites offering goods and services directly competitive
with those offered by Respondent on its <360skate.com> site.
Complainant’s
bad faith is further demonstrated by its misrepresentations in its Complaint
regarding Respondent’s prior use of domain names. For example, Complainant incorrectly alleges that Respondent
operated an active website at <360skateboarddirectory.com>. This is untrue; Respondent registered the
domain name, but never used it, and deleted it soon after being contacted by
Complainant.
Complainant
cannot have a good-faith belief that consumers are confused by the
<360skatedirectory.com>
domain name, or that Respondent has no legitimate interest it.
Respondent
advertised its <360skate.com> site on Complainant’s Website for a year
and a half prior to the instant dispute.
Thus, Complainant is well aware that Respondent was known by the name
360SKATE prior to this dispute.
Unsurprisingly, Complainant never raised any objection to Respondent’s
use of its 360SKATE mark during the time that Respondent was one of its
advertising clients. Complainant’s
belated assertion that such use, in conjunction with the widely-used term
“directory,” violates the UDRP is specious at best. Complainant’s actions merit a finding that it brought its
Complaint in a bad faith attempt at reverse domain name hijacking, and that the
Complaint constitutes an abuse of this administrative proceeding.
Both parties filed timely Additional Submissions and that from
Respondent included a Declaration from its Operating Manager, Mr. Mattias
Macdowell. As is so often the case,
these Additional Submissions repeated much of the content of the Complaint or
the Response. However the more salient
points from both are summarized below.
·
Respondent has failed to refute a number of facts
stated by Complainant and so they should
be accepted as true.
·
Respondent has
failed to contest any of Complainant’s testimony by affidavit, preferring to
rely instead on its counsel to testify and his self-serving, undocumented and
conclusory statements are entitled to no weight. Respondent’s remaining allegations are either misleading, based
on false premises or misapply the relevant law. As such, Respondent has failed in each of its burdens under the
Policy.
·
Respondent
lacks any rights, whatsoever, in its purported 360SKATE mark, much less any
subsequent rights in <360skatedirectory.com>. Respondent’s
application before the USPTO, for 360SKATE, was rejected on February 23, 2006
because of a likelihood of confusion with three other pre-existing federal
trademark registrations. Furthermore,
the six-month deadline for responding to this rejection has passed. This rejection was before it registered the
disputed domain name. Nevertheless,
Respondent has continued using <360skate.com> and <360skatedirectory.com>
in its business, despite a ruling from the USPTO that such use is confusingly
similar with pre-existing registered trademarks. Respondent has therefore attempted to mislead this Panel with
respect to its own alleged trademark rights as well as, apparently, no regard
for the USPTO or the trademark rights of others.
·
Respondent
neglects to dispute or otherwise account for the fact that Complainant uses and
has consistently over nearly the past seven years used its SKATEBOARDDIRECTORY
mark to refer to far more than just skateboards, and to function as far more
than just a directory. A lengthy list
of goods and services for which the SKATEBOARDDIRECTORY mark is used was listed
in the Complaint. Given this extensive
use, the term SkateboardDirectory connotes not only a directory of
skateboarding, but a lifestyle involving topics of interest to action sport
enthusiasts and the businesses that cater to them. Complainant has common law trademark rights in its mark and
merely ignoring the facts and saying otherwise does not make it so.
·
The
predominant portion of the disputed domain name <360skatedirectory.com>
is almost identical to Complainant’s SKATEBOARDDIRECTORY.COM mark. The addition of the term “360” makes no
difference. The term “360” is generic
or, at best, descriptive for skateboarding maneuvers that involve rotating 360
degrees, e.g., a 360 ollie or a 360 flip.
“360” is also a component of three other trademark registrations for
skateboard related goods and services. The addition of the generic or
descriptive skateboarding term “360” to <360skatedirectory.com>
does not distinguish it from the arbitrarily used SKATEBOARDDIRECTORY.
·
Respondent’s
registration of the Domain Name was an act of retribution, for whatever
reason. He registered a group of
confusingly similar domain names, which he then used in direct competition
against a competitor, in a calculated attempt to confuse Internet users. The fact that Respondent deleted three of
the Domain Names, well after embarking on its scheme, does nothing to inoculate
Respondent against its own bad faith.
·
Respondent’s
bad faith registration and use of <theskateboarddirectory.com>,
<theskateboarddirectory.net>, and <360skateboarddirectory.com>
condemn him as a cybersquatter. He is
conveniently and conspicuously silent on the matter, other than offering the
curious defense that acts that took place in June 2006 are too far in the
distant past to be considered relevant.
Respondent registered
<theskateboarddirectory.com> just three days after Complainant
raised its advertising rates and Respondent complained about the increase; and
it registered both <360skateboarddirectory.com> and <360skatedirectory.com>
after Complainant’s initial demand letter, and after the USPTO’s rejection of
his 360SKATE mark. This is a textbook
example of registration and use in bad faith.
·
Complainant genuinely believes that Respondent
forwarded users from <theskateboarddirectory.com> to
<360skateboarddirectory.com> so he is not acting in bad faith.
Complainant has a consistent policy, whereby look-ups for links removed
pursuant to Complainant’s Services Agreement are forwarded to a page stating
that the link has been removed. The
reason that this is done has to do with the way that Google indexes Web pages –
even after a link is removed, Google still lists the link as available in its
search results. Complainant adopted its
current Policy to avoid returning error pages and dead links to users. Complainant followed this Policy with over
two-thousand other links prior to following the exact same process with Respondent
in this case. Pursuant to that Policy,
the name of the link appears in the title of the page dedicated to that
specific dead-link – not in the metatags.
This is not a trademark use and therefore there could be no actionable
confusion, initial interest or otherwise.
Complainant has consistently acted in good faith, and despite
Respondent’s exaggerations to the contrary, this fair use of Respondent’s mark
is not an example of bad faith.
·
Complainant’s
Additional Submission fails to refute any of Respondent’s evidence that third
parties, and Complainant itself, make frequent generic use of “skateboard” and
“directory” to describe services such as Complainant’s Internet skateboard
directory. Complainant relies on its
use of its alleged mark in connection with goods and services that are
unrelated to skateboarding but whether Complainant has a valid mark with
respect to non-skateboard-related goods and services is irrelevant for the
purposes of this dispute. Complainant
cannot prevent others from using the words “skateboard” and “directory” to
describe a directory of information relating to skateboards.
·
Complainant
has not shown that the <360skatedirectory.com> domain name is
confusingly similar to Complainant’s alleged mark, or that Respondent lacks a
legitimate interest in the domain name.
Respondent has shown that its common-law rights in its 360SKATE mark
predate its registration of the <360skatedirectory.com> domain
name, and that the mark is the primary, distinctive component of the domain
name.
·
Complainant
appears to argue that it should prevail on the “bad faith” element of the ICANN
Rules alone. Even if this were
possible, Complainant has not shown that Respondent acted in bad faith.
·
Complainant
argues that the phrase “Skateboard Directory” is not generic
as
applied to a skateboard directory, but that the term ‘360’ is generic or, at
best descriptive for skateboarding maneuvers that involve rotating 360 degrees,
e.g., a 360 ollie or a 360 flip.” That
“360” is not generic for a skateboard trick is demonstrated by
Complainant’s need to explain the trick by adding “ollie” or “flip” to
“360.” However Complainant does not
assert that “360” is generic for a website selling skateboard-related goods and
services, or offering a directory of links to skateboarding websites. Complainant’s argument, does not defeat
Respondent’s rights in its 360SKATE mark, or render the disputed domain name
confusingly similar to Complainant’s alleged mark. Complainant’s argument that the phrase “skatedirectory” is the
“predominant portion of Respondent’s Domain name” must fail. At a minimum, the “360” portion of the
domain name predominates precisely because it is not generic, and because it
appears at the beginning of the <360skatedirectory.com> domain
name.
·
Complainant
argues that, because Respondent does not have a federal
registration
in its 360SKATE mark, Respondent does not have trademark rights in it. If this were the case, then Complainant’s
claim to have trademark rights in the unregistered phrase “skateboard
directory” must fail on the same ground.
·
Complainant
makes several spurious, unfounded accusations concerning Respondents’ trademark
application for the 360SKATE logo. In
2005, Respondent filed an application with the USPTO to register a logo
incorporating its 360SKATE mark. The
application trademark examiner issued an office action opining that the logo
was confusingly similar to two registered marks using the terms “360” (or
“three sixty”) and/or “skate” but rather than take the time and expense to
respond to the office action, Respondent decided to put off, for the time
being, his plans to register the 360SKATE logo as a trademark.
·
Complainant
alleges that, because Respondent’s trademark application did not proceed to
registration, Respondent’s continued use of its 360SKATE mark infringes third
parties’ trademark rights. Complainant
is incorrect. The office action
received by Respondent was not a final judgment or ruling that Respondent does
not have valid trademark rights in its 360SKATE mark, or that Respondent has
infringed the trademark rights of any third party.
·
Respondent
has not claimed to have anything other than common-law rights in its mark by
virtue of its use of the mark in connection with the sale of skateboard-related
goods and services since 2004. It is
not, as Complainant suggests, “significant” that Respondent received the office
action “before it registered the disputed domain name.” The office action did not in any way
diminish Respondent’s common-law rights in its 360SKATE mark. As the Response makes clear, Respondent has
used the 360SKATE mark in connection with the sale of skateboard-related goods
and services since 2004, in the <360skate.com> domain name and on the
corresponding website, and in advertising promoting the site. Thus, Respondent clearly has a legitimate
interest in the <360skatedirectory.com> domain name.
·
With
the Additional Submission, Respondent submitted a Declaration from Mattias
MacDowell, the founder and Operating Manager of Respondent. It contended that
this Declaration establishes that:
• Respondent did not intend to misappropriate any goodwill
in
Complainant’s alleged mark when Respondent
registered its domain names.
• Respondent did not intend to
“harm its competitor . . . . in retaliation” for
any act of Complainant or for any “personal
reason.”
• Respondent did not intend to confuse Internet users or to
misdirect Internet
traffic.
·
Complainant
first contacted Respondent with its concerns about the domain names <theskateboarddirectory.com>
and <theskateboarddirectory.net> on March 24, 2006. Two
days later, on March 26, 2006, Respondent registered and began using a
new domain name incorporating its 360SKATE mark, and altered the content of the
360Skate Directory Site to feature prominently the 360SKATE mark and logo and
to remove the term “theskateboarddirectory” from the site. Respondent notified Complainant of the
changes on March 30, 2006. Respondent
next heard from Complainant over two months later, on June 2, 2006, when
Complainant objected to the pointing of the <theskateboarddirectory.com>
and <theskateboarddirectory.net> domain names to the 360Skate Directory
Site. Four days later, on
June 6, 2006, Respondent deleted the domain names
<theskateboarddirectory.com> and <theskateboarddirectory.net>. That Respondent did not capitulate to
Complainant’s demand that Respondent transfer <360skatedirectory.com>
to Complainant does not support an inference of bad faith because the domain
name contains Respondent’s own intellectual property, the 360SKATE mark.
·
Complainant’s
accusations of Respondent’s bad faith are directly contradicted by the evidence
of Respondent’s continuing, good-faith efforts to distinguish its skateboard
directory website from Complainant’s site.
Complainant’s insistence that Respondent’s domain names containing its
360SKATE mark be transferred or deleted is not founded on any valid legal
grounds. Rather, the Complaint is part
of Complainant’s pattern of harassing conduct directed at Respondent. Complainant has even gone so far as to use
Respondent’s mark in the source code of Complainant’s site to misdirect
Internet traffic away from Respondent’s site—an act that itself is actionable
as trademark infringement under United States federal trademark law.
FINDINGS
1.
Complainant is
a source for news and information about skateboarding, snowboarding and other
extreme sports which it publishes on its website. Although it is called “SkateboardDirectory,” it alleges that its
website is more than just a directory and more than just about
skateboarding. It claims common law
trademark rights in the name and phrase “SKATEBOARDDIRECTORY.”
2.
Respondent,
which was formed in April 2004, has operated since June 2004 a website at
<360Skate.com> where skateboarders can purchase online skateboards,
skateboarding accessories, and skateboarding gear. This site prominently features a logo, which includes the phrase
“360Skate”.
3.
In August 2004,
Respondent started to advertise on Complainant’s website, paying monthly. However in late 2005 the traffic from this
source began to decline and Complainant increased its rates – again – this time
from $550 per month to $1,200. After
some discussion, Respondent and Complainant settled on a rate of $800 per
month. However the traffic still did not increase, and Respondent cancelled his
subscription.
4.
In October
2005, Respondent implemented a plan to introduce a skateboarding directory to
his site and for this purpose registered the domain names <the
skateboarddirectory.com> and <the skateboarddirectory.net>. However, following an objection from
Complainant these names were cancelled in June 2006, but he did not cancel the
disputed domain name <360skatedirectory.com>.
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.
Both parties filed an Additional Submission which, with their accompanying Exhibits made for very bulky documents.
The Forum’s Supplemental Rule 7 sets forth procedure for the submission
of additional statements and documents, but it does not confer upon parties any
right to have such submissions considered by a panel. In Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (NAF April
10, 2006) it was held:
[T]he controlling provision is
Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy
(the “Rules”), under which discretion to request such supplementation rests
with the Panel. In general, a Panel
should consider additional submissions only in exceptional circumstances, such
as where they reflect newly discovered evidence not reasonably available to the
submitting party at the time of its original submission or rebut arguments by
the opposing party that the submitting party could not reasonably have
anticipated.
The Panel has reviewed the parties’ Additional Submissions, and they
are summarized above, but the Panel feels that they add very little of
substance to the Complaint or the Response.
2. Reverse Domain Name Hijacking
Respondent has accused Complainant of reverse domain name hijacking. This is defined in the UDRP Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
On the face of it there could be some substance in this claim in that if the dispute were to end in Complainant being granted the disputed domain name, then he would own a part of what Respondent claims to be his valuable property, namely the name 360SKATE which he claims to have used, and acquired rights in. However it was Respondent who registered two domain names that very closely resembled the Complainant’s name and, if they had not been voluntarily cancelled, it is hard to see how any Panel would not have found that Respondent had acted in bad faith in registering them and awarded them to Complainant in any dispute.
There are therefore rights on both sides, but in general, the Panel does not believe that Complainant has acted in bad faith in this instance.
Before addressing the question of whether the
disputed domain name <360skatedirectory.com>is confusingly similar
to the name SKATEBOARDDIRECTORY, it is necessary to address the question of
whether Complainant has any rights in the latter name. Respondent has argued that it is purely
descriptive, that it is a generic term, and that in any case Complainant has
adduced very little evidence of it being used in a trademark sense.
The charge is frequently made in UDRP
disputes that the rights on which a Complainant relies are nothing more than a
descriptive term consisting of generic words, and two of the present Panelists
were working together recently in a case in which this charge was made, so we
are familiar with the problem. See Diners Club Int’l Ltd. v. MForce Communc’ns, FA 708908 (Nat. Arb. Forum July 27,
2006).
The ‘generic’ question was extensively
reviewed in Sony Corporation v. Times
Vision, Ltd, FA 95686 (Nat.
Arb. Forum Mar. 9, 2001) and in it, the panel found that its facts were more
like the factual situations presented in cases such as, for example, Robus v. Suard, D2000-0941
(WIPO December 6, 2000); Welltec ApS v. Gardner, D2000-1145 (WIPO
October 31, 2000); Mariof Corporation Oy v. Untra Fog AB, D2000-0521
(WIPO August 24, 2000); Interactive Television Corp. v. Noname.com, D2000-0521 (WIPO July 26, 2000).
However in all of these cases, the complainant’s trademark was registered. In the present case, SKATEBOARDDIRECTORY is not a registered trademark and indeed there is no evidence that Complainant has ever tried to register it. Furthermore, there does seem to have been very little use of the term SKATEBOARDDIRECTORY as a trademark. In the opinion of the Panel the name is highly descriptive of Complainant’s activities. Complainant has argued that he is involved in activities other than skateboarding, but although there are links on his website to ‘Snowboarding’ and ‘Surfing,’ the dominant message of the site is that it relates to ‘Skateboards’ and ‘Skateboarding.’ For example, the opening line reads: “Welcome to SkateboardDirectory.com – The Skateboard Directory,” while a few lines below that is this quote from another (unconnected) website: “The internet’s foremost directory on everything related to skateboarding.” The words ‘skateboard’ and ‘directory’ are common English words, as Respondent was quick to point out, but there is no reason why a descriptive term cannot be registered as a trademark – provided sufficient evidence of acquired distinctiveness or secondary meaning can be produced – and there are many examples of this.
In the Complaint it is alleged that
service mark protection for SKATEBOARDDIRECTORY and SKATEBOARDDIRECTORY.COM is
claimed on Complainant’s website.
However in truth, the letters SM appear once only, in a banner at the top of
the page, after the words “SkateboardDirectory.com.” They do not appear again, neither after the three other instances
where the words “SkateboardDirectory.com” appear, and not at all after the two
appearances of the words “SkateboardDirectory.”
In the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” which was published last year, the consensus view of what needs to be shown for a complainant to successfully assert common-law or unregistered trademark rights, is as follows:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
In the Response, Respondent has listed the five examples provided by Complainant as evidence that ‘SkateboardDirectory’ has acquired a secondary meaning. These are:
·
seven
quotes from Internet users;
·
one
news article mentioning the <skateboarddirectory.com> site;
·
an
article about computer programming written by Complainant’s principal, in an
unidentified publication;
·
an
advertisement for <skateboarddirectory.com> and a short mention of the
site (using the generic descriptors “skateboarding” and “directory”) in the
International Association of Skateboard Companies’ July Newsletter; and
·
data
about the number of “hits” received by the <skateboarddirectory.com>
site, with no contextual information about how the site is ranked in comparison
to other websites.
Respondent also drew attention to a number of third parties
unconnected with Complainant making use of the term ‘Skateboard Directory’ in a
generic sense.
In its Additional Submission, Complainant neither
challenges the above list nor provides any additional evidence. He only repeats what was said in the
Complaint, namely that his website refers to far more than just skateboards and
is far more than just a directory. As
the Panel has noted above, the opening page of the website actually says the opposite.
The Panel is not satisfied that the evidence supplied by
Complainant, either physically as listed above, or as stated in a Declaration,
is sufficient to establish that Complainant’s use of ‘SkateboardDirectory’ has
even reached the threshold of acquiring the necessary degree of distinctiveness
to establish the phrase exclusively in the public’s mind with Complainant, let
alone passed it. In Molecular Nutrition, Inc. v. Network News
& Publications, FA 156725 (Nat. Arb. Forum June 24, 2003) it was found that the complainant
had failed to establish common law rights in its mark because the mere
assertion of such rights were insufficient without accompanying evidence to
demonstrate that the public identified the complainant’s mark exclusively or
primarily with Complainant’s products.
Also, in Advanced Relational
Tech., Inc. v. Domain Deluxe, D2003-0567 (WIPO October 13, 2003), it
was found that the Complainant had failed to establish rights in the HOME
DESIGNER mark because it was “certainly
descriptive and probably generic” and the Complainant had not shown that
the public identified its goods with the mark.
Therefore this Complaint falls at the first hurdle of
paragraph 4(a). Furthermore, even had
Complainant met its burden of showing acquired distinctiveness, it is likely
that the Complaint would still fall at the second hurdle, namely confusing
similarity.
In view of this finding the Panel has not considered the questions of Rights or Legitimate Interests or Bad Faith.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be dismissed.
___________________________________________________
David H Tatham (Chairman)
Hon. Tyrus R Atkinson David
E Sorkin
(Panelist) (Panelist)
Dated: September 29, 2006
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