DECISION

Cumbers & Toltec Scenic Railroad Commission v RAVIN aka Paul Edwards

File Number: FA0108000099599

PARTIES

The Complainant is Cumbres & Toltec Scenic Railroad Commission, Antonito, CO, USA (“Complainant”) represented by Warren Smalley and John Craft, Rio Grande Railway Preservation Corp., Chama, NM, USA.  The originally named Respondent is RAVIN aka Paul Edwards, Chama, NM, USA (“Respondent”).  Later joined Respondent is Cumbres & Toltec Scenic Railroad Corporation, Chama, NM, USA (“Respondent #2”) represented by Meghan R. Dimond, Keleher & McLeod, P.A.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is cumbresandtoltec.com (“the domain name”) registered with Intercosmos Media Group, Inc. (“Intercosmos”), a domain name service provider.

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.

Min S. Xu, Esquire as Panelist

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) dated August 24, 2001 and was received by the Forum on August 30, 2001.

On August 30, 2001, the Forum sent a letter to the Complainant regarding deficiency in the Complaint and requested the Complainant to revise the Complaint to correctly identify the Respondent, i.e., referring to Paul Edwards as “aka”, “dba”, “obo”, etc.  The Forum received the revision thereafter in which Paul Edward is referred to as “aka” of RAVIN.

On September 7, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 27, 2001 by which Respondent could file a Response to the Complaint, was received by Respondent.

On September 7, 2001, Intercosmos sent a letter to the Forum confirming that the domain name is registered with Intercosmos and that the Respondent is the current registrant of the domain name.  Intercosmos also verified that Intercosmos is a registrar of Internet second-level domains within the top-level domains, .com, .net and .org.  Respondent is bound by the Intercosmos registration agreements and, therefore, bound to agree to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).  Respondent #2 voluntarily named itself as the espondent during the course of this proceeding, and therefore, Respondent #2 is bound by the Intercosmos registration agreements and, therefore, bound to agree to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

Respondent #2 requested that Respondent be allowed additional time to respond to the Complaint and submitted information in support of this request.  Complainant opposed Respondent #2’s request and submitted information in support of this opposition.  The Forum found that extenuating circumstances exist warranting an extension, and on September 27, 2001, the Forum granted the Respondent #2 an extension until October 8, 2001 to submit a response to the Complaint.

Respondent #2’s response to the Complaint dated October 8, 2001 was received by the Forum on October 15, 2001.  This response was not timely according to the October 8, 2001 deadline.

A timely additional submission was received from the Complainant on October 15, 2001.

On October 17, 2001, the Forum received additional submission from the Respondent #2.  This submission was not timely.

Complainant and Respondent #2 chose to have this dispute heard before a single-member administrative panel.  The Forum appointed Min S. Xu, Esquire as Panelist.

The Panel has reviewed and considered all the submissions to the Forum from Complainant and Respondent #2 for rendering the decision.

 

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s domain name is confusingly similar to trademarks of Complainant; that Respondent does not have any rights or legitimate interests with respect to the domain name; and that the domain name was registered and is being used by Respondent in bad faith.

B. Respondent

Respondent does not dispute the contentions addressed in the Complainant.

C. Respondent #2

Respondent #2 disputes the Complainant’s identification of Respondent and contends that the owner of the domain name is Respondent #2, and that the respondent for this dispute is Respondent #2.  Also, Respondent #2 contends that Complainant lacks rights in a trademark or service mark which is confusingly similar to Respondent’s domain name; that Complainant fails to show Respondent lacks rights or legitimate interests in respect of the domain name, and that Complainant fails to show that Respondent’s domain name was both registered in and used in bad faith.

FINDINGS

Respondent, not Respondent #2, is the registrant of the domain name according to the record from the domain name service provider, Intercosmos.

The States of Colorado and New Mexico (“the States”) owns Cumbres & Toltec Scenic Railroad (“Railroad”).  The Complainant is the administrator for the States.  The railroad has been operated between Chama, New Mexico and Antonito, Colorado, since 1970.

Complainant has adopted and continuously used since that adoption, the mark “Cumbres & Toltec” as a trademark to identify its property, e.g., the railroad, since 1970.  The States leased to four corporations over the years to operate the railroad for the States: Scenic Railways, Inc. from 1972 to 1981; Kyle Railways, Inc. from 1982 to 1996; Respondent #2 from 1996 to 1999; and Complainant’s representative, the current lessee from Complainant, since March 2000.  The lease agreements included real property and personal property related to the railroad business.

During the lease period of Respondent #2, the President of Respondent #2 registered the domain name on January 28, 1999 with Complainant’s permission and support, to “promote the great vacation possibilities found on the Cumbres And Toltec Scenic Railroad and surrounding communities.”

In October 1999, Complainant terminated the lease with Respondent #2.  Respondent #2, without Complainant’s permission, asked the domain name provider to shut down the website and later asked Respondent to take over the domain name.  Respondent and his partner paid the domain name provider Respondent #2’s outstanding bill for maintaining the website.  Respondent renewed the domain name registration on March 3, 2001 and changed the registrant to “Cumbres And Toltec Railroad”.  On July 5, 2001, Respondent changed the registrant of the domain name to Respondent’s name.

Respondent’s web site prominently features the name “Cumbres And Toltec”, both in words and in designs containing the words.

Respondent and his partner offered to sell the site to Complainant.

Respondent began soliciting to sell tickets to ride the railroad at the domain name’s website in March 2001.  On March 26, 2001, Complainant’s representative notified Respondent that Respondent was not an authorized agent for selling tickets to ride the railroad and demanded that Respondent cease and desist offering tickets for sale.  The use of the domain name and its website bearing the mark “Cumbres And Toltec” continued.  On August 19, 2001, Complainant’s representative informed Respondent that the website under the domain name contains violations of trademarks claimed under the Right To Use provisions of United States Patent and Trademark law, and for which Complainant has applied to register.  The use of the domain name and its website bearing the mark “Cumbres And Toltec” continued.

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 other the following 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.

 

Identification of Respondent

Complainant and Respondent #2 disputed the identification of the respondent and the facts as to whether Respondent #2 had transferred the ownership of the domain name to Respondent.  The Panel hereby relies on the official record provided by the domain name provider.  From the record, Respondent is the registrant of the domain name.  Respondent is also listed as administrative contact, technical contact, and billing contact.  Respondent #2 is not listed or even mentioned as a company affiliated with Respondent.

Accordingly, this Panel finds that the domain name is registered by Respondent, not Respondent #2.

Respondent #2 has an interest in the outcome of the dispute and voluntarily subjected itself to this Panel by submitting a response to the Complaint, this Panel hereby considers Respondent #2 as a joint respondent and reviewed the submissions from Respondent #2.

Identical and/or Confusingly Similar

There is no dispute as to whether the domain name is confusingly similar to the mark “Cumbres And Toltec”.

It is also not disputed that Complainant has used the name “Cumbres & Toltec” to identify its property since 1970.  However, there is a dispute as to whether Complainant has trademark rights under the mark “Cumbres And Toltec”.

Respondent contends that the mark “Cumbres & Toltec” is descriptive, not distinctive, “as it is not specific to or synonymous with the railroad but rather derives from two geographical landmarks through which the Railroad travels – Cumbres Pass and Toltec Gorge.”  The U.S. Patent and Trademark Office, in Complainant’s mark “Cumbres & Toltec Scenic Railroad Commission”, considered the phrase “Scenic Railroad” descriptive and did not consider the phrase “Cumbres & Toltec” descriptive.  Further, the mark has been used for over 30 years in connection with the railroad.  There are a number of affidavits from residents of the area testified to the distinctive nature of the wording “Cumbres & Toltec”.  Accordingly, Complainant has common law trademark rights under the mark “Cumbres & Toltec”, and the mark has acquired the secondary meaning and is distinctive in nature in connection with the railroad.

Respondent #2 contends the mark is not distinctive because “the public is far from clear who the source of the product is as between the Commission and any of the four operators of the Railroad to date.”  There is no evidence of any confusion from the public as to the source.

Accordingly, this Panel finds that Complainant has trademark rights under the mark “Cumbres & Toltec”, and that the domain name is confusingly similar to the Complainant’s common law trademark “Cumbres & Toltec”.

Rights or Legitimate Interests

Evidence has shown that Respondent is the registrant of the domain name, and that Respondent is not in the railroad business.

Respondent #2 contends that Complainant fails to show Respondent #2 lacks rights or legitimate interests in respect of the domain name.

Evidence has shown that Respondent #2 had rights in operating the railroad business from 1996-1999 under a lease agreement with Complainant, and during which time, Complainant permitted Respondent #2 to register the domain name.  However, after the lease agreement was terminated in October 1999, Respondent #2 does not have rights or legitimate interests in operating the railroad business.  Any further use of the domain name is not authorized by Complainant, i.e., illegitimate.

Accordingly, this Panel finds that neither Respondent nor Respondent #2 has rights or legitimate interests in respect of the domain name.

Registration and Use in Bad Faith

Evidence has shown that Respondent was aware that Complainant owned the railroad and that Complainant terminated the lease with Respondent #2, prior to renewing/registering the domain name.  Despite this, Respondent renewed the domain name and offered to sell/donate the site to the Complainant.  In March 2001, Respondent began soliciting on the website to sell tickets to ride the railroad at the domain name’s website.  On March 26, 2001, Complainant’s representative notified Respondent that Respondent was not an authorized agent for selling tickets to ride the railroad and demanded that Respondent cease and desist offering tickets for sale.  Respondent ignored the notification and continued the use of the domain name and its website bearing the mark “Cumbres And Toltec”.  On July 5, 2001, Respondent changed the registrant from “Cumbres And Toltec Railroad” to Respondent’s name.  On August 19, 2001, Complainant’s representative informed Respondent that the website under the domain name contains violations of trademarks claimed under the Right To Use provisions of United States Patent and Trademark law, and for which Complainant has applied to register.  The use of the domain name and its website bearing the mark “Cumbres And Toltec” did not stop.  The website prominently features the name “Cumbres And Toltec”, both in words and in designs containing the words.  Accordingly, Respondent acted in bad faith in registering/renewing and continuously using the domain name.

Evidence has shown that Respondent #2 asked for Complainant’s permission prior to registering the domain name.  Respondent #2 was aware that Complainant owned the real property and personal property (including trademark rights and domain name rights) in connection with the railroad under a lease agreement with Complainant.  Respondent #2 acted in bad faith in asking the domain name provider to shut down the website and later in asking Respondent to take over the domain name.

Respondent #2 contends that Complainant fails to prove that Respondent #2 acted in bad faith when Respondent #2 registered the domain name, i.e., prior to the termination of the lease agreement with Complainant.  Evidence has shown that Respondent #2 registered the domain name under a name unclear as to who owned the domain name and later claimed the ownership of the domain name in bad faith.

Accordingly, this Panel finds that the domain name has been registered and is being used in bad faith by Respondent and/or Respondent #2.

In summary, this Panel finds that the domain name is confusingly similar to Complainant’s “Cumbres & Toltec” trademark, that neither Respondent nor Respondent #2 has rights or legitimate interests in the domain name, and that Respondent and Respondent #2 have registered and/or used the domain name in bad faith.

DECISION

It is the decision of this Panel that the domain name at issue, cumbresandtoltec.com, be transferred from Respondent and/or Respondent #2 to Complainant.

 

 

Min S. Xu, Esq., Panelist

Dated: October 30, 2001