Waterkeepers of Northern California and
Waterkeeper Alliance v. LRJ Management Corp. c/o Larry Hoffman
Claim Number: FA0502000420598
PARTIES
Complainant
is Waterkeepers of Northern California and Waterkeeper Alliance (“Complainant”), represented by Mark Lerner, of Satterlee, Stephens,
Burke and Burke LLP, 230
Park Avenue, New York, NY 10169. Respondent is LRJ Management Corp. c/o Larry Hoffman (“Respondent”),
represented by James Hulme, of Kelly & Hulme, Esqs. P.C., 323 Mill Road, Westhampton Beach, NY 11978.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <peconicbaykeeper.com> and <peconicbaykeeper.net>, registered with Register.com.
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.
Judge
Karl V. Fink (ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 15, 2005.
On
February 17, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain names <peconicbaykeeper.com> and <peconicbaykeeper.net> are registered with Register.com and
that the Respondent is the current registrant of the name. Register.com has
verified that Respondent is bound by the Register.com 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
February 22, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 14, 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@peconicbaykeeper.com and postmaster@peconicbaykeeper.net
by e-mail.
On
March 14, 2005, Respondent submitted a request for additional time to submit a
response pursuant to National Arbitration Forum Supplemental Rule #6. An Extension
of Time to Respond was issued, setting a new deadline of April 4, 2005 by which
Respondent could file a response to the Complaint. A timely Response was received and determined to be complete on April
4, 2005.
On April 12, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Judge Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Waterkeepers
of Northern California (“WNC”) and its licensee and trademark administrator,
Waterkeeper Alliance (“Waterkeeper”) base their complaint on the registered
trademark BAYKEEPER (U.S. Reg. No. 1984898) used in connection with association
services, namely, promoting public awareness of the environmental threats to
the San Francisco Bay area, and reporting violations to regulatory agencies,
and their common law rights in the mark PECONIC BAYKEEPER. A United States federal registration for
BAYKEEPER issued on July 9, 1996.
WNC is
the owner of the registered mark BAYKEEPER (U.S. Reg. No. 1984898) used in
connection with bumper stickers, hats, and association services; namely,
promoting public awareness of the environmental threats to the San Francisco
Bay area, and reporting violations to regulatory agencies.
Waterkeeper
is a grassroots alliance of more than 125 local organizations. It is dedicated to preserving and protecting
waterways from pollution. Waterkeeper
supports and empowers member organizations to protect communities, ecosystems
and water quality; promotes the Waterkeeper model for watershed protection
worldwide; and advocates for issues common to Waterkeeper programs. Membership and active participation in the
alliance are requirements of becoming, and remaining, a licensed Waterkeeper
program.
Waterkeeper
is the owner of and oversees the administration of trademark licenses for the
KEEPER family of marks, including RIVERKEEPER, WATERKEEPER, LAKEKEEPER, and
COASTKEEPER, among others. In some
circumstances, such as in the case of BAYKEEPER, Waterkeeper oversees a mark
for a member organization who is the owner of record. Waterkeeper requires users to obtain a trademark license and meet
standards of performance to ensure the KEEPER family of marks is used in a
manner consistent with Waterkeeper’s mission.
Peconic
Baykeeper is a non-profit organization that works to protect and sustain the
South Shore and Peconic Bays of Long Island. Peconic Baykeeper is one of
sixteen (16) licensees of the BAYKEEPER mark and has used the mark PECONIC BAYKEEPER pursuant to a license since at least
as early as 1997.
Since
1999, Peconic Baykeeper has worked for the cessation of Suffolk County’s vector
control activities (except in times of actual health crises), which sprays
pesticides over large portions of the county and maintains 700 miles of wetland
ditches.
Among
Peconic Baykeeper’s other projects is the opposition of a proposed large-scale
marina development at Dockers Restaurant in East Quogue, which, upon
information and belief, is owned by Respondent, LRJ Management Corp. c/o Larry
Hoffman.
As
a result of the longstanding use of the marks, members of the public recognize
BAYKEEPER and PECONIC BAYKEEPER as indicating educational and environmental
advocacy services originating with Complainants and their licensees.
Respondent’s
domain names peconicbaykeeper.com and peconicbaykeeper.net are identical to the
trademark PECONIC BAYKEEPER and are merely the registered mark BAYKEEPER with
the addition of the geographically descriptive term “peconic.”
Respondent
is the owner of a restaurant, Dockers, which has proposed a large-scale marina
development, the construction of which Peconic Baykeeper opposed. Respondent is using the Domains for a
website intended to lead consumers to believe it is the official site for
Peconic Baykeeper.
WNC,
by its predecessor, began using the BAYKEEPER mark in April, 1990. For 15 years, WNC has provided environmental
advocacy and educational services aimed at protecting the nation’s waters.
A
side-by-side comparison readily demonstrates the Domains are identical to the
mark PECONIC BAYKEEPER and are merely the registered mark BAYKEEPER with the
addition of the geographically descriptive term “Peconic.”
Respondent
should be considered as having no legitimate rights in the Domains, as it is
not the trade name or company name of the Respondent. Respondent has no common law rights in the BAYKEEPER or PECONIC
BAYKEEPER marks, nor a pending application or existing registration for the
marks. Respondent has not operated
business under the name Baykeeper, nor has it been commonly known in the trade
or community at large by the name Baykeeper.
When
Complainants first became aware of the Domains, the sites posted at the Domains
bore a striking similarity to the overall look and feel of Peconic Baykeeper’s
official peconicbaykeeper.org website.
The overall format and color scheme of the Respondent’s site was the
same as Peconic Baykeeper’s site. The
overall look and feel of the sites was clearly aimed at confusing members of
the public into thinking they had reached the official website run by Peconic
Baykeeper.
Respondent
did not respond to a December 22, 2004 letter from counsel seeking transfer of
the Domains, or to a follow-up letter dated January 5, 2005. Following the December 22, 2004 letter, the
Respondent made slight modifications to the websites to eliminate the copyright
infringement and confusingly similar look and feel. The sites are still aimed at misdirecting members of the public
seeking Peconic Baykeeper’s site and convincing members of the public not to
visit the official site or support the activities of Peconic Baykeeper since it
is opposed to the Respondent’s marina project.
Respondent’s
website features the question “What is Peconic Baykeeper?” The site portrays the president of Peconic
Baykeeper as a paid lobbyist and claims that he is trying to influence citizens
under the guise of being a public official.
Respondent claims that Peconic Baykeeper is abusing the public’s
endearment and trust. Thus, Respondent
is clearly using the Domains only as a means of directing users to its website
and away from Peconic Baykeeper’s website.
Accordingly, Respondent’s use of the mark is in bad faith.
Respondent
was clearly aware of the Complainants’ marks when it registered the
Domains. If it was not aware, it became
aware as of December 22, 2004. In
addition to hosting a site that was registered solely to confuse members of the
public and divert traffic from Peconic Baykeeper’s website, Respondent has
failed to offer any evidence to support its claimed basis for using the
BAYKEEPER or PECONIC BAYKEEPER marks.
B.
Respondent
Since
Complainant does not own the trademark “Peconic Baykeeper” it can not complain about Respondent’s registration of
the domain names. The correct analysis
and comparison is between Complainant’s trademark, “Baykeeper” and Respondent’s
registered domain names, <peconicbaykeeper.com> and <peconicbaykeeper.net>.
The
Complainant herein is not the owner of peconicbaykeeper.org. This domain name is used and owned by the
Peconic Baykeeper, Inc., which entity was formed in June, 2001 with the stated
mission of sustaining and protecting the South Shore and Peconic Bay of Long
Island. On or about March, 2002 Peconic Baykeeper, Inc. with a license to use
“Bay Keeper” from complainant registered the domain
<peconicbaykeeper.org>, and only that name, and established a web site
with that URL.
Complainant’s
trademark consists of the two generic words “Bay” and “keeper” and when used
together implies, if not actually states, the function of the “Baykeeper,” that
is to keep the bays environmentally safe and protected. While perhaps not generic, the trademark is
clearly and merely descriptive of a function.
As a result, the trademark, as a matter of basic trademark law, is to be
given a narrow scope of exclusivity.
A
trademark only has meaning in the context of the goods or services provided in
association therein. As indicated above, Complainant’s trademark is
specifically limited to bumper stickers and hats with the associated services
of promoting public awareness of the environmental threats to the San Francisco
Bay (emphasis supplied). Conversely,
<peconicbaykeeper.com> and <peconicbaykeeper.net>
relate to activities affecting the Peconic Bay, a body of water found on
eastern Long Island, NY and a substantial distance geographically from the
service area of the Complainant.
The
domain names in dispute are not identically to the trademark of the Complaint
and there is no confusing similarity between them.
Respondent,
after a full and thorough search of the records, registered the names <peconicbaykeeper.net>
and <peconicbaykeeper.com>, which registrations were accepted by
the registrar without objection. There
was no evidence of Peconic Baykeeper’s or Complainant’s interest in these
domains until Respondent chose to register them.
Peconic
Baykeeper, Inc. is operated by and through its Executive Director, Kevin
McAllister, who has held himself out to the general public and in the
newspapers as the “Baykeeper,” implying by doing so that he is a public
official or connected with a governmental agency.
Respondent’s
registration of its domains and the website linked thereto, was not an attempt
to mislead the public but provide the public with “the whole story” about the
Baykeeper and his private, non-governmental projects that Respondent is
personally against. Respondent’s
website contains a link to <peconicbaykeeper.org> so that users can get
both sides of the story.
Respondent
also has the right to educate the interested public in the resources and
existing management of the Peconic Bays and this information is readily
available through the resources of the internet.
Respondent
has not acquired the domain names for the purpose of selling, renting, or
otherwise transferring the domain name registration to the Complainant.
The
use of its domain names by Respondent in no way interferes with Peconic
Baykeeper conducting its business under its domain name using the .org
extension, an extension quite appropriate for a non-profit organization. In fact, the Respondent has been responsive
to the Complainant’s request to create a visually distinctive web page as a
method of clearly differentiating.
Respondent
has not intentionally or otherwise attempted, for commercial gain, to attract
internet users to Respondent’s web site, by creating a likelihood of confusion
with the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s web site or location or of a product or service on
Respondent’s web site or location.
FINDINGS
For the reasons set forth below, the
Panel finds that Complainant has not proved it is entitled to have the domain
names transferred.
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.
The
Panel finds that the <peconicbaykeeper.com> and <peconicbaykeeper.net> domain names are
comprised of the generic or descriptive term “baykeeper” and the primarily
geographically descriptive term “peconic” and that Complainant cannot maintain
exclusive rights in the mark reflected in the domain names. Since Complainant
has failed to show that its BAYKEEPER mark is inherently distinctive or has
acquired secondary meaning, the Panel finds that Complainant has not
established rights in a mark to which the disputed domain names are confusingly
similar under Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (“[G]enericness, if
established, will defeat a claim of trademark rights, even in a mark which is
the subject of an incontestable registration.”); see also Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that
“seminar” and “success” are generic terms to which Complainant cannot maintain
exclusive rights).
No
precedent under the Policy has been cited that establishes that a non-exclusive
licensee’s use of a mark that adds a term to a licensed mark causes the
licensor to gain common law rights to the augmented mark. Thus, the Panel finds
that Complainant has failed to establish common law rights in the PECONIC
BAYKEEPER mark. See CMG Worldwide, Inc. v. Humphrey Bogart Club, FA
144631 (Nat. Arb. Forum May 27, 2003) (dismissing the Complaint despite the
complainant’s authorization to pursue the Complaint on behalf of the exclusive
owner of the trademark rights HUMPHREY BOGART, as the complainant did not own
the rights to the mark); see also Interactive
Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (“Serious
questions as to whether the complainant has any proprietary rights require us
to reject the complainant’s claim. The ultimate decision as to whether the
complainant does or does not have proprietary rights is better left to a court
or trademark office tribunal.”); see also Discover New England v. The Avanti
Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute
outside the scope of the Policy because the dispute centered on the
interpretation of contractual language and whether or not a breach occurred).
The
Panel finds that the disputed domain names are not confusingly similar to a
mark in which Complainant has rights under Policy ¶ 4(a)(i). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th
Cir. 2002) (“Similarity of marks or lack thereof are context-specific concepts.
In the Internet context, consumers are aware that domain names for different
Web sites are quite often similar, because of the need for language economy,
and that very small differences matter.”); see also Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding
that prior UDRP precedent
did not support a finding of common law rights in a mark in lieu of any
supporting evidence, statements or proof (e.g., business sales figures,
revenues, advertising expenditures, or number of consumers served)); see
also Interactive Television Corp. v.
Noname.com, D2000-0358 (WIPO June 26, 2000) (“Serious questions as to
whether the complainant has any proprietary rights require us to reject the
complainant’s claim. The ultimate decision as to whether the complainant does
or does not have proprietary rights is better left to a court or trademark
office tribunal.”); see also Backstreet Boys Prod., Inc. v. Zuccarini, D2000-1619 (WIPO Mar. 27, 2001) (dismissing the
complaint because the complainant did not own the trademark).
Complainant has not proven this element.
For Complainant to prevail, it must prove
all three elements. Because of the
Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel
makes no ruling on this issue.
For Complainant to prevail, it must prove
all three elements. Because of the
Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel
makes no ruling on this issue.
DECISION
Complainant
having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Judge Karl V. Fink (Ret.), Panelist
Dated: April 26, 2005
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