Trek Bicycle Corporation v. Image G/Ikonographics
Claim Number: FA0611000852695
Complainant is Trek Bicycle Corporation (“Complainant”), represented by Mary Catherine Merz, of Merz & Associates, P.C., 1140 Lake Street, Suite 304, Oak Park, IL 60301. Respondent is Image G/Ikonographics (“Respondent”), represented by Steven Brower, of Stephan, Oringher, Richman, Theodora & Miller, 535 Anton Boulevard., Ninth Floor, Costa Mesa, CA 92626-1902.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trek.com>, registered with Network Solutions, Inc.
The undersigned 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.
Michael A. Albert (chair), the Honorable James A. Carmody, and David E. Sorkin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 28, 2006.
On November 27, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <trek.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 21, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on December 21, 2006.
On December 27, 2006, Complainant submitted a timely additional submission; however, this submission did not comply with Rule 7 of the National Arbitration Forum’s UDRP Supplemental Rule (the “Supplemental Rules”) because the Forum received the fee late. For the reasons stated in the Discussion section, the Panel will consider this submission despite the defect.
On January 7, 2007, Respondent submitted a timely additional submission which fully complied with Supplemental Rule 7.
On January 5, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert, the Honorable James A. Carmody, and David E. Sorkin as Panelists.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant, Trek Bicycle Corporation (“Trek”), manufactures and sells bicycles and bicycle related goods. In addition, Complainant’s wholly owned subsidiary, Trek Travel LLC (“Trek Travel”) offers cycling vacations.
Complainant holds several registered trademarks related to its business. Complainant has registered trademark rights for the use of TREK in connection with bicycles and bicycle frames under Reg. No. 1,168,276 (Registered Sept. 8, 1981; first used March 10, 1977). Complainant also indicates that it holds a registered service mark for the use of TREK TRAVEL in connection with vacation services under Reg. No. 3,031,210 (Registered Dec. 20, 2005; First used Oct. 1, 2002).
In essence, Complainant avers Respondent recently posted pay-per-click links for cycling vacations on its website and this change in the underlying use of the website requires this Panel to transfer the Domain Name.
Complainant claims that <trek.com> is identical to TREK. Complainant does not assert or provide reasons why <trek.com> is also identical or confusingly similar to TREK TRAVEL.
Complainant asserts that Respondent has no legitimate rights or interests in <trek.com> because Respondent is not known by the name “Trek,” does not offer goods and services under the mark TREK, and does not have a license from Complainant to use that mark. Additionally, Complainant avers that Respondent’s sole use of “trek” is in connection with the Domain Name <trek.com>.
Complainant contends that Respondent registered and used the Domain Name in bad faith. Complainant asserts that Respondent is misleading consumers and injuring Complainant’s business by posting pay-per-click advertisements to competing businesses.
Complainant notes that Respondent registered the Domain Name in 1994. After learning that <trek.com> was unavailable, Complainant began operating a web site in connection with its bicycle business at <trekbikes.com>. Later, Complainant created a website in connection with its cycle vacation business at <trektravel.com>. In 2002, Complainant contacted Respondent about transferring the site but Respondent wanted “an exorbitant amount” of money “in the neighborhood of six figures.”
Complainant knew of the Domain Name long before bringing its Complaint. But Complainant asserts that Respondent did not use the Domain Name “in connection with bicycles or bicycle-related goods or services” until recently. Respondent’s changes to the content of its website prompted Complainant to file its Complaint.
Respondent, Image G/Ikongraphics, does not clearly state the nature of its business in its filings. According to its website, Respondent is “the leading provider of motion control cinematography and related special effects services to the entertainment, advertising, and multimedia industries.”
Respondent “acknowledges that the [D]omain [N]ame [<trek.com>] and the registered trademark (TREK) are the same.” But Respondent argues that there are at least eight other registered TREK marks in which the Complainant lacks rights. Accordingly, Respondent claims “the mere fact that Complainant holds one of [nine] registrations on the single word ‘Trek’ does not prove a likelihood of confusion between the disputed domain name and the registration held by Complainant.” Furthermore, Respondent avers that a “prior judicial determination, that the [TREK] mark is limited to bicycles and bicycle-related equipment . . . is binding on Complainant under the doctrine of offensive collateral esoppel.” Thane Int’l, Inc. v. Trek Bicycle Corp., No. 99-01470, 1999 WL 33268644, *9 (C.D. Cal. Dec. 20, 1999) (“[I]n light of the undisputed facts before this Court, it is clear that Trek’s protection should be limited to bicycles and bicycle-related equipment and accessories, including stationary bikes.”), rev’d on other grounds, 305 F.3d 894 (9th Cir. 2002).
Respondent further asserts that TREK TRAVEL is “hardly distinctive.” In support, Respondent cites the existence of another company which has been operating under the registered mark TREK TOURS LTD. Respondent claims that the existence of Trek Tours, Ltd. demonstrates that “the term ‘trek’ has an ordinary meanings with no relationship to Trek Bicycles.” In addition, Respondent points out that the ordinary meaning of the word “trek” relates to journeys and trips and its meaning has “nothing to do with bicycles.”
Additionally, Respondent asserts it has legitimate rights and interests in <trek.com>. Respondent claims it used to work closely on projects with Paramount Pictures, which holds rights to various STAR TREK marks. Respondent claims it tried to persuade Paramount to enter into a joint venture that would turn <trek.com> into a promotional Star Trek site. The site would provide information about the special effects of Star Trek and promote the Respondent’s company at the same time. Respondent admits that “Paramount was apparently not yet prepared to get involved in the internet.” Respondent provides supporting correspondence to corroborate its claims of a potential business use of the <trek.com> domain name in connection with the STAR TREK franchise. This correspondence dates back to the mid 1990’s. Although Respondent acknowledges that it “never intended to be known by ‘[t]rek,’” it argues in support of its allegation of legitimate rights to the Domain Name that Paramount never challenged Respondent’s rights in <trek.com>.
Respondent asserts that it registered and uses the Domain Name in good faith. Respondent claims that it registered the website in connection with its relationship with Paramount and planned to launch a promotional website. From the time of registration until April of 2006, Respondent claims it used the website “privately” (i.e. Internet users could not access the site without a password). During this time, Respondent asserts it displayed content on its password-protected site relating to Star Trek special effects. Respondent has provided the Panel with printed copies of representative content from the private site.
Respondent admits that in April of 2006 it changed the format of the website. At that time, the Respondent claims it gave its web-hosting company responsibility for administering part of its website. “That company elected to post a ‘pay-per-click’ site, which contains filtered advertising from Yahoo! and Google related to ‘Trekking.’” Respondent claims it was not aware of the change until Complainant brought this proceeding.
Respondent admits that some of the advertising links resolve to websites of cycle vacation companies. But Respondent claims that none of the links resolve to websites that sell bicycles or related equipment. Respondent argues that offensive collateral estoppel limits Complainant’s rights in TREK to “bicycle sales or equipment,” and therefore that its current use cannot be deemed to be in bad faith. Respondent also avers that the content of its site does not refer to Trek (the bicycle company) because it uses the term “trek” according to its ordinary meaning in connection with travel and journeying.
C. Additional Submissions
1. Complainant’s Reply
In its Reply, Complainant asserts that Paragraph 4(b)(iv) of the Policy “does not require that the domain name was actually registered with bad faith intent to trade off of the goodwill in Complainant’s trade name and mark when it was originally applied for registration in 1994; it requires only that the current use of the [D]omain [N]ame is such that a likelihood of confusion with Complainant’s name and mark is caused.”
Additionally, Complainant contends that Respondent initially registered the Domain Name in bad faith “because [it was] initially trying to trade off of the goodwill of Paramount. . . .”
Lastly, Complainant claims the doctrine of collateral estoppel is inappropriate and unavailing. First, the ruling in the Thane International “addressed the scope of fame Complainant had established in its mark [TREK] as of 1999.” Fame is “ever evolving and cannot be limited to the snap shot in time that was represented in the Thane International decision.” Even if Thane International is limiting, Complainant argues its rights in TREK would still require this Panel to find bad faith use.
2. Respondent’s Sur-Reply
Respondent states it has a continuing relationship with Paramount Studios. In addition, Respondent claims it “continues to maintain a ‘private website’ at that address. If contacted by a registered IP address the [<trek.com>] [D]omain [N]ame will respond with a password screen. . . .” Respondent further asserts that it uses the domain name for e-mail and FTP in connection with its business.
The Panel will consider the additional submissions even though Complainant’s submission was technically defective due to untimely fee payment. Other than this defect, the submission was timely and complied with the Supplemental Rules. In the interests of reaching the merits of the dispute, this Panel will not exclude consideration of the otherwise proper submissions due to this minor and rapidly-remedied defect.
The Panel finds that Complainant has provided sufficient evidence to establish that the Domain Name is identical or confusingly similar to Complainant’s registered marks.
The Panel finds that Respondent fails to rebut Complainant’s showing that Respondent lacked rights or a legitimate interest in the Domain Name.
Additionally, the Panel finds that Complainant has failed to establish that Respondent registered the Domain Name in bad faith, but has established that the Respondent’s current use of the Domain Name in bad faith.
Because Complainant needs to prove both bad-faith registration and bad-faith use, the Panel denies Complainant’s request for transfer.
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.”
A. Procedural Issue
Complainant’s Reply is an additional submission. Complainant timely filed its additional submission on December 27, 2006; however, the additional submission is deficient pursuant to Supplemental Rule 7 because the Forum received the filing fee late. Respondent availed itself of the opportunity to file an additional submission in response to Complainant’s additional submission. Accordingly, the Panel does not believe Respondent would be harmed as a result of considering Complainant’s additional submission. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (considering Complainant’s additional submission that was deficient under Supplemental Rule 7 even when Respondent did not submit a further additional submission).
Furthermore, considering the deficient additional submission is consistent with the policy of ensuring substantive consideration of the parties’ arguments and evidence. See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process”); Buy Owner International, Inc. v. Frank, D2002-0407 (WIPO July 23, 2002) (considering the substance of a one-page e-mail sent to the Forum as a Response, even though e-mail failed to comport with Paragraph 5(a) of the Rules). Accordingly, the Panel will consider Complainant’s deficient additional submission.
One member of the Panel would decline to consider both of the additional submissions, on the basis that they consist primarily of material that is or could have been included in the parties’ initial submissions.
B. UDRP Claim
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 Domain Name is identical to TREK. Indeed, Respondent “acknowledges that the [D]omain [N]ame [<trek.com>] and the registered trademark [TREK] are the same.”
The Panel further finds that Complainant has rights in the TREK mark. A “successful trademark registration with the USPTO creates a presumption of rights in a mark.” See U.S. Postal Serv. v. Stine, FA 671209 (Nat. Arb. Forum May 19, 2006) (citing Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)); Innomed Tech., Inc. v. DRP Servs., FA 221117 (Nat Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in a mark.”).
Respondent’s arguments that Complainant does not have rights to TREK fail to rebut the presumption of rights that go with a registered mark. Respondent’s citation to other registered TREK marks that are used concurrently in other markets does not undermine Complainant’s right to the mark TREK at least in connection with bicycles and bicycle-related products and services. See Speed Channel, Inc. v. This Domain Is Not For Sale, FA 566696 (Nat. Arb. Forum Nov. 28, 2005) (holding that Respondent could not claim that a registered mark for use in television services was diluted by registered marks that were used concurrently in different markets).
Even if the ruling in Thane International could limit Complainant’s rights in TREK to bicycle and bicycle-related equipment, this limitation would still confirm Complainant has rights in TREK. See Thane Int’l, 1999 WL 33268644, *9 (holding “the [TREK] mark was weak when applied to other non-bicycle-related equipment” within an analysis of the “strength of mark” prong in the Ninth Circuit’s multi-factor test for determining a likelihood of confusion).
In addition, Respondent bolsters the proposition that Complainant has rights to TREK through its rationale for why “trek” is “hardly distinctive” when applied to bicycles. If the Panel accepts Respondent’s contention that the word “trek” has nothing to do with bicycles, then under U.S. trademark principles the mark is actually stronger then it would be if the mark was merely descriptive of bicycles. See, e.g. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:14 (2006) (“McCarthy”) (“Some courts flatly state that arbitrary and fanciful marks are automatically ‘strong’ marks and therefore will be given a wide scope of protection.”); McCarthy 11:11 (“By the very nature of the term ‘arbitrary’ it is assumed that the word used as a mark is in use in the language but has no descriptive connotation with this product.”).
Complainant does not specifically claim or describe how the Domain Name is also identical or confusingly similar to TREK TRAVEL. Paragraph 3(ix) of the Rules requires Complainant to describe “(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.” Complainant has not satisfied Paragraph 3(ix)’s requirement to specifically identify how <trek.com> is confusingly similar to TREK TRAVEL. But Complainant does identify its rights to TREK TRAVEL and asserts that Respondent’s practice of linking to competing cycle vacation companies trades off of Complainant’s goodwill. The Panel finds that the Domain Name is confusingly similar to Complainant’s registered TREK TRAVEL mark. The Domain Name incorporates the entirety of Complainant’s mark “TREK” and the dominant portion of the mark TREK TRAVEL. Individuals looking for information on Trek’s cycling vacation company would likely be confused by the use of <trek.com> for a purpose unconnected to Trek’s products and services. See Phat Fashions, LLC v. Kevin Ross, FA 104983 (Nat. Arb. Forum Apr. 9, 2002) (holding that <phattyz.com> was confusingly similar to Complaint’s registered family of marks, including PHAT, PHAT THREADS, PHAT FARMS and BABY PHAT, because the domain name incorporated PHAT). As stated above, the evidence that another company concurrently uses TREK TOURS LTD in one market does not undermine the presumption that Complaint has rights to TREK TRAVEL in a different market. See Speed Channel, Inc., FA 566696.
While it is true that “trek” is a dictionary word, and could potentially be used in a generic sense, Respondent does not claim to have registered the mark in connection with trekking or for some other purpose relating to the generic meaning of the word. Rather, it claims to have registered the mark in connection with a possible use relating to the STAR TREK franchise owned by Paramount.
Respondent provides evidence that in the mid-1990s it entered into discussions with Paramount regarding using the Domain Name to promote both Star Trek and Respondent’s own special effects work. A letter from Paramount indicates that it was interested in the arrangement. But Respondent admits that the venture never took off. Respondent never offered STAR TREK related goods and services under <trek.com> to the public. Respondent’s initial plans for the public promotional site were legitimate only in connection with Paramount’s rights and good will in STAR TREK, or if they constituted a fair use of that mark. Respondent’s allegation that it has a continuing relationship with Paramount Studios is unsubstantiated by any evidence. Moreover, Respondent does not define the specific nature of the relationship, let alone establish that it ever acquired any rights in or to the STAR TREK mark. Also, Respondent fails to show that it is currently preparing to use the Domain Name in connection with a bona fide offering of goods or services. Accordingly, the Panel is not persuaded that Respondent ever used the Domain Name or is now preparing to use the Domain Name in connection with a bona fide offering of goods and services which could support a legitimate interest in the Domain Name. See Policy ¶ 4(c)(i).
Currently, Respondent is using the Domain Name in a way that cannot, as matter of law, support a claim of legitimate rights or interests. In April 2006, Respondent began posting links under the Domain Name that advertise and resolve to bicycle vacation companies, in direct competition with Complainant. Respondent’s use of the Domain Name to “misdirect Complainant’s customers and potential customers by providing links to third party websites for commercial gain” is not a bona fide use, a legitimate noncommercial use, or a fair use. Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (citing WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003)); Valiant Trust Co. v. Valiant Trust, FA 844658 (Nat. Arb. Forum Jan. 11, 2007) (“The Panel finds Respondent’s attempt to pass itself off as Complainant’s business is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent further admits that it “never intended to be known by ‘Trek’” and presents no arguments or evidence to rebut Complainant’s assertion that Respondent is not commonly know by the Domain Name. The Panel does not find that the Respondent has any rights to the Domain Name through Respondent’s own name. See Policy ¶ 4(c)(ii).
For all of these reasons, the Panel rules that Respondent does not have a legitimate interest in the Domain Name.
The plain language of the Policy requires both bad-faith registration and bad-faith use of the Domain Name to meet the third element of the test. See Guildline Instruments Ltd. v. Anderson, D2006-0157 (WIPO Apr. 12, 2006) (explicitly requiring that the Respondent both registered and used the domain name in bad faith); e-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001) (“This case thus presents the relatively novel question of whether bad faith use alone, without bad faith registration, is sufficient to justify transfer . . . . because the Policy requires both bad faith use and bad faith registration, the Panel . . . must deny the Complaint.”).
Complainant claims that Respondent registered the Domain Name in a bad faith attempt to trade off of the goodwill of Paramount. But Respondent’s evidence that Paramount and Respondent discussed the possibility of a promotional STAR TREK website at <trek.com> belie Complainant’s bare assertions of bad faith registration. It is not clear if Respondent truly registered the Domain Name in good faith. But Complainant fails to prove that Respondent registered the Domain Name in bad faith. Under the Policy, bad faith use without bad faith registration is insufficient to satisfy the third element of Paragraph 4(a). See Guildline Instruments Ltd., D2006-0157 (denying transfer because Complainant failed to allege bad faith registration and the Record contained no evidence of bad faith registration or bad faith acquisition); e-Duction, Inc., D2000-1367 (denying transfer even though Complainant proved bad faith use because Complainant could not prove bad faith registration); Arena Football League, LLC v. Armand F. Lange & Assoc., FA 128791 (Dec. 26, 2002) (denying transfer because Complainant failed to prove bad faith registration even in view of evidence that the Respondent renewed the Domain Name in bad faith).
Because the Panel finds Complainant failed to show bad faith registration, it need not rule on the issue of whether Respondent uses the Domain Name in bad faith. As discussed above, however, the Panel has already noted that Respondent’s use of pay-per-click advertising under an identical and confusingly similar Domain Name would likely be deemed bad faith use, because those advertisements offer products and services that compete directly with Complainant’s business. See LD Product, Inc. v. Kelly, FA 831318 (Nat. Arb. Forum Dec. 12, 2006) (“Respondent’s use of an identical domain name to advertise competing products and services constitutes bad faith use.”); Staples, Inc. v. Morgan, D2004-0537 (WIPO Sept. 20, 2004) (“[T]he Panel is persuaded that Respondent’s registration and use of the Disputed Domain Name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of . . . a company which directly competes with Complainants, constitutes bad faith and use.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Michael A. Albert (chair), the Honorable
James A. Carmody, and David E. Sorkin, Panelists
Dated: January 19, 2007
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