DECISION

 

Mohawk Canoe Club v. Universal Computing Services c/o George Fluck

Claim Number: FA0405000267477

 

PARTIES

Complainant is Mohawk Canoe Club (“Complainant”), represented by Thomas N. Kashickey of Fox and Fox LLP, 70 South Orange Avenue, Livingston, NJ 07039.  Respondent is Universal Computing Services c/o George Fluck (“Respondent”), 229 Sharon Road, Robbinsville, NJ 08691.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <mohawkcc.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically April 30, 2004; the Forum received a hard copy of the Complaint May 3, 2004.

 

On May 4, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <mohawkcc.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. 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 May 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 26, 2004, 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@mohawkcc.com by e-mail.

 

The Forum received a timely Response, determined to be complete, on May 26, 2004.

 

Complainant filed an additional Response but, because it was deficient and did not comply with Forum Rule 7, it was not considered.

 

On June 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

 

This dispute involves a Governing member of a club who registered a domain name in the name of the Complainant club but claims that the owner was his own business, the Respondent here.  The Panel is persuaded that the presentation here by Complainant’s attorney represents the remaining members of the Club, whose mark was expropriated by Respondent for use in the disputed domain name.  To avoid a claim that this dispute is outside the scope of the UDRP, as has been held in some cases, the Panel finds, after reviewing the parties submissions, that no bar prevents a determination here because this is an “abusive registration” that ICANN seeks to prevent as that term has been used in the cases.  See Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”); see also Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’”

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following allegations in this proceeding:

 

1.      The domain name Respondent registered, <mohawkcc.com>, is identical to Complainant’s MOHAWK CANOE CLUB and MOHAWK CC marks.

 

2.      Respondent registered the disputed name while its agent, George Fluck was a member of the club, but he was authorized to do so only on behalf of the club and acquired no rights to or legitimate interests in the domain name.

 

3.      Respondent registered and used the domain name in bad faith.

 

B.     Respondent makes the following points in response:

 

 

1.      Respondent’s agent George Fluck is a shareholder in the Mohawk Canoe Club and Respondent’s agent Fluck owns Universal Computing Services, Inc. with a partner, now deceased.

 

2.      Respondent concedes that Universal Computing Services developed “new logo items designed for the Mohawk Canoe Club” (Emphasis added.) and sold the “logo items to the Mohawk Canoe Club at cost.”  Respondent maintains that Mohawk Canoe Club did not pay for the website services and that the domain name was owned by Universal Computing Services.

 

3.      Respondent does not address its rights to or legitimate interests that permitted it to use the club’s name for its own purposes.

 

4.      Respondent does not address the club’s allegations of bad faith except to contend that permission at the time of registration negates bad faith.

 

C.     Complainant filed an additional Submission that did not comply with the rules and was not considered.

 

FINDINGS

Complainant established that it has rights in marks used in an identical and a confusingly similar domain name by Respondent; that Respondent has no such rights; and that Respondent acted in bad faith.

 

Complainant is a non-profit corporation that promotes the benefits of canoeing and other paddle sports.  Founded in 1903, it has some 240 members in three states, New Jersey, Pennsylvania, and New York.

 

The Club owns proprietary information, property, logos, designs, newsletters, schedules, and application forms.

 

The Respondent urged that its representative, George Fluck, attended a meeting of the Club in October 1999 as an invited guest of Complainant’s members.  Fluck became a Governing member and recommended a website to the Club.  The Club says it paid costs of registering the domain name and evidence shows the Club later offered to pay on-going expenses.  Fluck, acting as Respondent Universal Computing Services, registered a domain name, www.go.to/Mohawk and then later changed it to <mohawkcc.com>. 

 

Complainant concedes that Club minutes note the benefits the Club received from the website.  By July 2000, the club sold goods at the website.

 

The Club relates that Fluck separated from the Club in 2001 when he failed to become Vice-Commodore, a Club post he ran for unsuccessfully.  The Club urges that only after Fluck’s departure did the Club learn that Fluck had identified the website as “Property of G. Fluck.”  Although the Club attempted to pay expenses for the website, Fluck urges that he had paid them. 

 

By letter, after formal vote April 22, 2003, the Club relates that it requested Fluck to relinquish the website.  The club sent a cease and desist letter to Fluck October 31, 2003, directing Respondent to stop operating under the Club’s name at the website, but Respondent openly continued to use the website as though it had always been its private property.

 

Fluck, one assumes on behalf of Respondent, sets out a lengthy history of himself and his wife and their activities in canoeing. Fluck notes that he founded Respondent Universal Computing Services, Inc. with a partner, now deceased; and he contends that the Club allowed him to develop a website for the Club, using Universal Computing Services, Inc., which designed and sold certain logo items to the Club at cost.  Fluck enlarges upon his broad experience as a canoeing enthusiast and the numerous memberships and organizations in which he is active; but Fluck does not address the taking of the Club’s name under his own business name.  Fluck insists that the Club, via its official corporate papers, has not requested that he hand over the domain name, statements that are contrary to portions of the letters that attorneys for the Club sent to Fluck.

 

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 Complainant to 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)    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.

 

Identical to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it has common law rights in the MOHAWK CANOE CLUB and MOHAWK CC marks.  Complainant is a non-profit corporation that promotes canoeing and other paddle sports among some 240 members.  The Club was founded in 1903 and is active in New Jersey, Pennsylvania and New York.  The Club has enjoyed long and continued use of the marks and showed that others identify with the Club sufficiently to extablish that Complainant has rights in the marks under the common law.  See Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law”); see generally McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy).

 

The domain name that Respondent registered, <mohawkcc.com>, is confusingly similar to Complainant’s MOHAWK CANOE CLUB mark and is identical to Complainant’s MOHAWK CC mark, because the domain name fully incorporates the MOHAWK CC mark and deviates from the MOHAWK CANOE CLUB mark only by abbreviating the terms “canoe club.”  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

 

The addition of the generic top-level domain “.com” is irrelevant in determining whether the <mohawkcc.com> domain name is confusingly similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark). 

 

The Panel cannot determine the exact extent of fame associated with Complainant’s mark; however, Respondent certainly knew about the Club and its expectation of rights to exclusively use its marks before it registered a domain name using Complainant’s marks. Complainant’s showing satisfies the Panel that Complainant has done business using the name in question some 97 years before Respondent joined the group as a member and that for 97 years a continuing membership has attached secondary meaning to the marks that is identifiable to Complainant’s goods or services. Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principles outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services”).  Moreover, Respondent, Universal Computing Services c/o George Fluck, has not, and probably cannot, make a showing that it is MOHAWK CANOE CLUB or MOHAWK CC or that it is known in the industry as MOHAWK CANOE CLUB or MOHAWK CC. 

 

Complainant met the requirements of ICANN Policy ¶ 4(a)(i), requiring a showing of identicalness to or confusing similarity.

 

 

Rights to or Legitimate Interests

Complainant established with extrinsic proof that it has common law rights in its business names and marks.  Complainant alleged that Respondent has no such rights.  The parties do not dispute that Respondent’s agent George Fluck was a member of the Complainant Club when he registered a domain name using the Complainant’s mark.  The evidence shows that Respondent is not commonly known by the domain name.  Respondent has made no showing of rights to and legitimate interests in the domain name that contains in its entirety the protected mark of the Complainant, pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail.").

 

Moreover, Respondent’s diversionary use of the <mohawkcc.com> domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).   

 

Part of Respondent’s claim of rights seems to suggest that it is privileged to use <mohawkcc.com> because Fluck uses it as a forum for discussion of environmental issues.  Respondent argues that its agent Fluck was assisting Complainant at the inception of the <mohawkcc.com> domain name and Respondent further asserts that as a partner in Universal Computing Services, Fluck offered to include information about Complainant’s club on a website about general paddling information.  Even if Complainant acquiesced to having Respondent register a domain name using the Club’s name, the facts permit an inference that the Club expected Fluck to be acting on its behalf and Respondent’s submissions permit a conclusive finding that Fluck knew he was acting for the Club. 

 

Respondent has no evidence to justify registering a domain name using marks Complainant has owned and used for nearly a century before Respondent’s agent came along.  Further Respondent has provided no justification to excuse its continued use of the disputed domain name after the termination of the relationship with Complainant and such use is not protected under Policy ¶¶ 4(c)(i) or (iii). Cf. Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000)(finding that, as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark and that Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right.  This is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name).  Complainant showed rights to and legitimate interests in the marks contained within the disputed domain name; Respondent showed no such rights.

 

Complainant satisfied Policy ¶ 4(a)(ii) requiring it to show rights or legitimate interests.

 

Registration and Use in Bad Faith

Complainant asserts that Respondent acted in bad faith.  Respondent did not address bad faith.  Because Respondent was a member of Complainant’s canoe club when the domain name was registered, Respondent had actual knowledge of Complainant’s rights in the MOHAWK CANOE CLUB and MOHAWK CC marks.  The knowing conduct of Respondent’s agent GEORGE FLUCK in registering a domain name containing Complainant’s protected mark but listing his own company and himself as owner, demonstrates bad faith registration under Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"). 

 

Moreover, Respondent continues to mislead the public.  Respondent is knowingly misleading Internet users by using Complainant’s mark for Respondent’s own purposes.  Such use misleads the Internet user into thinking that opinions given have the sponsorship of Complainant, an organization that has existed for more than a century and not Respondent’s agent, a former member.  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website); cf. Fendi Adele S.r.l. v. O’Flynn, D2000-1226 (WIPO Nov. 13, 2000) (transferring the domain name <fendiboutique.com> where the likelihood of confusion with the trademark FENDI is increased since Complainant’s fashion products are typically sold in boutiques and where Respondent obviously tried (or threatened to try) to pass himself off as a legitimate source for FENDI products).

 

Respondent’s bad faith here existed from the outset.  Respondent knew the Club had rights to and legitimate interests in its name—and that it had so for nearly a Century before Respondent came along—but nonetheless, Respondent listed itself and its agent, Fluck, as owner of the domain name.  Further, when Fluck left the Club, Respondent continued to use the domain name to the advantage of Respondent without right, license, or legal or ethical permission to do so.  While the Policy lists four circumstances demonstrating registration and use of a domain name in bad faith, this list merely illustrates possible situations that demonstrate bad faith. The Panel may look to the totality of the circumstances surrounding the registration and use of a domain name in determining whether bad faith is present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).  Looking to the totality of the circumstances, the Panel finds that Respondent acted in bad faith.

 

Complainant satisfied Policy ¶ 4(a)(iii) requiring a showing of “bad faith registration and use.”

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mohawkcc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: June 15, 2004

 

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