WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paul Barnett Puckett, Individually and d/b/a Nature�s Window v. Christopher D. Miller
Case No. D2000-0297
1. The Parties
1.1 Complainant is Paul Barnett Puckett, individually and d/b/a Nature�s Window, an individual residing at 325 Grant Road, Armuchee, Georgia 30105, U.S.A. Respondent is Christopher D. Miller, an individual residing in Boulder, Colorado, U.S.A. Complainant is represented by counsel, Troutman Sanders LLP, Atlanta, Georgia, U.S.A.
2. The Domain Name and Registrar
2.1 The domain names which are the subject of this proceeding are "" and "" owned by Respondent. The domain names are registered with Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
3.1 On April 14, 2000 a Complaint was received in connection with this matter.
3.2 On April 19, 2000 a Request for Verification was sent to Network Solutions, which responded on April 20, 2000.
3.3 On April 25, 2000 a Notification of Complaint and Commencement of Administrative Proceeding was issued.
3.4 On May 23, 2000 an Acknowledgment of Receipt of Response was issued.
3.5 On May 29, 2000 this Panel was appointed.
3.6 On May 30, 2000 a Reply to Respondent�s Response was filed.
4. Factual Background
4.1 Since 1984, Complainant, based in Rome, Georgia, has been engaged in the business of manufacturing and selling AviariumsÔ , or Bird CasesÔ , and selling other bird and nature related products under the NATURE�S WINDOW brand and mark. Mr. Puckett is the inventor of the patented AviariumÔ , or Bird CaseÔ , which is an unique, decorative, furniture-quality environmental sliding glass enclosure for housing birds. Since 1984, Complainant has consistently used the NATURE�S WINDOW mark as the main brand name of his business and to identify the source of his unique bird case products and of other bird and nature-related products, such as original paintings, signed prints, limited edition reproductions of photos, cards, and sculptures. The record indicates that this trademark is not registered.
4.2 For a period of time, Complainant engaged in this business through a corporation known as Nature�s Window, Inc. Complainant is now doing business as a sole proprietor and not as a corporation, but still conducts this business under the trade name and brand name of NATURE�S WINDOW, and has continuously done so since 1984.
4.3 Complainant has engaged in marketing and selling the AviariumsÔ , or Bird CasesÔ , made and sold under the NATURE�S WINDOW mark, both in interstate and international markets. Not only has the NATURE�S WINDOW mark been used in connection with showrooms operating under the NATURE�S WINDOW mark in Phoenix, Arizona, Atlanta, Georgia, Beverly Hills, California, and Canada, but also products under the NATURE�S WINDOW mark have been marketed and/or sold in Mexico, South America, Puerto Rico and Europe.
4.4 Prior to entering the AviariumÔ , or Bird CaseÔ , business, Mr. Puckett was individually well known as an entertainer in the music and entertainment business. Beginning in 1968, Mr. Puckett used the PAUL PUCKETT mark to identify his music and entertainment services.
4.5 In 1998, while attempting to register the domain name for himself, Complainant learned that Respondent had registered the domain name. Thus, in late 1998, Complainant contacted Respondent by telephone and by letter in an effort to resolve this matter in an amicable manner by having Respondent transfer to Complainant the domain name. When Complainant spoke to Respondent by telephone regarding the dispute on December 1, 1998, Respondent requested a letter documenting Complainant�s assertions.
4.6 In response to and despite Complainant�s efforts to resolve the dispute amicably, Respondent has refused and failed to transfer the domain name to Complainant.
4.7 In March of this year, Respondent began to use the domain name for the purpose of selling the domain name to Complainant as the owner of the NATURE�S WINDOW mark or to a competitor of Complainant for valuable consideration in excess of Respondent�s documented out-of-pocket costs directly related to the domain name. In fact, Respondent offered to sell the domain name for $5,000.00 and indicated on the web site appearing at that the domain name was "for sale".
4.8 Furthermore, beginning on or about April 3, 2000, Respondent indicated on its website at the statement "To learn more about Paul Pucket - Click Here." By clicking on this link, a person was linked to a site titled "Redneck Racing," which referred to a person, other than Complainant, who goes by the name Paul Puckett and who apparently is an amateur racer.
4.9 Complainant, and apparently in response to e-mail correspondence beginning on April 5, 2000, between Complainant�s daughter and Respondent, Respondent registered the domain name .
4.10 On April 6, 2000, in the above-mentioned e-mail correspondence with Mr. Puckett�s daughter, Respondent threatened to link one or both of the domain names and to a pornographic web site.
4.11 Thereafter, on or about April 7, 2000, Respondent, linked to the web site of a company that competes with Complainant in the business of marketing and selling bird cages. Thus, at the time of filing of this Complaint, a person who types is linked directly and involuntarily to a site titled "VisionaryÔ Cages," which offers for sale bird cages in competition with Complainant�s AviariumsÔ , or Bird CasesÔ .
4.12 Respondent is not using the domain name.
5. Parties� Contentions
A. Complainant
5.1 The domain names and are identical, and therefore confusingly similar to, Complainant�s NATURE�S WINDOW mark and PAUL PUCKETT mark and name, respectively, in the following manners:
a. The domain names and are identical, and therefore confusingly similar, in appearance, pronunciation and sound to Complainant�s NATURE�S WINDOW mark and PAUL PUCKETT mark and name, respectively. The and domain names incorporate fully Complainant�s NATURE�S WINDOW mark and PAUL PUCKETT mark and name, respectively. The only differences between the and domain names on the one hand and Complainant�s NATURE�S WINDOW mark and PAUL PUCKETT mark and name on the other are the domain names� additions of ".com". The additions of ".com" to the domain names are necessary elements of the domain names, and not voluntary and arbitrarily chosen additions, and therefore, do not serve to distinguish the domain names from Complainant�s NATURE�S WINDOW mark and PAUL PUCKETT mark and name.
b. The and domain names have suggestions, connotations, and commercial impressions that are identical, and therefore confusingly similar, to those of Complainant�s respective NATURE�S WINDOW mark and PAUL PUCKETT mark and name. Complainant�s NATURE�S WINDOW mark and Mr. Puckett�s name, which Respondent has wrongfully incorporated into the domain names, are widely associated with Complainant and his provision of high-quality AviariumsÔ , or Bird CasesÔ , and other bird and nature related products. For these reasons, the NATURE�S WINDOW mark and the name Paul Puckett suggest Complainant�s bird and nature related products, and the mark and name have connotations and commercial impressions of Complainant�s expertise relating to AviariumsÔ , or Bird CasesÔ , and other bird and nature related products. In addition, the PAUL PUCKETT mark is associated with Mr. Puckett and his music and entertainment services and, thus, has a connotation and commercial impression of Complainant�s entertainment services.
5.2 Respondent has no rights or legitimate interests in respect of the and domain names, as demonstrated by the following facts:
a. Respondent�s use of the domain name is not in connection with a bona fide offering of goods or services. Persons who visited on the Internet as recently as April 3, 2000, encountered a web page offering the domain name for sale. See Exhibit G. More recently, a person visiting the web site is linked directly and involuntarily to , the web page of a company offering goods that compete with Complainant�s own goods made and sold under the NATURE�S WINDOW mark. At the time this Complaint was filed, Respondent was wrongfully using the domain name to misleadingly divert Internet users to that competitor of Complainant.
b. Respondent�s use of the domain name is not in connection with a bona fide offering of goods or services.
c. Respondent is not commonly known or identified by the name "Nature�s Window," "Natures Window," or "Paul Puckett."
d. Respondent does not operate a business or other organization commonly known as "Nature�s Window," "Natures Window," or "Paul Puckett," or that offers any goods or services under the NATURE�S WINDOW or PAUL PUCKETT marks or any NATURES WINDOW mark.
e. Respondent is not making legitimate noncommercial or fair use of the domain names. Instead, Respondent is using the domain names solely to injure and harass Complainant and Complainant�s business. As discussed above, Respondent is currently using the domain name to link users directly and involuntarily to a different domain name and site of a company not affiliated with Complainant nor legitimately affiliated with Complainant�s NATURE�S WINDOW mark, but instead offering goods that compete with Complainant�s goods identified by Complainant�s NATURE�S WINDOW mark. Prior to creating that link, Respondent used the domain name as a vehicle to advertise his offer to sell the domain name and to defame Complainant by linking to a web site that referred to Paul Puckett as a "redneck race driver." Absent the intervention of this Panel, Respondent could at any time resume his efforts to sell the domain name and continue to divert consumers to Complainant�s competitor and to defame Complainant and/or his business.
f. Nor is Respondent is making a noncommercial or fair use of the domain name. The web page at states only that the site is "under construction"; thus, the domain name is not being used for any legitimate purpose, but is instead being used to injure and harass Complainant by creating the fear that Respondent will take action on his threat to link one or both of the or domain names to a pornographic web site. Absent the intervention of this Panel, Respondent could at any time link to or use as a pornographic web site.
g. Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized by Complainant to use the NATURE�S WINDOW mark or the PAUL PUCKETT mark or name or to apply for or use any domain name incorporating the NATURE�S WINDOW mark or the PAUL PUCKETT mark or name.
5.3 The and domain names have been registered and are being used in bad faith, as shown by the following:
a. Respondent does not conduct any legitimate commercial or noncommercial business under the NATURE�S WINDOW mark or the PAUL PUCKETT mark or name.
b. Respondent has registered the and domain names for the purpose of selling or otherwise transferring the domain name registrations to Complainant as the owner of the NATURE�S WINDOW mark and the PAUL PUCKETT mark and name, or to a competitor of Complainant for valuable consideration in excess of Respondent�s documented out-of-pocket costs directly related to the domain names.
c. Respondent has registered the and domain names in order to prevent Complainant, as the owner of the NATURE�S WINDOW mark and the PAUL PUCKETT mark and name, from reflecting those marks or that name in corresponding domain names unless Complainant pays to purchase or rent the domain names from Respondent.
d. By registering the and domain names, Respondent is diverting consumers away from the Complainant�s business and will divert consumers away from Complainant�s soon-to-be-implemented official web site, thereby making it difficult for Complainant�s customers and the general public to locate Complainant�s business and official web site, and thereby disrupting Complainant�s business.
e. By using the domain name, Respondent has intentionally attempted to attract, for vindictive reasons, Internet users to a competitor of Complainant. By using the domain name to link users directly and involuntarily to , Respondent has intentionally created a likelihood of confusion with Complainant�s NATURE�S WINDOW mark as to the source, sponsorship, affiliation, or endorsement of Respondent�s web sites or locations or of products or services appearing at and .
f. With full knowledge of Complainant Paul Puckett�s name, and to further injure and harass Complainant, Respondent at one time provided a link from to a site titled "Redneck Racing," indicating that users should go to that link "to learn more about Paul Pucket."
g. Respondent has threatened to link and/or to or use and/or as a pornographic web site. Such linking or use would significantly injure Complainant and Complainant�s business.
h. If Respondent sells the and domain names to a competitor of Complainant, that competitor could likewise use the and domain names to disrupt the business of Complainant and cause a substantial likelihood of confusion and substantial actual confusion. In fact, use of these domain names by, or sale or rent of these domain names to, any other company could disrupt Complainant�s business and cause substantial confusion among persons trying to reach Complainant�s business, or to obtain information about "Nature�s Window" or Complainant Paul Puckett over the Internet.
i. Respondent has used false information to register the and domain names. In his registrations for both domain names, Respondent has falsely used the name Natures Window, despite the fact that Respondent does not operate any business under, and is not commonly known by, the name "Nature�s Window" or "Natures Window." In addition, in the registration for , Respondent has provided a false address; 80111 is not a proper zip code for Roanoke, Washington, or Roanoke, Virginia (in the event that "WA" is a typographical error), but is instead a proper zip code for certain locations only in the state of Colorado.
5.4 Respondent�s use of the and domain names is likely to cause confusion or mistake or to deceive consumers regarding Complainant and his business operated under the NATURE�S WINDOW brand name and mark, and amounts to trademark and service mark infringement in violation of 15 U.S.C. � 1125(a).
5.5 Respondent�s use of the and domain names is diluting and weakening the unique and distinctive significance of Complainant�s NATURE�S WINDOW mark and the PAUL PUCKETT mark and name. Respondent�s use of the and domain names could tarnish Complainant�s NATURE�S WINDOW mark and the PAUL PUCKETT mark or name by giving the impression that Complainant, or an affiliate of Complainant, is selling a lower end bird cage or is associated with "Redneck Racing" or, if Respondent acts on his threat, is associated with or running a pornographic web site. Such dilution and/or tarnishment is in violation of 15 U.S.C. � 1125(c).
5.6 Respondent�s use of domain names identical, and therefore confusingly similar to, Complainant�s NATURE�S WINDOW mark and the PAUL PUCKETT mark and name has caused, and if not altered by the Panel, will continue to cause serious and irreparable injury and damage to Complainant and to the goodwill associated with Complainant and the NATURE�S WINDOW mark and the PAUL PUCKETT mark and name.
B. Respondent
5.7 After obtaining the domain, in September of 1999 for the purpose of selling photography, the Respondent was contacted by the Complainant regarding the domain. The Complainant offered to purchase the domain for $70. The Respondent then decided to check to see if the Complainant has registered a mark with the United States Patent and Trademark Office ("USPTO"). Upon finding no proof of a registered trademark on behalf of the Complainant, the Respondent on December 15, 1998 applied for a trademark for the mark, "" hoping to mitigate any further legal action. Currently, the Respondent is waiting to obtain a registered trademark for the mark, "", pending approval by the USPTO. The current status of the trademark is, "Opposition Instituted", due to the fact that the Complainant has filed opposition paperwork. Pending approval by the USPTO of the mark, "", the Respondent plans to start selling mounted photographs, unmounted photographs, photographic prints, posters and greeting cards. In addition the Respondent secured the domain name as a potential fan website of an amateur racecar driver that at the moment has a site with a name called "Red Neck Racers". The Respondent never attempted to defame the Complainant or register the domain with the sole purpose of selling back to the Complainant. However, the Respondent, wishing to show a sign of good faith, concedes the domain to the Complainant. The Respondent is not currently nor has ever made a living, supplemental income or profited in any way by selling a domain.
5.8 The Respondent is waiting for the outcome of the USPTO decision regarding the Respondents request for a trademark for the mark, ". The Complainant has filled opposition paperwork regarding the trademark, but the decision has yet to be determined. Even without the approval of the mark, the Respondent is currently using the domain for personal use which include the Respondent 1st Amendment Right to Free Speech as shown by the following:
a. For a couple of days the Respondent changed the usual look of the domain, to that of an advertisement to sell the domain. The Respondent was derelict in his understanding of any new rules governing the sale of domains. Upon understanding the new rules, the Respondent immediately changed the sight back to its usual look of a website dedicated to the travels of the Respondent. At one point the Respondent linked the sight to a birdcage web site as an expression of his 1st Amendment Right to Free Speech.
b. The Respondent as a show of good faith concedes the domain name to the Complainant. The Respondent was executing his 1st Amendment Right to Free Speech by building a fan web site dedicated to his favorite amateur racecar driver.
c. The Respondent agrees that he is not commonly known or identified by the name "Nature�s Window, "Natures Window", or "Paul Puckett."
d. The Respondent is in the process of acquiring a mark for "". Upon approval the respondent plans to sell mounted photographs, unmounted photographs, photographic prints, posters and greeting cards.
e. The Respondent is making legitimate noncommercial or fair use of the domain . The Respondent is using the domain to showcase trips that the Respondent has been on in the last two years. The Respondent is not trying to harass or defame the Complainant with the domain; he is simple executing his 1st Amendment Freedom to Free Speech. The Respondent is not currently nor will ever link involuntarily, users to a competitor of the Complainants.
f. The Respondent has conceded the use of to the Complainant as a show of good faith. The Respondent was going to build a web site that showcased the talents of an amateur racecar drive named Paul Puckett. The purpose of the site was not to defame or harass the Complainant in any way, shape or form. Per Exhibit J the Respondent never threatened to link or to a pornographic web site. The Complainant drew that conclusion.
5.9 The Respondent registered the domain with the sole purpose of selling mounted photographs, unmounted photographs, photographic prints, posters and greeting cards. The domain was not registered in bad faith, as shown by the following:
a. Respondent has applied for a trademark for the mark, "". The Complainant sells birdcages per Exhibit A of the Complaint. The Respondent is not competing with the Complainant because the Respondent is selling nature related photography.
b. Respondent registered the domain name in order to sell mounted photographs, unmounted photographs, photographic prints, posters and greeting cards. The Respondent was not aware of any rule or law restricting the sale of a domain. However, the usual look of the web site is dedicated to trips taken by the Respondent in accordance with his 1st Amendment Right to Free Speech.
c. The Respondent did not register the domain name to prevent the Complainant from registering the name. The Respondent simple was luckier than the Complainant.
d. The Respondent is not diverting consumers away from the Complainant�s business. The domain name gets barely one unique visitor a day.
e. The Respondent is not trying to attract Internet users to a competitor of the Complainant.
f. The Respondent is not trying to harass or defame the Complainant. The Respondent simple exercised his 1st Amendment Right to Free Speech. Amendment Right to Free Speech. The link to learn more about Paul Puckett was not to defame or harass the Complainant. I decided to provide a link to one of my favorite amateur racecar drivers.
g. The Respondent never threatened the Complainant regarding linking either or to a pornographic web site. The Respondent was simple stating a fact.
h. The Respondent has no intention of selling the domain name . The Respondent does not wish to create any confusion for the Complainants potential customers. This is clearly shown by the fact that the Respondent is attempting to obtain a trademark for the mark, ""
i. The Respondent has moved three times in the last year. It is hard to maintain all of the records associated with all the domains he owns. The Respondent has provided the true and correct information for the domain name at all times. Upon approval of the mark, "" by the USPTO, the Respondent plans to name the company, N. This is the reason the respondent registered the domain name under Natures Window. This was not done to deceive anyone.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 Respondent, in Response paragraph f, has conceded the "" domain name to the Complainant. Accordingly, the Panel will review only the Complaint as it relates to the domain name "".
6.3 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark NATURE�S WINDOW and is satisfied that the Complainant has proven ownership of a common law trademark in such expression. Furthermore, the Panel finds that the domain name "" is identical or confusingly similar to the trademark in which the Complainant has rights.
6.4 The Panel has carefully reviewed the allegations of the Respondent that it has rights or a legitimate interest in respect of the domain name "" as well as his First Amendment claims as to free speech. In Policy paragraph 4c, three circumstances are provided as demonstrations of rights or legitimate interest. Concerning the first and second paragraphs, Respondent has not shown that it has used NATURE�S WINDOW or had demonstrable preparations to use NATURE�S WINDOW before notice of this dispute or has been known by that name. The third aspect of Policy paragraph 4c is to examine legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent has not shown any legitimate non-commercial use or fair use. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain name.
6.5 Finally, the Panel needs to examine the issue of bad faith. The record has ample evidence of Respondent�s bad faith, under all four sections of Policy 4 (b). The Respondent attempted to sell the domain name to Complainant for a profit in violation of Policy 4 (b)(i), has registered the domain name and also "", the Complainant�s personal name, to prevent him from doing so as a pattern of disruption in violation of Policy 4(b)(ii), has diverted business from the Complainant to a competitor�s website to divert business from Complainant in violation of Policy 4(b)(iii), and create confusion in his website as to sponsorship in his own website in violation of Policy 4(b)(iv), all while threatening to link the website in issue to a pornographic site. Accordingly, the Panel finds that Complainant has met its burden of proof as to Policy 4(a)(iii) in that the domain name was registered and it being used in bad faith.
7. Decision
7.1 The Panel decides that the domain names "" and "" are identical or confusingly similar to the trademarks and name of Complainant, that Respondent has no rights or legitimate interests in such domain names, and that the domain names in issue have been registered and are being used in bad faith.
7.2 The Panel hereby orders that the registrations of the domain names "" and "" be transferred to Complainant.
Clark W. Lackert
Presiding Panelist
Date: June 12, 2000
Full & Egal Universal Law Academy