WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Action Sports Videos v. Jeff Reynolds
Case No. D2001-1239
1. The Parties
The Complainant is Action Sports Videos, a California company whose address is P.O. Box 230516, Encinitas, California 92023, U.S.A. The Complainant is represented by Matthew Miller, Esq., 755 Fresca Court, Solana Beach, California 92075, U.S.A.
The Respondent is Jeff Reynolds, whose address is 141 Suburban Road, San Luis Obispo, California 93401, U.S.A.
2. The Domain Name and Registrar
The domain names in dispute are: and .
The registrar for the disputed domain names is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be decided in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed in hard copy on October 11, 2001. On October 17, 2001, the Center requested that the Registrar NSI ascertain the registrant for the domain names and . On October 18, 2001, NSI informed the Center that the registrant was the Respondent, that the domain names were active, and that the Policy was in effect.
Initially, the Complainant failed to file an electronic version of its Complaint and to pay the required U.S. $1,500 filing fee. Subsequently, on October 17, 2001, the Center informed the Complainant of these deficiencies and on the same date the Complainant corrected them.
On October 26, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent's Response was received by the Center in hard copy on November 15, 2001. On November 26, 2001, the Center informed the Respondent of a certain deficiency in the Response: i.e. the Response did not include the full statement required by the Rules, paragraph 5(b)(viii). On November 28, 2001, the Respondent corrected that deficiency.
The Administrative Panel submitted a Declaration of Impartiality and Independence on November 25, 2001, and the Center proceeded to appoint the Panel on November 29, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision was due by December 13, 2001.
4. Factual Background
The Complainant and Respondent had a business relationship of several years standing prior to disagreements that have resulted in Complainant launching this proceeding. Complainant, Action Sports Videos, sells sports action videos on the internet. The Respondent, Jeff Reynolds and Video Action Sports, Inc., is both a wholesaler and a retailer of sports action videos. The Respondent appears to have been in business a number of years before the Complainant, and in recent years has been a wholesale supplier to the Complainant.
On November 17, 2000, the Complainant was awarded a service mark registration for the mark "Action Sports Videos" no. 2,463,025 on the Supplemental Register of the United States of America. The Respondent has a pending application to register the mark "Video Action Sports, Inc." on the principal register of the Patent and Trademark Office of the United States.
The Respondent registered the two disputed domain names, and on January 31, 2000. The Complainant wrote to the Respondent on September 6, 2000, demanding transfer of the disputed domain name . It does not appear the Respondent ever reacted to this letter, and the Complainant now seeks transfer of both and in this proceeding.
5. The Parties' Summarized Contentions
Complainant's Contentions:
- Complainant, Action Sports Videos ("ASV"), is the owner of a United States Service Mark Registration for the mark "Action Sports Videos", service mark registration no. 2,463,025 in international class 35 (Complaint Exhibit C).
- Complainant also is the owner of the registered domain name . Complainant's parent company, Advanced Enterprises, registered the domain name on behalf of the Complainant (Complaint Exhibit D).
- Since April 2, 1999, and continuing through the present, Complainant has continuously used the mark Action Sports Videos in connection with the marketing and sales of sports videos via the internet.
- The web site A is dedicated to marketing and selling various sporting videos, such as surfing, skiing, and skating (Complaint Exhibit E).
- Complainant has expended substantial time, money and resources advertising, marketing and promoting its web site (Complaint Exhibits F and G).
- Complainant has recently learned that Respondent, Jeff Reynolds, has registered the domain names and . Jeff Reynolds is the President of Video Action Sports, a company that competes with Complainant in selling videos via the internet.
- Respondent registered the disputed domain names and on January 31, 2000. These domain names are confusingly similar, and in fact, almost identical, to the domain name owned by Complainant.
- Respondent's domain name is identical to Complainant's service mark Action Sports Videos. The only difference is the addition of the ".net" suffix.
- The only difference between Respondent's and Complainant's domain names is that Complainant's is plural, while Respondent's is singular, having deleted the "s" immediately preceding the .com suffix. The addition or deletion of one letter, or some other typographical error, is not significant in determining similarity.
- Computer users will likely confuse the Complainant's domain name with the Respondent's almost identical domain name, while looking for Complainant's website.
- Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by either domain name, either as a business, individual or organization.
- Respondent has not made a legitimate noncommercial use of the domain names. The main purpose of Respondent's domain is the commercial sale of sporting videos. Any possible use of the disputed domain name by Respondent will only serve to illegitimately disrupt the business of Complainant.
- Any such use is likely to confuse the public as to the source of Respondent's goods and will suggest a relationship with, approval by or affiliation with the Complainant, which Respondent does not have.
- The sole purpose of Respondent's web site is to siphon off customers who mistakenly omit the "s" when attempting to access Complainant's web site, and then redirect them to Respondent's web site. (The Panel has taken Complainant�s reference to to be a reference to operated by the Respondent (Response, paragraph 4).) The website is not used for any other purpose than to redirect such customers.
- All of Respondent's advertisements are for either or (Complaint Exhibit H).
- Respondent registered and began using the disputed domain name to intentionally attract visitors to his web site for commercial gain by creating a likelihood of confusion. Respondent intentionally chose the domain name to capitalize on customers who mistakenly omit the "s" when attempting to access Complainant's web site. Customers are then redirected to Respondent's web site. This practice is considered a use in bad faith.
- The Respondent is intentionally using the domain name to disrupt Complainant's business. Although the disputed domain name was originally registered on January 31, 2000, it was not active until July 2000. In May 1999, Complainant informed Respondent of his web site and nature of business. At this time Respondent advertised itself as a dealer-to-dealer company, not targeting consumers via the internet. Complainant regularly purchased sporting videos from Respondent to stock his inventory. However, in March 2000, Respondent terminated all business with Complainant, explaining that Respondent now intended to sell sporting videos directly to consumers via the internet.
- Respondent then offered Complainant $5,000 for his domain name and company. Complainant declined the offer. Shortly after the dispute Respondent began using the disputed domain name to intentionally disrupt Complainant's business and redirect customers to Respondent's competing web site (Complaint Exhibit F). The disputed domain name is not used for any other purpose than such redirection. It does not function independently as a commercial site, and is not advertised as such. All of Respondent's advertisements are exclusively for either or (Complaint Exhibit H).
- In further support of the theory that Respondent is intentionally using the domain names to disrupt and prey upon Complainant's business, Respondent's company, Video Action Sports has registered at least three other domain names strikingly similar to other companies' registered trademarks: , and (Complaint Exhibit I).
- Respondent registered the disputed domain names as well as in bad faith. These web sites are not currently active. Respondent registered them in order to prevent Complainant from utilizing such domain names.
- The two disputed domain names, and , should be transferred to Complainant.
Respondent's Contentions:
- Respondent Video Action Sports, Inc., was established in 1988 and filed for incorporation on October 9, 1990, in the State of California, U.S.A.
- Respondent is a distributor of various professional mainstream and action sports videos to retailers of all types throughout the world. Respondent is a licensee, sub-licensee or authorized distributor for a total of 39 different sports with approximately 2,600 titles in various sports. The sports include, Major League Baseball, National League Football, National Hockey League, National Basketball Association and other professional sports. Respondent is also the industry leader in distribution of Skateboard, Snowboard, Inline Skating, Skiing, BMX, Motocross and other various extreme action sports videos and DVD's.
- At present, Respondent has a business-to-business site, , and a retail site, .
- Respondent began its internet consumer retail business in 1996 by registering the domain name (October 18, 1996) with InterNic registration services.
- On June 4, 1998, Respondent decided to remove the hyphens in this domain name and changed the provider to Yahoo Shopping. The new site name was the disputed domain name . Respondent found the exposure of being a partner with Yahoo dramatically increased its consumer retail sales as the increase in internet access began to rise exponentially. Sales did rise dramatically through the marketing of titles in consumer magazines and referring to the web site in those ads.
- Because of complaints from competing retailers, the Respondent decided to change the name of its website to the disputed domain name, . The Respondent tried to register the name and found it was already registered and discovered that a John Erik Drury was the registrant.
- During this time frame Respondent discovered the Complainant's new site with a name similar to Respondent's, switched around, and found out that Respondent was in fact selling videos to the site through a totally different company name, Sonicvision. Consumers were being confused by the Complainant's twisting of Respondent's established domain name.
- During 2000 Respondent discovered the Complainant was selling videos on which Respondent had an exclusive licensing deal, such as Miracle Boy and Nyquist.
- Action Sports Videos is a common phrase, not a corporate name established in the marketplace. Respondent established a service for the name with a first use 8 years ahead of the Complainant. The Video Action Sports, Inc. name is well known in the action sports marketplace as the place to buy action sports videos.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names, and transferred, the Complainant must prove the following (the Policy, para 4a(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has produced a copy of its service mark registration "Action Sports Videos", no. 2,463,025 dated November 17, 2000, on the Supplemental Register of the Patent and Trademark Office of the United States, international class 35 for online retail store and wholesale distributorship services featuring videos, DVD's and soundtracks. The Panel observes that the Complainant's registration on the Supplemental Register denotes a descriptive mark without secondary meaning. Nonetheless, the Panel still finds the Complainant has standing to initiate this proceeding because the Policy at paragraph 4a(i) requires only that the Complainant have (mark) "rights" in the disputed domain name, strong or weak though they be.
The first disputed domain name, , is confusingly similar to the Complainant's mark Action Sports Videos since removing the "s" making video singular is a de minimis modification. Secondly, as Complainant points out, it is well-settled that changing the domain level indicator from ".com" to ".net" has no effect on the identicality of the underlying domain name to the Complainant's service mark. The Panel thus finds the Respondent's disputed domain names, and are confusingly similar and identical to the Complainant's service mark Action Sports Videos. (ICANN/WIPO Case No. D2000-1686, Delta Air Lines v. Stonybrook Investments, Ltd., January 22, 2001; ICANN/e-Resolution Case Nos. AF-230a and AF-230b, Smoky Mountain Knife Works v. Deon Carpenter, July 3, 2000.)
Legitimate Rights or Interests
The Complainant contends the Respondent has been commonly known by the name Video Action Sports and not by the name Action Video Sports. The Complainant also contends the Respondent is not making a legitimate or noncommercial use of the disputed domain names, but the Respondent itself readily concedes this point and insists it is conducting a business using the disputed domain names.
The Policy provides at paragraph 4c(i-iii) that the Respondent may come forward and demonstrate legitimate rights and interests on one of several grounds. In particular, paragraph 4c(i) provides the Respondent is demonstrating legitimate rights and interests if:
"before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services".
In the Panel's view, the Respondent has done just this. The Respondent has demonstrated it has used the name Video Action Sports to conduct its business for some years and that it even sold wholesale videos to the Complainant. The Complainant corroborates this in paragraph 12D. of the Complaint. Since the Respondent undoubtedly has rights in Video Action Sports that precede the Complainant's rights in Action Sports Videos, the Respondent also has legitimate rights and interests in the disputed domain names and . The juxtaposition of the words does not change the sense of this descriptive mark.
The Panel finds the relations of the Complainant and the Respondent are intricate and date back several years. During that time there seems to have been acquiescence on both sides about use of various versions of the mark in the disputed domain names. The Panel does not believe it is the function of the Policy to serve to disentangle the conflicting rights of parties to a mark once it is apparent both parties have colorable claims to a mark underlying a disputed domain name. (See, e.g., ICANN/WIPO Case No. D2000-0006, Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thornton, d/b/a Machines & More, February 28, 2000; and ICANN/WIPO Case No. D2000-0872, Robert Alan Thomas v. Customer Card Services, Inc. d/b/a IAS-UK, October 2, 2000).
The Panel finds the Respondent does have legitimate rights and interests in the disputed domain names, and therefore does not need to proceed to a discussion on bad faith; the Policy requires the Complainant to prevail on each section of the Policy paragraph 4a(i-iii).
7. Decision
The Panel finds the Respondent registered two domain names, and , that are confusingly similar and identical to the Complainant's service mark, Action Sports Videos. However, the Panel also finds the Respondent has legitimate rights and interests in the disputed domain names since Respondent has for years operated a business called Video Action Sports that sells videos and related items featuring "action sports."
Therefore, pursuant to ICANN Policy paragraph 4(a) and Rules paragraph 15, the Panel orders that the disputed domain names and remain registered to the Respondent, Jeff Reynolds.
Dennis A. Foster
Sole Panelist
Dated: December 13, 2001
Full & Egal Universal Law Academy