WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S, Inc. v. Name Administration Inc.
Case No. D2002-1167
1. The Parties
The Complainant is S, Inc., C/O Dave Gullo, President, 26001 Pala St., Mission Viejo, United States of America, represented by Turning Point Law of United States of America.
The Respondent is Name Administration Inc., Grand Cayman, United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill of Dann, Dorfman, Herrell & Skillman, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on December 24, 2002. On December 24, 2002, the Center transmitted by email to D a request for registrar verification in connection with the domain name at issue. On December 30, 2002, D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response January 26, 2003. The Response was filed with the Center January 24, 2003.
The Center appointed Alan L. Limbury, Bradley A. Slutsky and G. Gervaise Davis III as panelists in this matter on February 7, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding is English.
4. Factual Background
Complainant is an Internet-only retailer of snowboards and snowboarding accessories. Mr. Dave Gullo is President of Complainant. . According to Complainant, it registered the disputed domain name through Network Solutions in September 1998, together with the domain names , and , all of which domain names it has used in connection with its business since that time.
According to a chronology apparently sent by Complainant to Network Solutions, as at July 23, 2002, the disputed domain name was registered in the name Dave Gullo Services. . Shortly thereafter a change in registrant name to the name of Complainant was effected and Complainant paid for renewal of the registration, which was due to expire on September 13, 2002. . After some confusion apparently caused by the registrant name change, Complainant�s money was refunded, Complainant paid a second time, Network Solutions confirmed renewal until September, 2005 but the disputed domain name nevertheless became publicly available and was registered in the name of Respondent on October 21, 2002.
Respondent operates a "portal" site which redirects website traffic to competitor sites related to snowboarding products, as well as sites related to sporting goods and other general goods and services. . Respondent gains revenue from directing website traffic to advertisers who offer snowboards for sale and the disputed domain name is being actively used in connection with advertising vendors of snowboards and related products.
5. Parties� Contentions
A. Complainant
Complainant alleges that it has common law trademark rights in the marks SNOWBOARDSFORSALE.COM, SNOWBOARDS-FOR-SALE.COM, SNOWBOARDS4SALE.COM and SNOWBOARDS-4-SALE.COM. . Complainant�s web business using the mark allegedly is consistently ranked as the top result on search engines when querying for snowboard equipment for sale and receives approximately 3 million page views per year. . Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant�s marks.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name and has registered and is using it in bad faith. . Complainant asserts that it can be inferred from the timing of the registration and the fact that Respondent does not itself offer snowboarding equipment for sale that Respondent registered the disputed domain name for the purposes of disrupting Complainant�s business and diverting customers away from Complainant.
B. Respondent
Respondent asserts that the term "snowboards for sale" is not a trade or service mark of Complainant but a generic term. . Respondent alleges that the use to which Respondent puts the disputed domain name demonstrates its legitimate interest in it. . Respondent asserts that Complainant has shown neither bad faith registration nor bad faith use. . Respondent also states that it is not responsible for the conduct of Network Solutions.
6. Discussion and Findings
Paragraph 15(a) of 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.
A. Identical or Confusingly Similar
Where the mark alleged is a highly descriptive term, a party seeking to establish exclusive rights carries a heavy burden of proof in removing the term from the public domain: Bar Code Discount Warehouse, Inc. v. Barcodes, Inc., WIPO Case No.D2001-0405; Pet Warehouse v. P, Inc., WIPO Case No. D2000-0105. Complainant must prove secondary meaning. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition: Amsec Enterprises, L.C. v. McCall, WIPO Case No. D2001-0083; Philatelic.Com v. Peter I. Jeong, NAF Case No. FA0204000112547.
Complainant does not assert trademark rights in the descriptive, if not generic expression "snowboards for sale" but in SNOWBOARDSFORSALE.COM, SNOWBOARDS-FOR-SALE.COM, SNOWBOARDS4SALE.COM and SNOWBOARDS-4-SALE.COM. . However, Complainant has provided no evidence to support its assertion that any of these expressions have become distinctive of Complainant or of its goods or services. . Significant evidence of distinctiveness would be required for the terms to attain trademark status, such as five years of exclusive use as specified in 15 U.S.C. Section 1052(f). Here there is neither five years of use nor is the use exclusive.
The ".COM" element, so far from serving to distinguish Complainant from other sellers of snowboards, merely conveys a domain address. . It is only where a domain name has been shown by appropriate evidence to have acquired distinctiveness as a trademark that it may be protected under the Policy: see, for example National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini WIPO Case No. D2002-1011.
Here, the disputed domain name is identical to the expression SNOWBOARDSFORSALE.COM, but this does not avail Complainant because Complainant has failed to establish trademark rights.
B. Rights or Legitimate Interests
Respondent registered an available descriptive, if not generic domain name and the evidence in the record indicates that Respondent is using the domain name in connection with the category of goods which the domain name describes. . Complainant has failed to establish this element of its case.
C. Registered and Used in Bad Faith
Respondent is not shown to have done any more than to register a generic domain name that was available for registration and use it in connection with goods which the domain name describes. . The record does not establish that Respondent had knowledge of Complainant or intended to disrupt its business.
Whilst the Panel is sympathetic to the plight of Complainant in light of the evidence in the record indicating that the disputed domain name was made available for registration after Complainant�s renewal payment apparently was paid and after Complainant was informed that its registration had been renewed, Respondent is not shown to have been responsible for that conduct. . The propriety of that conduct and the extent, if any, to which legal avenues outside the Policy may be available to address those circumstances are not issues this Panel is able to address under the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Presiding Panelist
Bradley A. Slutsky
Panelist
G. Gervaise Davis III
Panelist
Date: February 19, 2003
Full & Egal Universal Law Academy