WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Gate Bridge, Highway and Transportation District v. Alexander Sayer , Ben Nepomuceno , Golden Gate Design & Furniture Co.
Case No. D2003-0157
1. The Parties
The Complainant is Golden Gate Bridge, Highway and Transportation District of San Francisco, California, United States of America, represented by Cynthia LaBerge, Hanson Bridgett Marcus Vlahos & Rudy, LLP of San Francisco, California, United States of America.
The Respondents are Alexander Sayer, Ben Nepomuceno, Golden Gate Design & Furniture Co. of San Jose, California, United States of America; of San Francisco, California, United States of America; c/o Richard Bulan of San Francisco, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2003. On February 27, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On March 4, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that "saver, alyxnder" is listed as 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 "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2003. The Respondents did not submit any response. Accordingly, the Center notified the Respondents of default on March 27, 2003.
The Center appointed William L. LaFuze as the sole panelist in this matter on April 2, 2003. The Panel finds that it was properly constituted. 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.
4. Factual Background
Complainant (also sometimes referred to herein as the "District") alleges facts which are not rebutted by Respondents and, for the reasons set forth in Paragraph 6B, are therefore assumed to be correct. Complainant is a California Special District created pursuant to enabling legislation enacted by the California State Legislature. Complainant was formed to design, finance, construct, and operate the Golden Gate Bridge in the San Francisco Bay Area. Since at least as early as 1970, Complainant has used the term "Golden Gate Bridge" as a mark in connection with transportation services and bridge operation services. Since at least as early as June of 1983, Complainant has used the term Golden Gate Bridge to sell goods including posters, books, clothings, and souvenirs of the Golden Gate Bridge. Over the years, Complainant has spent considerable sums in advertising and has built significant goodwill and name recognition in connection with the term "Golden Gate Bridge." Complainant has registered numerous domain names, including , , and . Subsequent to long prior use of "Golden Gate Bridge" by Complainant, and after Complainant registered and used the domain name , Respondents registered the domain name with Network Solutions, Inc.
5. Parties Contentions
A. Complaint
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
a. On December 4, 1928, the Golden Gate Bridge and Highway District ("the District") was formed to design, finance, and construct the Golden Gate Bridge ("the Bridge"). Almost eight and a half years later, on May 27, 1937, the Bridge was opened to pedestrian traffic.
b. On November 10, 1969, the California State Legislature passed Assembly Bill 584 authorizing the District to develop a transportation facility plan for implementing a mass transportation program, which would include any and all forms of transit, including bus and ferry. At that time, the word "Transportation" was added to the District's name to indicate its new commitment to public transportation.
c. Since August 15, 1970, long before any acts by Respondents complained of herein, the District has used its mark, "GOLDEN GATE BRIDGE HIGHWAY & TRANSPORTATION DISTRICT," in its current form (whether by spelling out "and" or by an "&") in a substantially exclusive and continuous manner in interstate commerce in connection with its transportation services, and bridge operation services (collectively referred to as "Services"). The District used its "GOLDEN GATE BRIDGE HIGHWAY & TRANSPORTATION DISTRICT" mark in interstate commerce in a different form since at least as early as May 28, 1937, the day after the Bridge opened to pedestrian traffic.
d. In 1986, the California State Legislature enacted California Streets and Highway Code section 27563 to provide the District with remedies in the event of unauthorized use of the District's "GOLDEN GATE BRIDGE HIGHWAY & TRANSPORTATION DISTRICT" mark, and any mark or name incorporating the words "GOLDEN GATE BRIDGE," (collectively referred to as "Mark").
e. Pursuant to California Streets and Highway Code section 27563, the District has statutory rights in its Mark.
f. Since June 21, 1983, the District has used its Mark to sell goods including, but not limited to, posters, books, clothing, and souvenirs of the Golden Gate Bridge (collectively, the "Goods"), at the District's Golden Gate Bridge Gift Store.
g. The District has generated significant revenues over the years in offering its Services and selling its Goods in interstate commerce under its Mark. During the last five years alone, the District generated revenues in excess of $80,000,000 per year.
h. The District has also expended significant sums in advertising and promoting its Mark. For example, during the last five years the District spent over $195,000 per year. The District has advertised in numerous publications, including, but not limited to, schedules, visitors� guides and San Francisco travel brochures distributed to people from all over the world who visit or plan to visit San Francisco.
i. On September 27, 2001, the District filed a service mark application with the U.S. Patent and Trademark Office for "GOLDEN GATE BRIDGE HIGHWAY & TRANSPORTATION DISTRICT," to designate its various Services, which was registered on December 31, 2002, Registration no. 2,668,533.
j. Before any acts of the Respondents complained of herein, the District also used the Internet to promote its Services and Goods. In that regard, it engaged in various efforts to educate the relevant public that any entity incorporating the words "GOLDEN GATE BRIDGE" in its name, especially an entity in the San Francisco Bay Area, could only mean the District. One such effort was to register domain names incorporating its Mark. On March 13, 1996, the District registered its first domain name, . Today, the District owns seven domain names incorporating its Mark in full or abbreviated form.
k. An additional effort the District made to educate the relevant public regarding its Mark was to place a statement on its home Web page that the "GOLDEN GATE BRIDGE" name is protected by California Streets and Highway Code section 27563. Since the District's website receives a high volume of traffic (1,138,765 hits between June - August, 2002, at the District's and domain names alone), the public is aware that services and goods promoted in connection with the District's Mark on the Internet are services and goods that originate only with the District. As such, the District's Mark is well known among Internet users.
l. Inasmuch as the District has always used "GOLDEN GATE BRIDGE" as part of its Mark, the relevant public has come to understand that services and goods offered by an entity incorporating the words "GOLDEN GATE BRIDGE" in its name (or any abbreviation thereof, especially in the San Francisco Bay Area) are Services and Goods that originate with the District. As such, the District's Mark has become distinctive.
m. On April 18, 1996, 68 years after the District was created, over 30 years after the District began using its current Mark in commerce (approximately 59 years after the District used its original Mark in commerce), and approximately one month after the District registered its first domain name, , Richard Bulan of Golden Gate Design, a local San Francisco Bay Area businessman, registered the domain name to advertise his business, the "Golden Gate Bridge Furniture Co."
n. As set out in more detail below, the District brings this UDRP complaint against all three Respondents on the ground that they are nothing more than fronts for Richard Bulan of Golden Gate Design. The evidence suggests that Bulan has been engaging in activity akin to "cyberflying": upon receiving notice of this UDRP complaint, Bulan changed ownership contact details online for domain name to reflect his cousin, Nepomuceno, and then to Sayer, as the new registrants. However, continues to link to Bulan�s business at . The purported "transfer" of to his family and/or friends is merely Bulan�s attempt to conceal that he is still the true owner of . As the only Respondent who is commercially benefiting from , Bulan is the primary Respondent in this proceeding.
o. Although Golden Gate Design�s domain name is an abbreviation, it is nonetheless confusingly similar to the District's Mark. Precisely because the District has statutory and common law rights in its Mark and its Mark is well-known among Internet users, there is more of a likelihood of confusion between the District's Mark and Golden Gate Design�s domain name.
p. That Golden Gate Design�s domain name, is confusingly similar to the District's Mark is further evidenced by Bulan�s intent in registering it, using it, re-registering it, and concealing his ongoing ownership of it. Bulan named his furniture business and registered the domain name counting on the likelihood of confusion with the District�s Mark to attract Internet users to the website for commercial gain.
q. Moreover, in response to the District's first cease and desist letter, Bulan agreed to change both his business name ("Golden Gate Bridge Furniture Co.") and domain name, in essence acknowledging that he had infringed the District's Mark and violated the applicable statute. Although Bulan has changed his business name to "Golden Gate Design & Furniture Co., he has failed to relinquish his registration to the domain name, even though he has been using a new domain name, for approximately three years. Bulan has failed to transfer the domain name to the District precisely because of the volume of traffic the domain name attracts.
r. The registration and use of the domain name is even more confusing since Bulan�s Golden Gate Design business operates in the San Francisco Bay Area, where the relevant public has come to understand that any entity incorporating the words "GOLDEN GATE BRIDGE" (or any abbreviation thereof) in its name means the District.
s. In addition, the likelihood of confusion is exacerbated by the content of the website to which links, i.e., . The "Home" page at displays a picture of the Golden Gate Bridge, creating the impression that the District either owns, sponsors or endorses Bulan�s furniture business. The "About the Bridge" Web page at contains an entire Web page devoted to the history of the Golden Gate Bridge, causing further confusion.
t. Finally, even though the "�www." website has a disclaimer at the bottom of its "Home" page, it is not visible until the user scrolls to the very bottom of the page. The disclaimer, therefore, is insufficient to dispel any confusion that the parties are not affiliated. Moreover, this disclaimer was only added as a result of the District's demands that Bulan add the disclaimer to the website, AND move his website to another domain name. It was not placed on the website of Bulan�s own accord.
2. The Respondents have no rights or legitimate interests in respect of the domain name;
a. On April 20, 1999, the District sent Bulan its initial cease and desist letter, advising that his business name and domain name were confusingly similar to the District's Mark and in violation of the California state statute, and requested that he change both. In its letter, the District made clear that it had no dispute with the use of the words "GOLDEN GATE" when used alone without the word "BRIDGE."
b. After months of negotiation, both with Bulan and later with his counsel, M.J. Bogatin, Bulan agreed to change his business and domain names. On January 11, 2000, he registered the domain name , and effective April 30, 2000, changed his business name from "Golden Gate Bridge Furniture Co." to "Golden Gate Design & Furniture Co." With regard to the domain name, Bulan agreed to relinquish his domain name registration "as soon as the hit count drop[ped]," so that his customers could get used to the new domain name, .
c. After Bulan�s counsel no longer represented him, the District followed up directly with him in writing and by telephone on numerous occasions in an attempt to arrive at a firm date by when Bulan would relinquish his domain name registration, and correct factual inaccuracies on his website. Bulan initially cooperated with the District, but then stopped returning the District's telephone calls or acknowledging the District's follow-up letters. Even though a significant amount of time has passed for Internet users to discover Bulan�s new business name and Web address at "," he did not relinquish his domain name registration.
d. Bulan has never had any rights or legitimate interests in the domain name, regardless of the fact that he uses some steel remnants from the Bridge to build his furniture. Bulan has no affiliation with the District, and no license or permission to use the District's Mark, and any unauthorized use of the District's Mark, including in his business name, and in his confusingly similar domain name, is in violation of U.S. federal and California state law.
e. Moreover, as a local San Francisco Bay Area businessman, Bulan had knowledge of the District's Mark and at least constructive, if not actual, notice of the applicable California state statute well in advance of registering the domain name, yet he still chose to register the domain name in violation of U.S. federal trademark law and California state law.
f. As further evidence that Bulan has no rights or legitimate interests in the domain name, Bulan�s business has officially been known as "The Golden Gate Design & Furniture Co." for approximately three years now. Bulan has been advertising accordingly ever since, including in the San Francisco Pacific Bell White Pages directory and on its own website, where his email address is listed as info@. Bulan has absolutely no rights to the domain name: he had no right to use the domain name in the first place, much less any rights to use it now that it corresponds to a business name by which he is not known.
g. Bulan�s true intent has always been to register and use the domain name to take advantage of the confusion his website would cause among Internet users regarding the sponsorship/ownership of that website. Bulan had no intention of ever relinquishing the domain name as his ongoing actions make clear.
h. After Bulan had agreed to relinquish his registration to , he instead re-registered it. The registration now does not expire until April 19, 2005.
i. After Bulan re-registered , the District wrote to Bulan on September 24, 2002, enclosing a courtesy copy of the present UDRP complaint, and requesting that Bulan provide his written assurances that he would relinquish his registration to the domain name by October 1, 2002.
j.� Upon receiving no response from Bulan, the District followed up with him by telephone on October 4, 2002, and agreed to extend the deadline for him to either delete or transfer the registration of until October 18, 2002. Again, upon hearing nothing from Bulan by October 21, 2002, the District sent a follow-up email. Still Bulan did not respond.
k. Thereafter, the District continued to monitor the status of as well as leave telephone messages for Bulan.
l. On or about December 27, 2002, the District discovered that instead of being deleted, was now "registered" to Nepomuceno. During the short time that was "registered" to Nepomuceno, it linked to .
m. On January 3, 2003, the District contacted and reached Bulan who stated that he had "sold" the domain name to "someone else" for $35, and that this person would be using the domain name "for a different purpose." Bulan further stated that he had informed the new registrant of his ongoing dispute with the District over the domain name.
n. Although the WhoIs database did not list a telephone number for the purported new registrant of , the District further investigated and found a number for Nepomuceno. The only number listed in the WhoIs database was a false number: a fax number belonging to a Rebecca Delgado.
o. On January 20, 2003, the District contacted Nepomuceno. Nepomuceno�s first question was how the District had found his telephone number. He was very evasive, refusing to answer any questions, including about his plans for the domain name, and said that he would have to call back. The only question Nepomuceno did answer was about whether Bulan had informed him of the District�s ongoing dispute with Bulan over the domain name, to which Nepomuceno responded "he never told me anything."
p. After not hearing back from Nepomuceno, the District wrote to him on January 23, 2003. In that letter the District requested Nepomuceno�s written assurance that he would commence transfer of the domain name to the District by February 3, 2003.
q. On February 4, 2003, after receiving no word from Nepomuceno, the District again followed up with him. Nepomuceno stated that he did not receive the District�s January 23, 2003, letter, although he confirmed that it was mailed to the correct address. He further stated that he had nothing to do with the domain name, that he did not register it, did not pay Bulan for it -- contrary to Bulan�s assertions -- and that Bulan was, in fact, his cousin!
r. On February 6, 2003, the District wrote a letter to Nepomuceno confirming his statements in the February 4, 2003, telephone conversation, and requested confirmation by February 7, 2003, that he would transfer the domain name to the District.
s. Not having heard from Nepomuceno by February 10, 2003, the District again followed up with him by telephone. In that conversation, Nepomuceno stated that he was unwilling to get involved, and that his cousin was "just going to transfer the domain name to someone else."
t. On or about February 13, 2003, the domain name was in fact "transferred" a second time. As with Nepomuceno, the contact details in the WhoIs database for the purported new registrant, Sayer, are incomplete: there is no telephone number. Moreover, Sayer�s contact details are also incorrect.
u. Despite Bulan�s assertions in follow-up telephone calls with him on February 12, and 13, 2003, that he had nothing to do with the "transfer" of , the domain name continues to provide a link to Bulan�s business, and the server details between the three registrants are too close for coincidence.
v. The District sent its final letter to all three registrants on February 19, 2003. As of the filing of the Complaint in this action, no one has responded.
w. In sum, that Bulan 1) has no relationship with the District and no authority to use the District's mark, 2) had knowledge of the District's Mark before registering its domain name, 3) essentially acknowledged infringing the District's Mark and violating the applicable statute, 4) has been using, and advertising under a new business name and domain name for approximately three years, 5) has made no attempt to phase out , 6) has re-registered the domain name instead of relinquishing it, 7) has "transferred" first to his cousin, Nepomuceno, and then to Sayer, and 8) is the only Respondent benefiting from the registration of ," all prove that Bulan is the primary Respondent in this proceeding and that his intent in registering and using the domain name has always been to divert Internet users to his site for commercial gain.
y. Likewise, Nepomuceno and Sayer do not have any rights or legitimate interests in . Like Bulan, they are both Bay Area residents who have no relationship with the District and no authority to use the District's mark. Both had knowledge of the District's Mark before purportedly registering the domain name, and neither one is commonly known as . Other than the telephone calls the District initiated with Nepomuceno, neither one has responded to the District�s correspondence.
3. The domain name was registered and is being used in bad faith.
a. As set out above, Bulan�s bad faith is evidenced by his intent in registering and using the domain name to create a likelihood of confusion with the District�s Mark to attract Internet users to his website for commercial gain. As a San Francisco Bay Area businessman, Bulan knew the District's Mark was distinctive and well-known, yet he still registered a domain name in violation of U.S. federal law and California state law, hoping to divert traffic and benefit financially therefrom.
b. Bulan�s bad faith is also evident from his failure to relinquish his registration to the domain name, despite his agreement to do so, his re-registration of the domain name, his establishment of a new business name and domain name approximately three years ago, and his subsequent "transfer" of to two family members and/or friends. Bulan�s latest actions closely resemble "cyberflying," i.e., transferring a domain name to others upon notice of a complaint. No sooner had Bulan received a courtesy copy of the present complaint, than the domain name was transferred. Bulan had only to make changes to his domain name ownership online without any of the subsequent Respondents� knowledge, which is what he did. This is corroborated by Bulan�s own cousin, Nepomuceno, who had no notice of his own purported ownership of , and who stated that his cousin was "just going to transfer the domain name to someone else" after him, which Bulan did.
c. While Nepomuceno and Sayer are merely pawns in Bulan�s game, they are not without blame. Not only did they willingly stand in for Bulan as the owners of , they are also Bay Area residents who had notice of the District�s well-known Mark, and yet they have refused to respond to the District�s various correspondence. Their bad faith is further evidenced by their passive holding of the domain name, the link at to Bulan�s business, and the use of false and incomplete contact information. The Respondents� true intent has always been to allow Bulan to retain , because Bulan is realizing a commercial gain from it that he is simply unwilling to forego.
d. When taken together, all of Respondents� actions are clear evidence of their bad faith.
B. Respondent
The Respondents did not reply to the Complainant�s contentions.
6. Discussion and Findings
A. Applicable Standard for Transfer
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
B. The Effect of Respondents� Failure to File a Response
A Respondent is not obliged to participate in a domain name dispute proceeding. But, if it fails to do so, asserted facts that are not unreasonable are taken as true and the Respondent is subject to the inferences that flow naturally from the information provided by the Complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925. Accordingly, all asserted facts in the Complaint that are not unreasonable are taken as true.
C. Findings
1. Identity or Confusing Similarity between the domain name and Complainant's trademark in which it has rights
Complainant�s asserted prior use and ownership of the mark "Golden Gate Bridge" in various forms are uncontested and taken as true.
Complainant�s name and mark "Golden Gate Bridge" is confusingly similar to , which has been registered as a domain name by Respondents.
Consumers have used Complainant�s name and mark in an attempt to locate Complainant on the Internet and, instead of finding Complainant�s webpage, they were directed to that of Respondents�. This evidence supports a finding of likelihood of confusion.
Complainant has established this element.
2. Rights or Legitimate Interests in the Domain Name by the Respondent
Respondents are not commonly known by the domain name at issue and have not acquired trademark or service mark rights in such domain name. Respondents have not been given permission by Complainant to use . There is no evidence proffered by Respondents to show that they have any rights or legitimate interests in the domain name in question.
Accordingly, Complainant has established this element.
3. Registered and Used in Bad Faith
The assertions of Complainant, taken as true, are replete with instances of misrepresentations, broken promises, evasion, and outright false statements, particularly by Richard Bulan, which overwhelmingly suggest that the domain name in question was registered, used, transferred, and reregistered in bad faith. The evidence of Respondents� egregious conduct and bad faith is not controverted.
Consequently, Complainant has also established this element.
7. Decision
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William L. LaFuze
Sole Panelist
Dated: April 16, 2003
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