WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richard W. Hartger v. Kerri Taimanglo / C
Case No. D2007-1951
1. The Parties
The Complainant is Richard W. Hartger, President, Cycle Safe, Inc., Grand Rapids, Michigan, of United States of America, represented by Van Dyke, Gardner, Linn & Burkhart, LLP, United States of America.
The Respondent is Kerri Taimanglo, Washington DC, United States of America, and C, Winston Salem, North Carolina, of United States of America, represented by Bell, Davis & Pitt, P.A., United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Registration Technologies, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2007, naming Web Reg, Rarenames and C as Respondents. On January 3, 2008, the Center transmitted by email to Registration Technologies a request for registrar verification in connection with the domain name at issue. On January 9, 2008, Registration Technologies transmitted by email to the Center its response indicating that that the registrants for the domain name are Kerri Taimanglo and C. On January 15, 2008, Complainant filed an “Amendment to Complaint” naming Kerri Taimanglo and C as Respondents. The Center verified that the Complaint, together with the Amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2008. The Response was filed with the Center on February 6, 2008.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on February 19, 2008. 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 Cycle Safe, Inc. has been operating for over 25 years and has sold and continues to sell bicycle-related equipment throughout the United States of America and internationally. See Annex M, Declaration of Richard Hartger. Complainant is the exclusive licensee of the marks CYCLE-SAFE, as used on storage enclosures for bicycles and motorcycles, and CYCLE-SAFE.COM and Design, as used on non-metal, prefabricated bicycle storage and parking structures, stands and racks. The CYCLE-SAFE mark is the subject of U.S. Trademark Registration No. 1,004,814, which issued on February 18, 1975. The CYCLE-SAFE.COM and DESIGN mark is the subject of U.S. Trademark Registration No. 2,761,197, which issued on September 9, 2003. Both registrations are owned by Complainant Richard W. Hartger. See Complaint, Annexes E and F. Cycle Safe also uses the marks CYCLE-SAFE and CYCLE-SAFE.COM and Design on bicycle racks, including street racks and portable event racks for bicycle parking. See Complaint, Annexes G-K, and Annex M, paragraph 3. Complainant Cycle Safe also owns the domain names and , which were created in 1996.
Respondent C is a non-profit organization engaged in promoting bicycle safety and encouraging the active participation of youths and the general public in bicycling. To accomplish these tasks, Respondent distributes pro-active cycling curricula and relevant safety devices to the general public. Respondent uses the disputed domain name to disseminate such information to the public and to promote bicycle safety and awareness.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain name, , is virtually identical and confusingly similar to the registered marks CYCLE-SAFE and CYCLE-SAFE.COM and Design. Complainant notes that a top-level domain designation, such as “.org,” does not distinguish one mark from another.
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that while Respondent represents itself on its website as a community-based non-profit organization located in Winston-Salem, North Carolina that was founded in 2006, a search of the records of North Carolina Secretary of State does not reveal a business registration for “c.,” “cyclesafe,” or “cycle safe.”
Complainant further argues that, given that its CYCLE-SAFE products are well-known in the bicycle industry and that its “www.” and “www.” websites were operational prior to registration of the disputed domain name, “it is unlikely that there exists evidence of use, or demonstrable preparations to use, the domain name in an absence of knowledge of Complainant’s trademark.”
Having been founded in 2006, it is also unlikely, Complainant asserts, that Respondent has been commonly known by the disputed domain name in advance of any knowledge of Complainant.
Complainant also contends that Respondent’s use of the disputed domain name is not a legitimate noncommercial or fair use of the domain name. It points out that t-shirts and bicycle team jerseys having the disputed domain name are offered for sale on the Respondent’s”www.c website”. While such website contains a disclaimer of any affiliation with Complainant, Complainant notes that such disclaimer is insufficient insofar as it is located at the bottom of the site. “Moreover,” Complainant continues, “the fact that the website includes an attempted disclaimer is evidence that the Respondents are aware that consumers would be confused regarding the source, sponsorship, and affiliation of Complainant and Respondents.”
With respect to the issue of “bad faith” registration and use, Complainant cites numerous decisions involving the original Respondent, Web Reg, Rarenames, in which Web Reg, Rarenames was found to have engaged in bad faith by registering and selling the domain names incorporating the marks of others. While Complainant observes that Web Reg, Rarenames has relinquished control of the disputed domain name, Complainant, nevertheless, contends that, despite such action, the domain name in issue was registered and is continuing to be used in bad faith.
Complainant submits evidence (see Complaint, Annex X) disclosing that as of December 21, 2002, two days after the disputed domain name was created, was being offered for sale by BuyD, which is the domain name of WebReg, Rarenames. According to Complainant, WebReg, Rarenames received the original complaint on January 2, 2008, and, on the following day, caused the registrar’s database to reflect an alternative registrant listing. “That WebReg, Rarenames may have transferred the disputed domain name does not alter that it was registered in bad faith,” Complainant asserts.
The continued use of the disputed domain name by Respondent is in bad faith, Complainant maintains. It points out that Respondent’s activities include bicycle-related activities, including providing bicycle barriers and fencing and selling clothing with the “c” logo thereon, which activities are confusingly similar to Complainant’s CYCLE-SAFE and CYCLE-SAFE.COM and Design marks and associated bicycle goods. According to Complainant, “[b]y continuing to operate the website, CYCLESAFE.ORG’s website creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s CYCLESAFE.ORG’s website and services.” Indeed, Complainant points to at least one instance of actual confusion when it received an unsolicited email intended for Respondent.
As further support for its assertion of bad faith registration and use, Complainant also notes that Respondent continues to use the disputed domain name despite the receipt of cease and desist letters. See Complaint, Annexes C, V and W.
B. Respondent
Respondent contends that the disputed domain name is not identical or confusingly similar to the trademark in which Complainant has rights. Respondent emphasizes that the goods offered by Complainant in connection with the federally registered marks are limited to bicycle storage enclosures, parking structures, stands and racks. Respondent notes that its educational and training services are not confusingly similar to Complainant’s marks for bicycle storage enclosures and the like.
Respondent further argues that it had taken significant steps to use the domain name in connection with a bona fide offering of services at the time it registered the domain name, well prior to the commencement of this dispute. Respondent notes that North Carolina Cycling Promotions (NCCP), the entity using “C” as its assumed name, was formed on July 5, 2005. Respondent points out that North Carolina law requires a company operating under an assumed name to file a certificate with the Register of Deeds of the county where the services are offered, which NCCP did. See Response, Annex F. According to Respondent, there is no requirement to file any document with the state Secretary of State, which accounts for Complainant’s inability to locate any information regarding Respondent in the Secretary of State’s records.
Respondent contends that at the same time it filed the necessary certification for its assumed name, it also registered the disputed domain name. According to Respondent, both the registration of the assumed name and of the domain name was completed in an effort to promote Respondent’s non-profit services related to bicycling safety and awareness.
Respondent asserts that its use of the disputed domain is protected as a legitimate fair use. “Respondent’s choice of the disputed domain name was driven by the fact that the word “safe” is a regular dictionary term which, when coupled with the word `cycle’, refers to the operation of a bicycle in an appropriate manner to preserve the physical safety of the rider.”
Respondent also argues that it has a legitimate noncommercial interest in the domain name. In support of such contention it observes that it is a non-profit corporation and that the t-shirts and jerseys offered for sale on its website are not sold for the purpose of making a profit and are frequently given away.
Respondent further contends that it does not sell storage enclosures, street racks or other types of event storage racks. Nor does it make or sell for commercial gain any other goods used at cycling events, including impact barriers, helmets and similar goods. Respondent’s comprehensive safety programs do not provide advice or counsel event organizers about protection of bicycles from theft, but, rather, are focused on participant health, safety and physical well-being, with a particular focus on crash protection and prevention. Thus, Respondent argues, its activities do not constitute infringement on Complainant’s trademark rights. Complainant’s U.S. registrations, Respondent notes, extend only to storage enclosures, parking structures, stands and racks for bicycles and motorcycles. “Ownership of the Complainant’s Marks does not ipso facto give Complainant the exclusive right to the words cycle safe in all contexts related to bicycling or the bicycling industry.”
Respondent also indicates that it is well-known within the North Carolina cycling community by the name “CycleS.” For example, Respondent promoted the 2007 Hanes Park Classic, an all-day cycling and road running event, and its representatives also have appeared in the local media promoting their message of bicycle safety, participation in cycling events and the importance of living a healthy and active lifestyle.
Focusing on the issue of bad faith registration and use, Respondent first notes that much of Complainant’s allegations with respect to this element of the Policy focus on the activities of Web Reg, Rarenames. However, Respondent asserts, since Web Reg, Rarenames is no longer a named Respondent, its actions are not germane to a determination of whether Complainant has established that the domain name in dispute was registered and is being used in bad faith.
Respondent asserts that the conduct of CycleS does not evidence any intent to register the disputed domain name in bad faith. There is no evidence, it contends, that the domain name was registered for the purpose of selling it to Complainant. Respondent notes that the domain name was registered on or about July 15, 2006, and that immediately thereafter NCCP filed the assumed name certificate. “As such, the domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, nor has the Respondent engaged in a pattern of such conduct.”
Respondent further contends that the parties are not competitors and that any contention that Respondent’s use of infringes on Complainant’s marks “are wholly without merit.” Even if a likelihood of confusion exists, Respondent argues, “[t]he mere presence of a likelihood of confusion or dilution is not sufficient to find bad faith under the Policy.”
Finally, Respondent maintains that the domain name was not registered in an intentional attempt to attract internet uses to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark. Rather, Respondent argues, it the registered the domain name in issue with the bona fide intention of offering educational services under that name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is, for all intents and purposes, identical to the mark CYCLE-SAFE. It is well accepted that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a domain name is identical to a mark. See, e.g. The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038; Seek America Networks, Inc. v. Tariq Masood and Solon Signs, WIPO Case No. D2000-0131. In addition, a top-level domain, such as “org,” generally is to be ignored when assessing identity. See VAT Holding AG v. ,WIPO Case No. D2000-0607.
While Respondent contends that the services it offers differ from the goods identified in Complainant’s United States trademark registrations, the test as to whether a domain name is identical or confusingly similar to a mark is to be made solely upon a comparison between the mark and the domain name. See Arthur Guinness Son & Co. v. (Dublin) Ltd. v. Dejan Macesic,WIPO Case No. D2000-1698 (Jan. 25, 2001). Based on this test, the disputed domain name may be considered identical to the mark CYCLE-SAFE.
The Panel further rules that the existence of a United States trademark registration for the CYCLE-SAFE mark confers upon Complainant rights in the mark. See, e.g., Uniroyal Engineered Products Inc. v Nauga Network Services,WIPO Case No. D2000-0503.
B. Rights or Legitimate Interests
The Panel finds that Respondent has succeeded in demonstrating rights or legitimate interests in the domain name. More particularly, the Panel concludes on the present record before it that Respondent is “making a legitimate … 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,” within the meaning of paragraph 4 (c)(iii) of the Policy.
The Panel has on the face of it reviewed Respondent’s “www.c” website. It is apparent from this that Respondent is a non-profit organization engaged in promoting bicycle safety and encouraging the active participation of youths and the general public in bicycling. Its mission statement, as reflected on the website, states that “CycleSafe is committed to enhancing the community through bicycle safety and youth education events by implementing the distribution of pro-active cycling curricula.” As such, the term “cyclesafe” is apparently being used by Respondent is its primary descriptive sense, i.e., to describe Respondent’s objective of promoting bicycle safety. See Manga Films S.L. v. Name Administration, Inc.,WIPO Case No. D2005-0730.
It is true, as Complainant alleges, that Respondent does offer for sale some merchandise on its “www.c” site. However, the Panel determines that the primary thrust of the “www.c” website is noncommercial in nature insofar as the site focuses on information and activities relating to bicycle safety. In other words, the site does not merely propose a commercial transaction and any sale of merchandise appears to be ancillary to its primary purpose of promoting bicycle safety. See Virginia State Pharmacy Board v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748 (1976). See, also S, Inc. v. Name Administration Inc.,WIPO Case No. D2002-1167 (finding fair use even though the respondent earned revenue from redirecting web traffic to advertisers).
In any case, there is no evidence that Respondent is intending to misleading divert consumers or to tarnish the Complainant’s mark. The evidence indicates that not only does Respondent’s “www.c” site contain a disclaimer of affiliation with Complainant but it also provides a link to Complainant’s site.
The fact that there has been an instance of actual confusion does not preclude a determination of fair use. See KP Permanent Make-Up, Inc. v. Lasting Impression I, 543 U.S. 111 (2004) (“But the common law of unfair competition also tolerated some degree of confusion from a descriptive use of words contained in another’s trademark.”)
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name is not being used in bad faith.1 Given the Panel’s determination that Respondent is making fair use of the domain name, it may not be held that Respondent is intentionally attempting to attract, for commercial gain, internet users to its site by creating a likelihood of confusion as to source of the site or of the goods or services promoted on such site, within the meaning of paragraph 4(b) (iv) of the Policy. Moreover, the fact that Complainant sent cease and desist-type correspondence to Respondent asserting rights in the disputed domain name does not, under the facts of this case, support a determination of bad faith registration and use.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Jeffrey M. Samuels
Sole Panelist
Dated: March 4, 2008
1 The Panel agrees with Respondent that whatever bad faith may be associated with Web Reg. Rarenames’ registration of the disputed domain name is not on the present record attributable to Respondent. Registration in bad faith must occur at the time the current registrant took possession of the domain name and where acquired from another, must on balance form part awareness, at the time of acquisition, of the Respondent’s intent. In this case, it is not entirely clear when Respondent took possession of the domain name. Respondent asserts that it registered the domain name on or about July 15, 2006. However, Complainant presented evidence and argument suggesting that the domain name was transferred from the original registrant more recently. In any case, as noted above, the Panel finds that Respondent is not using the domain name in bad faith.
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