The Complainant is Randall's Island Sports Foundation, Inc. of New York, New York, United States of America represented by Deborah A. Maher, United States of America.
The Respondent is Eric Theador of Ontario, Canada, self represented. 2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 16, 2011, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the disputed domain name. On March 16, 2011, DSTR Acquisition VII, LLC d/b/a D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response April 7, 2011. The Response was filed with the Center April 7, 2011.
The Center appointed John Swinson, Gordon Harris and Henry Olsson as panelists in this matter on May 3, 2011. 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. 4. Factual Background
The Complainant is Randall’s Island Sports Foundation, Inc., a section 501(c) New York nonprofit organization, qualified in New York. The Complainant was founded in 1992 and incorporated in January 1994 as a public-private partnership with the City of New York. The Complainant’s primary work is to develop the sports and recreational facilities of Randall Park, restore its natural environment, reclaim and maintain parkland and sponsor programs for the children of New York City.
The Respondent is Eric Theador, a former resident of New York City.
The disputed domain name was registered by the Respondent on October 19, 2000. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions: Identical of Confusingly Similar
The Complainant owns a common law trade mark for RANDALL’S ISLAND which has been used in commerce in the United States since 1992. The trade mark is valid and subsisting and in full force and effect. It is readily identifiable with the Complainant’s business. Also, the trade mark has valuable goodwill.
The trade mark is extensively and prominently used by the Complainant on its website, on documents provided to its donors and local, state and federal governments and at conferences held around the country. It is also used on official apparel and in advertising and promotional activities. The Complainant owns several domain names incorporating the RANDALL’S ISLAND mark and others related to the Complainant’s business.
Randall’s Island Park is well-known for its athletic fields and stadiums, its natural environment and the events held at the location such as musical festival concerts, large corporate events and other events such as, Cirque du Soleil.
The Complainant has rights in respect of its common law trade mark irrespective of the fact that it is unregistered and is entitled to bring proceedings under the Policy (see The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
The disputed domain name is identical or confusingly similar to the Complainant’s mark because it incorporates the mark in its entirety.
The inclusion of the “.com” suffix is insufficient to remove the likelihood of confusion (see Covance, Inc and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206).
Therefore, the disputed domain name is identical to the Complainant’s mark. Rights or Legitimate Interests
The Respondent has no rights in respect of the disputed domain name for several reasons. First, the Complainant had prior rights in its common law trade mark when the Respondent registered the disputed domain name. Further, there is no relationship between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, has never been known by the disputed domain name and has never obtained authorization to use the Complainant’s mark or to apply for a domain name incorporating its mark. (See e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Moreover, the Respondent is not listed as an owner of any United States trade mark containing any RANDALL’S ISLAND derivative and it does not appear that the Respondent has ever applied for any United States trade marks.
Also, the Respondent has no right or legitimate interests in the disputed domain name as he makes no bona fide offering of goods or services through the disputed domain name and nor does he make a legitimate noncommercial or fair use of the disputed domain name. The Complainant relies on eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 where it was found that a respondent’s use of a complainant’s entire mark in a domain name made it difficult to infer a legitimate use.
The Respondent operates a pay-per-click (“PPC”) website from the disputed domain name. There is no business affiliation between the Complainant and those persons whose links appear on the Respondent’s website. As the Respondent is infringing the Complainant’s trade mark rights and is potentially confusing members of the public and Internet users, the Panel should not make a finding of legitimate interest in favor of the Respondent (see Garnett Co. Inc. v. Lee Yi, WIPO Case No. D2004-0854).
Therefore, the Respondent has no rights or legitimate interests in the disputed domain name. Registered and Used in Bad Faith
The Respondent registered the disputed domain name in bad faith as the Respondent knew or should have known of the existence of the Complainant’s mark. The Complainant had been operating for 8 years and a simple Google search for the term “randall’s island” would have retrieved results that would have made this clear to the Respondent. However, despite this, the Respondent registered the disputed domain name for the purposes of a PPC site. The operation of the PPC site is evidence of bad faith on the part of the Respondent. There are links related to the Complainant’s business and as such this indicates that the Respondent must have had knowledge of the Complainant and its business when it registered the disputed domain name.
Further, the operation of the PPC site is evidence of bad faith on the part of the Respondent in and of itself. The Respondent is financially benefiting by associating itself with the Complainant’s mark without the Complainant’s authorization or permission. It shows that the Respondent has intentionally attempted to attract, for financial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Finally, the Respondent registered the disputed domain name in bad faith as the Respondent asked for the Complainant to pay USD 30,000 in exchange for the disputed domain name.
The Complainant learned that the Respondent had registered the disputed domain name in January 2011 when it attempted to register the disputed domain name for its own purposes. On January 20, 2011, the Complainant sent a cease and desist letter to the Respondent. On February 10, 2011, the Complainant discovered that the Respondent had most likely not received the cease and desist and therefore sent a copy of the letter via electronic mail to the Respondent. The Respondent responded to the letter on February 11, 2011 demanding a transfer fee of USD 30,000.
This is clearly in excess of out-of-pocket expenses of the Respondent directly related to the disputed domain name and therefore is evidence that the disputed domain name was registered in bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent makes the following submissions: Identical of Confusingly Similar
The Complainant does not have any registered or common law trade mark rights in RANDALL’S ISLAND. The Complainant only has weak, recently obtained, common law trade mark rights in “Randall’s Island Sports Foundation” and “RISF”.
The Complainant submitted no evidence in support of a common law trade mark in RANDALL’S ISLAND. The Complainant did not refer to itself as “Randall’s Island” prior to filing the Complaint. In particular, on the Complainant’s website there is only reference to “Randall’s Island Sports Foundation” and not “Randall’s Island” as the Complainant’s name.
The Complainant established a website in 2006 and it is only from this time that the Complainant acquired common law trade mark rights in “Randall’s Island Sports Foundation” and “RISF”.
Moreover, “Randall’s Island” is a geographic indicator and as such cannot be a trade mark of the Complainant. The Respondent relies on Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769, where it was stated, “[g]eographic names cannot be monopolized by registering a trademark or company name”.
Further, simply because the Complainant operates a business on Randall’s Island, does not entitle it to trade mark rights in the name (see Port of Helsinki vs. Paragon International Projects Ltd., WIPO Case No. D2001-0002). In any event, the Complainant only occupies a small area of Randall’s Island.
Therefore, as the Complainant only has a common law trade mark in “Randall’s Island Sports Foundation” and “RISF”, the disputed domain name is not identical or confusingly similar to the said mark. Specifically, “Randall’s Island” and “Randall’s Island Sport Foundation” are clearly distinct and there is no risk of confusion.
Even though the Complainant has trade mark rights in RANDALL’S ISLAND, this would not necessarily entitle the Complainant to a geographic locator domain name. Rights or Legitimate Interests
The Respondent is a bridge enthusiast and registered the disputed domain name 11 years ago, in 2000, because it is the foundation and centre point of the Triborough Bridge System that connects Manhattan, Queens and the Bronx in New York.
The Respondent registered the disputed domain name with the intention of establishing a network of New York location websites. Specifically, when the Respondent registered the disputed domain name on October 19, 2000, the Respondent intended to use it to inform the public about the Triborough Bridge System as part of this network of websites. The Respondent also intends on including information about the Island itself and facilities located on the Island.
Importantly, the Respondent has registered several bridge-related domain names over the last 10 years. In the past, the Respondent has posted historical facts about the relevant bridges to which a domain name relates on the websites resolving from the respective domain names. The Respondent has previously posted historical and important facts about the Triborough Bridge System on the website resolving from the disputed domain name.
The Respondent intends to launch its network of New York location websites later this year, and the fact that the Respondent has not yet done this, does not deny the Respondent rights in the disputed domain name. Registered and Used in Bad Faith
The Respondent did not register the disputed domain name in bad faith because when the Respondent registered the disputed domain name, he had no knowledge of the Complainant and there is no reason the Respondent ought to have reasonably known of the Complainant.
Even though the Complainant first registered domain names in 2001, a website was not established until 2006. It was only from this point in time that the Complainant became known to the public. Prior to this time the Complainant did not conduct visible operations and was unknown to the public.
Importantly, when the Respondent registered the disputed domain name in 2000, the Complainant did not have a domain name, website or trade mark. The Complainant was only registered as a nonprofit organization in the New York State corporate database.
Moreover, as stated above, the Respondent is a bridge enthusiast and passionate about New York. The Respondent is the owner of domain names that do not only relate to bridges in New York, but also, islands, streets and cities in New York. It is for this reason that the Respondent registered the disputed domain name, to convey information about the Triborough Bridge System and Randall’s Island as part of his network of New York location websites. The Respondent has in fact already used the disputed domain name and other domain names to convey such information.
Further, the Respondent initially wished to register a domain name related to the Triborough Bridge System and incorporating this term. However, as this was unavailable, a domain name incorporating the term “Randall’s Island” was selected given its importance to the system.
Therefore, even if the Complainant has trade mark rights in RANDALL’S ISLAND, there cannot be a finding of bad faith on the part of the Respondent. Reverse Domain Name Hijacking
The Respondent requests the Panel make a finding of reverse domain name hijacking.
The Respondent registered six domain names on December 21, 2010 in an attempt to create trade mark rights in RANDALL’S ISLAND. On January 20, 2011, 30 days later, the Complainant’s legal representative sent an intimidating demand letter to the Respondent relying on these six newly registered domain names as evidence of a superior right to the disputed domain name. Prior to this time the Complainant had only registered domain names ending in “.org” which is appropriate given it is a nonprofit organization.
Further, the Respondent is not a competitor of the Complainant and the Respondent did not register the disputed domain name in order to intentionally attract Internet users for commercial gain. The PPC website operating from the disputed domain is merely an interim measure while the Respondent’s network of New York location websites is being developed. This PPC site is currently the default page for over 200 domain names owned by the Respondent. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
The Complainant does not rely upon registered trademark rights. Rather, the Complainant relies on common law trademark rights, and the Complainant is entitled to do so under the Policy.
Randall’s Island is a geographical location in New York City. That name existed long before the Complainant was established. In fact, it appears that the Complainant is named after the geographical location. (Contrast Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932 where the geographical location was named after the Complainant.)
The Complainant’s legal name and trading name is “Randall’s Island Sports Foundation, Inc.” Based on the evidence presented, the panel may be prepared to find that the Complainant has common law trademark rights in “Randall’s Island Sports Foundation, Inc.”. However, the Panel decides that the Complainant has not presented sufficient evidence to establish common law trademark rights in “Randall’s Island” per se. As Randall’s Island is a geographical location, strong and persuasive evidence as to reputation and secondary meaning would be required, and no such evidence was presented here. Moreover, no evidence as to the date from which that the Complainant’s common law rights arose, which is relevant for consideration of the third element (bad faith).
The Panel finds that the disputed domain name is not identical or confusingly similar to “Randall’s Island Sports Foundation, Inc”.
This conclusion is consistent with previous decisions under the Policy, including Brisbane City Council v. Joyce Russ Advertising Pty Limited,WIPO Case No. D2001-0069; City of Hamina v. Paragon International Projects Ltd.;WIPO Case No. D2001-0001. Contrast Daydream Island Resort Investments Pty Ltd v. Alessandro Sorbello eResolution Case No. AF-0586 where “Daydream Island” was not simply a geographical location but also the trading name of a resort.
For the above reasons, the Panel finds that the Complainant has not established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent asserts that he registered the disputed domain name because of his interests in the bridges of New York. The Triborough Bridge (now called the Robert F Kennedy Bridge) joins Randall’s Island with The Bronx. The art deco Triborough Bridge Authority Building, the former office and base of Robert Moses still stands on the island. The Respondent has provided evidence of other bridge and tunnel related domain names that he owns.
The Respondent registered the disputed domain name 11 years ago, but has not yet used it for the stated purpose for which the Respondent claims to have registered it.
The Respondent is not known as “Randall’s Island”, does not live on the island, and has no association with it. The Respondent has not asserted or demonstrated that the current website at the disputed domain name is a legitimate noncommercial or fair use of the domain name without intent for commercial gain, and has presented no evidence to show that the domain name is being used or intended to be used for a bona fide offering of goods or services.
In view of all the evidence presented, the Panel finds that the Respondent has not demonstrated that he has rights or legitimate interests in respect of the dispute domain name. C. Registered and Used in Bad Faith
The Respondent registered the domain name 11 years ago as part of his collection of bridge and tunnel domain names. There is no evidence that the Respondent registered or used the domain name to trade off the reputation of the Complainant. There is no evidence that the Respondent registered the domain name with the purpose of selling it to the Complainant or disrupting the business of the Complainant.
The primary rule in relation to “.com” domain names has always been that such domain names are registered on a first-come, first-served basis. The Respondent registered the disputed domain name first. Here, the panel finds that disputed domain name is a generic, geographical term. The Respondent appears to have registered the disputed domain name for its generic geographical meaning. Accordingly, there is no reason to infer bad faith on the part of the Respondent in the circumstances of this case. D. Reverse Domain Name Hijacking
The Panel makes no finding of reverse domain name hijacking. As discussed above, the Panel finds that neither the Complainant nor the Respondent have trade mark rights in “Randall’s Island”. In such circumstances, a finding of reverse domain name hijacking would be inappropriate. 7. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson
Presiding Panelist
Gordon Harris
Panelist
Henry Olsson
Panelist
Date: May 24, 2011
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