Tamarack Trademarks LLC v. Steven Gustafson / Experience Based Learning, Inc. / EBL Zipline Tours
Claim Number: FA2001001881295
Complainant is Tamarack Trademarks LLC (“Complainant”), represented by Jeffrey D. Larson of Holland & Hart LLP, Colorado, USA. Respondent is Steven Gustafson / Experience Based Learning, Inc. / EBL Zipline Tours (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tamarackcanopytour.com>, <tamarackcanopytour.net>, <tamarackcanopytour.org>, <tamarackcanopytours.com>, <tamarackcanopytours.net>, <tamarackcanopytours.org>, <tamarackzipline.com>, <tamarackzipline.net>, <tamarackzipline.org>, <tamarackziplines.com>, <tamarackziplines.net>, <tamarackziplines.org>, <tamarackziplinetour.com>, <tamarackziplinetour.net>, <tamarackziplinetour.org>, <tamarackziplinetours.com>, <tamarackziplinetours.net>, <tamarackziplinetours.org>, <ziptamarack.com>, <ziptamarack.net>, and <ziptamarack.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2020; the Forum received payment on January 30, 2020.
On January 31, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tamarackcanopytour.com>, <tamarackcanopytour.net>, <tamarackcanopytour.org>, <tamarackcanopytours.com>, <tamarackcanopytours.net>, <tamarackcanopytours.org>, <tamarackzipline.com>, <tamarackzipline.net>, <tamarackzipline.org>, <tamarackziplines.com>, <tamarackziplines.net>, <tamarackziplines.org>, <tamarackziplinetour.com>, <tamarackziplinetour.net>, <tamarackziplinetour.org>, <tamarackziplinetours.com>, <tamarackziplinetours.net>, <tamarackziplinetours.org>, <ziptamarack.com>, <ziptamarack.net>, and <ziptamarack.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tamarackcanopytour.com, postmaster@tamarackcanopytour.net, postmaster@tamarackcanopytour.org, postmaster@tamarackcanopytours.com, postmaster@tamarackcanopytours.net, postmaster@tamarackcanopytours.org, postmaster@tamarackzipline.com, postmaster@tamarackzipline.net, postmaster@tamarackzipline.org, postmaster@tamarackziplines.com, postmaster@tamarackziplines.net, postmaster@tamarackziplines.org, postmaster@tamarackziplinetour.com, postmaster@tamarackziplinetour.net, postmaster@tamarackziplinetour.org, postmaster@tamarackziplinetours.com, postmaster@tamarackziplinetours.net, postmaster@tamarackziplinetours.org, postmaster@ziptamarack.com, postmaster@ziptamarack.net, postmaster@ziptamarack.org. Also on February 4, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The Panel notes that there are several named respondents. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Nevertheless, Complainant contends that Steven Gustafson owns and controls the remaining named respondents. In support of that contention, Complainant points to the facts that (i) all share the same address, (ii) all are registered on the same IP address with the same registrar, and (iii) all disputed domain names direct to the same website. Based on these facts, the Panel finds sufficient evidence demonstrating that the listed entities are jointly controlled and so determines that these administrative proceedings can continue against all named respondents which will hereinafter be referred to simply as “Respondent”.
A. Complainant
Complainant asserts trademark rights in TAMARACK and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,298,658, registered September 25, 2007 for the trademark, TAMARACK;
2. Complainant uses the trademark in connection with a mountain resort in Idaho, USA;
3. the disputed domain names were registered in 2009 and 2012 by a contractor then engaged by Complainant to provide a zipline facility at the resort;
4. the disputed domain names now all resolve to a website offering a zipline experience not connected with Complainant’s resort; and
5. there is no ongoing commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding based on Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Since Complainant provides evidence of its USPTO trademark registrations for TAMARACK, the Panel is satisfied that it has rights in that marks.
The domain names take the trademark and add descriptive terms such as “zip”, “zipline(s)”, “canopy tour(s)” and “zipline tour(s)” along with the “.com,” “.net,” or “.org” gTLDs. Those non-distinctive additions can be largely disregarded for the purposes of comparison. The trademark remains in all cases the dominant visual and aural element of the domain names.
The Panel finds the disputed domain names to be confusingly similar to Complainant’s trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]
Respondent name does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark. The domain names all resolve to a website offering a zipline experience not connected with Complainant’s resort and so there has been no bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names[iv].
The Panel finds that Complainant has made a prima facie case. The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that Respondent’s actions fall squarely under paragraphs 4(b)(iii) and (iv) above. In the case of Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) the panelist found that “[r]espondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”. In Charter Communications Holding Company, LLC v. Webdesk Two, FA1808001800636 (Forum Sept. 5, 2018) the panelist there found that “[u]se of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).”
Accordingly, Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tamarackcanopytour.com>, <tamarackcanopytour.net>, <tamarackcanopytour.org>, <tamarackcanopytours.com>, <tamarackcanopytours.net>, <tamarackcanopytours.org>, <tamarackzipline.com>, <tamarackzipline.net>, <tamarackzipline.org>, <tamarackziplines.com>, <tamarackziplines.net>, <tamarackziplines.org>, <tamarackziplinetour.com>, <tamarackziplinetour.net>, <tamarackziplinetour.org>, <tamarackziplinetours.com>, <tamarackziplinetours.net>, <tamarackziplinetours.org>, <ziptamarack.com>, <ziptamarack.net>, and <ziptamarack.org> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 11, 2020
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
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