The Vail Corporation and
Vail Trademarks, Inc. v. Resort Destination Marketing c/o
Claim Number: FA0711001106470
PARTIES
Complainant is The Vail Corporation and Vail
Trademarks, Inc. (“Complainants”), represented
by Jennifer Daniel Collins, of Faegre & Benson LLP, 1700 Lincoln St., Suite 3200, Denver, CO
80203-4532. Respondent is Resort
Destination Marketing c/o
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <beavercreekreservations.com> and <vailresortvacations.com>,
registered with Godaddy.com, Inc.
PANEL
The undersigned each certify that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainants submitted a Complaint to the National Arbitration Forum
electronically on
On
On November 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 3, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@beavercreekreservations.com
and postmaster@vailresortvacations.com by e-mail.
A timely Response was received and determined to be complete on
On December 10, 2007 an Additional Submission compliant with
Supplemental Rule 7 was received from Complainant.
On
On December 18, 2007 and Additional Submission compliant with
Supplemental Rule 7 was received from Respondent.
RELIEF SOUGHT
Complainants request that the domain names be transferred from
Respondent to Complainants.
PARTIES’ CONTENTIONS
A. Complainants
Complainant The Vail Corporation (“Complainant
Vail”) is a corporation duly organised and existing under the laws of the State
of
Complainant Vail Trademarks Inc. (“Complainant
Vail Trademarks”) is a corporation duly organized and existing under the laws
of the State of
Complainant Vail owns and operates a number of
ski resorts including the Vail and Beaver Creek resorts in
Complainants submit that over the years
Complainant Vail and other commercial undertakings have developed an
international reputation for quality and value. Complainants have submitted evidence that the
resorts have a well established national and international reputation. Complainants have provided evidence that they
spend over USD$ 20 million per year promoting their
Complainant Vail Trademarks is the owner of US
registered trademarks on the principal register for the mark
Complainants argue that the
Complainant Vail is the owner of the domain
names <vail.com>, <beavercreek.com>, <vailresorts.com> and
<vail.snow.com> and <beavercreek.snow.com> and has established a
website to which these addresses resolve, advertising the Vail and Beaver Creek
resorts, and services relating to the resorts including hotel management,
vacation planning and online travel booking services.
Complainants submit that Respondent was an
authorized wholesale partner of Complainant Vail pursuant to an agreement in
writing described in the Complaint (and hereinafter) as the “Vail Wholesale
Agreement.” Complainants further submit
that the Vail Wholesale Agreement specifically addressed the use of the
Complainants submit that Respondent’s
registration and use of the domain names in dispute are in breach of the Vail
Wholesale Agreement and Complainant Vail invited Respondent to its offices on
two occasions in the summer of 2007 to discuss Respondent’s breaches of the
agreement and the continuing unauthorized use of the domain names in dispute. On September 11, 2007 Complainants sent a
cease and desist letter to Respondents requesting inter alia that Respondent transfer the
domain names to Complainants and terminated said Vail Wholesale Agreement.
On
Complainants submit that the domain names in
dispute are confusingly similar to the trademarks
Complainants submit that the domain name <beavercreekreservations.com>
entirely appropriates Complainant’s BEAVER CREEK trademark and merely adds the
descriptive or generic term “reservations.” Complainants submit that the word
“reservations” relates to the services provided by Complainants under the
BEAVER CREEK mark.
Similarly the domain name <vailresortvacations.com> appropriates Complainants’ well
known
Complainants submit that Respondent has no
rights or legitimate interest in the domain names in dispute. Respondent has no trademark or intellectual
property rights in the domain names. Complainants
have not granted any licence or otherwise authorized Respondent to use their
above mentioned trademarks as a domain name. Respondent is not using the domain names in
connection with bona fide offering
goods and services because it is merely using Complainants’ marks to confuse
and divert Internet traffic.
When an Internet user inputs the domain names <beavercreekreservations.com> or <vailresortvacations.com> into a
web browser the user is transferred to Respondent’s websites which gives the
user the ability to book vacation rental properties, ground and air
transportation, as well as lift tickets and ski rentals that are in competition
with Complainants’ services. Such
misdirection of consumers through the use of Complainants marks does not
qualify as a bona fide offering of
goods and services under the Policy.
Respondent is not making any legitimate
non-commercial or fair use of the domain names in dispute. Complainants believe that Respondent is in
receipt of commercial gain from its websites to which the disputed domain names
resolve.
Complainants submits that at the time domain
names were registered, Complainants’ marks were sufficiently distinctive and
well-known to give constructive notice to Respondent that the registration of
the domain names in dispute would violate Complainants’ rights.
Complainants submit that Respondent has used
the domain names in bad faith by creating a likelihood of confusion with
Complainants’ marks for financial gain. Complainants
believe that Respondent originally registered the domain name to attract
Internet users to a website they might mistakenly believe was owned with
Complainants’ services.
Finally, Respondent’s bad faith is evidenced by
Respondent’s multiple breaches of the Vail Wholesale Agreement: the agreement
expressly prohibits a wholesaler from using Complainants’ marks “to represent
itself as an affiliate or agent of Vail;” the agreement prohibits a wholesaler
from using “a domain name other than the Wholesaler’s brand that could suggest
that the site is owned by the resort or the resort’s central reservations.”
Moreover, although Respondent agreed to
transfer the domain name <vailresortvacations.com>
to Complainants, it has failed so to do.
B. Respondent
While Complainant has
demonstrated ownership of several federal trademark registrations, such
registrations do not convey a monopoly in the underlying geographic term. To the extent that the domain names are
geographically descriptive, they are not confusingly similar.
Respondent submits that
this proceeding arises on the basis of two geographic terms in which the
Complainant has obtained limited rights in connection with the operation of
certain facilities. Furthermore, the
websites to which the disputed domain names resolve were used with the
Complainants’ knowledge, consent, and cooperation prior to the recent
development of a disagreement between the Parties.
The domain names are
descriptors of the respective services offered through Respondent’s websites -
namely, rental reservations of resort and vacation properties by their owners
in Vail, Colorado and in Beaver Creek, Colorado.
Both of the terms at
issue are geographically descriptive, and have a limited trademark value. An analogous situation would arise if, for
example, Walt Disney had decided to name his theme parks “
Both Vail,
While Complainant’s
federal trademark registrations each relate to the provision of skiing
services, and the operation of resort hotel and restaurant services, they do
not confer a monopoly in the use of either “Vail” or “Beaver Creek” as a
geographic reference to such services, nor to truthful nominative reference to
those engaged in arranging booking and travel to the Complainants’ own
facilities.
The town of
Respondent sets out the
history of the two communities and their respective names from Internet site
<coloradoskihistory.com>. It is
noteworthy that the data and in particular the dates are disputed by
Complainants.
Respondent submits that
the facts in casu are similar to
those in other proceedings under the Policy in which a complainant has
attempted, via a limited right in
certain development and property resort operation activities, to expansively
appropriate - beyond the scope of such right - all trade referring to the
primary commercial activities in those geographic areas. In this regard Respondent cites Maui Land & Pineapple Co., Inc. &
Kapalua Land Co., Ltd v. Sullivan Props., Inc., FA 95544 (Nat. Arb. Forum
Nov. 6, 2000); City of Hamina v. Paragon
Int’l Projects Ltd., D2001-0001 (WIPO Mar. 12, 2001) Port of Helsinki vs. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001).
This is not the first
time under the Policy that a ski resort operator in the western
Respondent submits that
each of the
Similar results have
obtained in Proceedings before WIPO such as Kur-
und Verkehrsverein St. Moritz v. Domain Finance Ltd, D2000-0617 (WIPO Aug. 17,
2000), concerning the skiing destination <stmoritz.com> in which the City
of St. Moritz, Switzerland claim was refused on the basis that its commercial
resort interests did not convey a monopoly in the underlying geographic term
and hence to the domain name <stmoritz.com>.
Respondent was launched
in 2005, and shortly thereafter acquired the ongoing business and contracts of
Moguls Mountain Travel, which began in 1982, and has long been a leader in
luxury resort bookings, and in particular mountain resort communities. The Respondent currently projects its 2007
sales in the resort marketing industry to reach US $30M.
Respondent has long been
operating a substantial business in the field of resort destination rentals
generally, and has been specifically using the domain names as a booking agent
for properties in the respective Vail and Beaver Creek locales. Initially, Respondent did so under an
Agreement with Complainant. When the
Agreement was later terminated, Respondent made appropriate changes to its
advertising arrangements and website configuration to provide such services to
legitimate owners of accommodations in those areas generally.
Respondent submits that
a key point of contention concerns the scope of authorization provided by
Complainants to Respondent in the Vail Wholesale Agreement exhibited by
Complainant in an annex to the Complaint. Respondent makes a number of submissions
relating to the construction of the Agreement.
Respondent refers to inter partes correspondence and submits
that Complainant was provided with express notice of Respondent’s use of the <beavercreekreservations.com>
domain name for use in booking the Complainant’s properties, and the
Complainant expressly approved of Respondent’s use of the domain name prior to
the Wholesale Agreement dated June 7, 2007.
Respondent submits that
Complainant is therefore estopped from arguing that the domain name was
registered in violation of that agreement, or that use of the domain name was
not authorized or approved by the Complainant.
Respondent submits that,
having cooperated with the Respondent in the development and operation of these
domain names, for a substantial period of time, Complainants’ aim in this
Proceeding is to reap the sole benefit of Respondent’s substantial promotional
efforts and legitimate operation of these domain names.
At no time has
Respondent attempted to pass itself off as Complainant or to present the
respective websites as anything other than what they are - i.e. website at
which visitors may book accommodations in the respective Vail and Beaver Creek
areas. The choice as to whether the
listed properties are those of Complainants or other legitimate renters in
those areas, has been entirely determined by the
Complainants. Respondent has respected
Complainant’s demand to discontinue under the agreement, and has terminated the
agreement in accordance with its own terms, by no longer offering bookings at
Complainant’s properties. That decision
was entirely the Complainants’ to make, but does not render Respondent’s
conduct under the agreement or after termination of the agreement, and prior to
this dispute, to have been illegitimate. Respondent continues to disagree that its use
of materials provided by Complainant, and its operation of either website
constituted a representation to the public that Respondent was acting as
Complainant’s central booking system.
Indeed, Complainant’s
own websites are readily accessible at the much simpler and direct Internet
addresses to which Complainants’ domain names <vail.com> and
<beavercreek.com> resolve.
Complainant is here
seeking to curtail legitimate trade by asserting that any use of these terms by
any party legitimately trading in the indicated geographic areas must perforce
be violating Complainants’ rights. Complainants’
implicit assertion of such a broad right to control commerce conducted in
reference to these geographic areas is simply beyond the narrow trade or
service mark rights afforded under reasonable principles of trademark law or
unfair competition, and itself is an attempted restraint of legitimate trade.
Hence, the second
element is not proven.
With respect to <beavercreekreservations.com>,
there is no question that the Complainant expressly approved and ratified the
registration and use by the Respondent, and further renewed its agreement in
the succeeding year. The fact that the
domain name was registered and used for the mutual benefit of Complainant and
Respondent precludes the finding of bad faith registration and use. In this
regard Respondent cites the decision of the panel in Iberostar Int’l A.G. v. Leisure Travel Inc., FA 1045076 (Nat. Arb.
Forum Sept. 24, 2007): “This Panel cannot find any of the above circumstances
[of bad faith] in the present case. Respondent
registered the domain name and operated a website under that name to the mutual
benefit of both itself and Complainant, working with Complainant’s Vice
President of Sales and Marketing. The
Panel finds that Respondent did not intend to sell the domain name to
Complainant, but rather intended to and did build up traffic for its travel
agent services at <goiberostar.com>. Respondent did not intend to divert
or disrupt Complainant’s business, or try to pose as Complainant. Indeed, Complainant generally encourages
travel agents to make bookings for Iberostar and therefore Respondent cannot be
impugned for allegedly stealing bookings from Complainant.”
Complainant’s allegation
that Respondent agreed to transfer either of these domain names to Complainant
is not supported by the record of the parties’ correspondence, and is particularly
odd. After a dispute developed, and
Complainant, having previously provided approved graphics, text, and other marketing
materials for Respondent’s use with these domain names, Respondent terminated
the agreement. Respondent further made
it clear that it intended to continue using the domain names while no longer
hosting websites using the Complainant’s materials, approved text, and so
forth. Again, Respondent does not
dispute that the agreement provided Complainant with the remedy of termination,
contingent on matters assigned to Complainant’s discretion. Complainant has received its full remedy in
Respondent’s termination of the agreement.
Complainant also cannot
seriously contend it did not provide an array of marketing materials, graphics,
text, and links for Respondent to use during the course of the agreement. It is only with great regret that Respondent (sic) determined to terminate the
agreement, ending 20 years of mutually beneficial dealings with the
Respondent’s Moguls Mountain Travel. Furthermore,
the Respondent no longer engages in bookings for Complainant’s properties - not
only through the disputed domain names - but also through the Respondent’s
<skicolorado.com>, <moguls.com>, <groupreservations.com> or
any other site in the Respondent’s extensive resort marketing network.
Respondent submits that
this is not a cybersquatting case. Rather,
it is a dispute over the original rightful ownership of a domain name between
two parties who had a business relationship for several years.
The Policy does not
provide a forum for contract disputes. In
similar circumstances the panel in Discover
The Policy is not
designed to resolve all disputes concerning domain names. The jurisdiction of this forum is limited to
providing a remedy in cases of “the abusive registration of domain names,” or
“cybersquatting.” See
The primary question
under the heading of “bad faith” was whether either of the domain names was
undertaken with abusive intent. Respondent
maintains they were not, and that the registrations were undertaken in the good
faith belief that the domain names were within the terms of the Agreement and
furthered the aims of the Agreement. Complainant
and Respondent simply have a genuine disagreement on that point, and
Complainant has exercised its right to terminate the agreement.
Accordingly, the
websites to which both of the domain names in dispute resolve, expressly and
prominently identify that they are operated by “A Resort Destination Marketing
Company,” and identify Respondent as the copyright owner and operator of the
respective websites.
Accordingly, the third
element of bad faith registration and use is not proven.
C. Complainants’ Additional Submissions
In Additional Submissions Complainant states
that the majority of panels have ruled under the Policy that it is sufficient
for a Complainant to demonstrate evidence of a valid trademark registration to
satisfy the first element of the test as set out in Policy ¶ 4(a)(i) inter alia citing Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainants submit that their trademarks are
not geographically descriptive and Respondent has grossly mischaracterised the
history of the Vail and Beaver Creek Resorts. At the time Complainants developed the resorts
there was no pre-existing municipality, town or community known as Beaver Creek
and similarly the town of
Respondent was aware of Complainants’ rights
when registering the domain name <beavercreekreservations.com>
in October 2006 and Respondent registered the <vailresortvacations.com> domain name on
Respondent has misconstrued the inter partes correspondence in arguing
that Complainants’ employees granted permission or approved use of the <beavercreekreservations.com>
domain name.
Complainants submit that this is not a contract
dispute. The dispute relates to
Respondent’s actions of taking advantage of the unregulated domain name
registration system to register domain names that wholly incorporate
Complainant’s trademarks and have benefited commercially from the goodwill that
Complainants have fostered in their marks over many years.
D. Respondent’s Additional Submissions
In unnecessarily prolix further submissions Respondent submits that Rule 7 of the Policy does not permit
Complainant to file further Additional Submissions unless requested by the
Panel as they have not been so requested in
casu Complainant’s additional submissions should be disregarded by the
Panel. Citing Creative Curb v. Edgetec Int’l
Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) and Cappella
v. Cappella Drumsticks,
FA 393256 (Nat. Arb. Forum,
The Respondent
repeats the assertion that both Vail and Beaver Creek are geographical place
names and that this has been recognized by the USPTO. Third parties have incorporated
·
Word
Mark
·
Word
Mark
·
Word
Mark
·
Word
Mark
·
Word
Mark
·
Word
Mark BEAVER CREEK INTERNATIONAL
CULINARY CLASSIC, registration number 2,437,023, registration date March 20, 2001, owner Beaver Creek Resort
Company of
·
Word
Mark MOUNTAIN
·
Word
Respondent submits
that the Policy was designed to address clear-cut cases of bad faith domain
registration and cybersquatting and is not intended to take the place of a
judicial forum where there are issues of descriptiveness, nominative use,
agency, contract construction, trademark infringement, and fair use - all of
which are present in this Proceeding. Complainant
is asserting that Respondent is violating contractual obligations and that is beyond the limited scope of the Policy. The Policy provides inadequate procedures and
remedies for such disputes.
Respondent goes on
then to argue issues relating to the contractual relationship that existed
between the Parties.
FINDINGS
The Panel finds that it does not have
jurisdiction to deal with the Complaint relating to the domain name <vailresortvacations.com> as the issues in dispute are more properly
categorized as a contract dispute. In
the circumstances the Panel makes no finding in relation to this domain name
and dismisses the Complaint as the issues are outside the scope of the Policy.
The Panel finds that the
domain name <beavercreekreservations.com>
is a combination of the geographical place name Beaver Creek and the generic/descriptive
term “reservations.” Complainant has
rights in the trademark BEAVER CREEK. The
domain name <beavercreekreservations.com>
is confusingly similar to the mark BEAVER CREEK in which Complainant has rights. Complainant
does not have exclusive rights to the use of the words BEAVER CREEK. Respondent has legitimate interests in the
domain name <beavercreekreservations.com>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Policy
¶ 4(a) 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.
Preliminary Issue: Contract
Dispute Outside the Scope of the UDRP
Respondent has
asserted that the issues in dispute are beyond the scope of the Policy. Complainant has rejected this assertion. There was a contractual relationship between
the Parties. Until the Vail Wholesale
Agreement was terminated, Respondent was for a period an authorized wholesaler
appointed by Complainant.
Complainant
contends that it terminated the agreement when it became aware of Respondent’s
registration of the <beavercreekreservations.com> and <vailresortvacations.com>
domain names in the summer of 2007. However, Respondent asserts that Complainant
knew of Respondent’s registration of the <beavercreekreservations.com> and <vailresortvacations.com>
domain names, prior to that time and in fact alleges that Complainant approved
of Respondent’s registration and use of the domain names and in particular the <beaverrcreekreservations.com> domain
name.
The Panel is of the view that these allegations and counter allegations
are more properly characterized as a contract dispute, relating to the
construction of the Vail Wholesale Agreement, and as such, is outside the scope
of the UDRP. In Love v.
When the parties differ markedly with respect to the
basic facts, and there is no clear and conclusive written evidence, it is
difficult for a Panel operating under the Rules to determine which presentation
of the facts is more credible. National
courts are better equipped to take evidence and to evaluate its credibility….Further, the purpose of the Policy is not to resolve disputes between
parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect
trademark owners from cybersquatters, that is, from people who abuse the domain
name system in a very specific way, which specific way is outlined in Paragraph
4(a) of the Policy.
Additionally, in the case of Hachette
Filipacchi Media U.S., Inc. v. Urthere Prods., Inc., D2002-0143 (WIPO
We
find no evidence of bad faith registration by Respondents of the domain name
<charterfleet.com>. Rather, it
appears that the domain name was registered in good faith pursuant to an
agreement between the parties. We do not
believe that the termination of the agreement changes the nature of the initial
registration. Whether termination of the
agreement ends Respondents entitlement to the domain name is a matter of
contractual interpretation outside the scope of the Policy.
The issues regarding <vailresortvacations.com> involve
similar circumstances to the aforementioned cases and appear to stem from a
contractual dispute between Complainant and Respondent and do not make out a
case of abusive registration or cybersquatting.
See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb.
Forum Jan. 8, 2007) (concluding that when the respondent registers a domain
name on behalf of the complainant and then refuses to relinquish control over
the domain name registration, the cause of action is for breach of contract or
fiduciary duty and is thus outside the scope of the UDRP Policy); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum
Jan. 2, 2007) (holding that disputes arising out of a business relationship
between the complainant and respondent regarding control over the domain name
registration are outside the scope of the UDRP Policy).
The domain name <vailresortvacations.com> was registered on
The Panel is of the view that it has
jurisdiction to consider the Complaint as it relates to the domain name <beavercreekreservations.com>
which was registered on
Complainants have satisfied the Panel that they
have rights in the BEAVER CREEK mark through the above referenced United States
Patent and Trademark Office (“USPTO”).
The Panel accepts that the domain name <beavercreekreservations.com> is
confusingly similar to Complainant’s BEAVER CREEK mark as it adapts the mark in
its entirety. The addition of the
generic/descriptive term “reservations” does not distinguish the domain name in
any way and given the fact that Complainants’ rights relate to services in the
tourism industry the addition of the word “reservations” may in fact contribute
to the potential for confusion.
Complainant has therefore satisfied the first
element of the test in Policy ¶ 4(a).
The domain name <beavercreekreservations.com> is a combination of a
geographical place name and generic/descriptive term “reservations.” Respondent has established a tourist
reservations business at the website to which the domain name resolves.
Once a complainant presents a prima facie case, a respondent has the burden of coming forward with evidence of rights or legitimate interests. In casu Respondent has done that.
The basis of Complainants’ argument is that
Respondent cannot have a legitimate interest in the domain name since the
domain name takes predatory advantage of Complainants’ rights in the name
BEAVER CREEK. At best
Complainant has raised an issue involving a legitimate dispute over trademark
rights, and that issue is not susceptible to adjudication under the UDRP. See
e.g. Public Co. Accounting Oversight Bd. v. Nagel, FA 290974 (Nat. Arb.
Forum Aug. 17, 2004).
The Panel is satisfied that BEAVER CREEK is a
geographical place name and that Complainant has not acquired the exclusive
right to use of these words. See Kur- und Verkehrsverein St. Moritz v.
StMoritz.com,
D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the
<stmoritz.com> domain name where it resolved it to a website that
provided information about the city of St. Moritz, as well as other countries,
general
news, and net cafes); see also Travel Berkeley Springs, Inc. v.
It follows that Complainant has not satisfied the second element of the
test in Policy ¶ 4(a).
As Complainants have
not succeeded in the second element of the test in Policy ¶ 4(a) of the Policy in
respect of <beavercreekreservations.com>
there is no necessity for the Panel to consider the allegations of registration
and use in bad faith.
DECISION
As the issues in dispute lie outside the scope of the ICANN Policy, the
Panel concludes that relief requested shall be DENIED.
Panel Chair
Panelist
Panelist.
Dated: January 2, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum