Peggy R. Dylan v.
Firewalking Institute of Research and Education
Claim Number: FA0802001144244
PARTIES
Complainant is Peggy R. Dylan (“Complainant”), represented by Eric
A. Handler, of Donahue Gallagher Woods LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sundoor.org>, <sundoor.net> and <sun-door.com>, registered
with Tucows
Inc.
PANEL
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.
Joel M. Grossman, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 13, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 13, 2008.
On February 14, 2008, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <sundoor.org>, <sundoor.net> and <sun-door.com> domain
names are registered with Tucows Inc. and
that the Respondent is the current registrant of the names. Tucows Inc.
has verified that Respondent is bound by the Tucows
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 20, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 11, 2008 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@sundoor.org, postmaster@sundoor.net and
postmaster@sun-door.com by e-mail.
A timely electronic Response was received and determined to be complete
on March 11, 2008. The Response was deficient under ICANN Rule 5
as the hard copy of the Response was received after the Response deadline, and
payment for Respondent’s requested three-member Panel was received after the
Response deadline.
A timely Additional Submission was received from Respondent on March
17, 2008, and determined to be complete.
A timely Additional Submission from Complainant was received on March
25, 2008. An untimely second Additional Submission from Respondent was received
on March 31, 2008. This Additional Submission is not timely under the dictates
of Rule 7 of the Policy. However, the Panel has reviewed, and will take note
of, matters set forth in this second Additional Submission.
On March 20, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts rights in the “sundoor” mark based upon both common
law trademark, including nearly 25 years of use of the
name sufficient to create a secondary meaning in the name, and based on its
federal service mark number 2,679,786, registered January 9, 2001 and granted
on January 28, 2003. Having established
its rights in the mark, Complainant asserts that the domain names are identical
to, or confusingly similar to the mark. Complainant
notes that the only difference between its mark and the domain names is the
gLTD “.net” or “.org,” or the added hyphen in the <sun-door.com> name, distinctions too small to make a
difference or remove the confusing similarity. Complainant next asserts that Respondent has
no rights or legitimate interests in the names, noting that use of the mark by
Respondent is likely to confuse ordinary consumers. Further, Respondent is not generally known by
the names. Indeed, the Internet user
typing in any of the names is automatically redirected to Respondent’s <firewalking.com>
website. Complainant asserts that
Respondent’s use of the domain names does not constitute a bona fide offering of goods and services because the domain names
serve only to divert Internet users attempting
to reach Complainant’s website to Respondent’s website as a means of
competing with Complainant. While
Respondent contends that he has community property rights in the mark dating
back to the time when Complainant and Respondent were married, Complainant
contends that Respondent acknowledged Complainant’s sole ownership of the mark
as part of their dissolution, and that Respondent has indicated in many ways,
including on its <firewalking.com> website, that it no longer is known by
the mark. Complainant further notes that
Respondent did not contest the federal service mark registration, and the mark
is now incontestable. Finally,
Complainant asserts that the domain names were registered in, and are being
used in bad faith. First, Respondent
registered the names with knowledge of the Complainant’s mark. Second, Respondent is using the domain names
for the sole purpose of confusing Internet users who are seeking Complainant’s
website, and then redirecting them to Respondent’s website. Thus, Respondent is using the names to disrupt
Complainant’s business, and, for commercial gain, to attract Internet users to
its website by use of confusingly similar names.
B. Respondent
As a preliminary matter, Respondent challenges the Panel’s jurisdiction
to act in this matter. According to
Respondent, this dispute is essentially a family law matter, namely the correct
disposition of intellectual property which at one time was jointly owned as
community property by Complainant and Respondent while they were married. Respondent contends that proper jurisdiction
is in the trial court which heard the dissolution case. Respondent further contends that the issues of
the “sundoor” service mark are complex and should be heard in
C. Additional Submissions
Complainant’s Additional Submission first addresses the jurisdictional
issues raised by Respondent. Complainant
points out that the dissolution matter in California Superior Court is not
currently pending, and in fact has been closed for 22 years. Further, in response to Respondent’s
suggestion that this complex intellectual property dispute belongs in federal
district court, Complainant points out that when registering the domain names
Respondent agreed to submit any disputes such as the present one to an ICANN administrative
proceeding such as this one. Complainant
also asserts that Respondent does not contest Complainant’s rights in the mark,
and cannot demonstrate his own rights in the mark. Complainant points out that on his own
website, Respondent disclaims any interest in the “sundoor” mark. Further, Respondent does not dispute the fact
that each of the disputed domain names resolves to Respondent’s website. Finally, Complainant takes issue with
Respondent’s claim that the “sundoor” mark is too generic to be protectable,
noting that the USPTO granted the service mark, and this point is no longer
contestable.
Respondent’s Additional Submission asserts that the “sundoor” mark is
too generic to be protectable. Additionally,
Respondent contends that he must share in the rights to the mark, since the
mark was community property and this property was not assigned to Complainant
in the dissolution proceeding. Respondent
contends that he developed the mark with Complainant and therefore still has
rights in the mark. Respondent also
points out that two of the domain names were registered prior to the service
mark being issued, and therefore these two domain names cannot be contested. Respondent’s second Additional Submission
objects to the decision of the NAF not to appoint a 3-member panel to hear this
matter, while acknowledging that payment was not timely received for the
3-member panel. Respondent also objects
to what he believes are misstatements in Complainant’s Additional Submission in
terms of confusing the two Respondents, the person Bruce (Tolly) Burkan and his
d/b/a Firewalking Institute. Respondent
also argues, from trademark law cases, that his use of the “sundoor” mark is
senior and Complainant cannot prevent him from using the mark.
FINDINGS
The Panel finds that (1) the domain names are
identical to, or confusingly similar to Complainant’s mark, and that
Complainant has rights in the mark;
(2) Respondent has no rights or legitimate
interests in the names; and
(3) the names were
registered and are being used in bad faith.
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.”
Paragraph 4(a) of the Policy 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 Re Jurisdiction
Respondent
has asserted that the Panel is without jurisdiction in this case, asserting (a)
that the matter is essentially a family law dispute that arises out of division
of community property, and must be decided in California Superior Court, and
(b) that this is a complex intellectual property matter that must be
adjudicated in federal district court. Putting aside the fact that Respondent
contradicts himself, by asserting that this matter must be determined both in
state superior court and in federal district court, the Panel determines that
it has jurisdiction in this case. As
noted by the Complainant in her Additional Submission, like anyone else who
registers a domain name, the Respondent agreed when registering the disputed
domain names to submit a dispute to this or a similar ICANN panel. That agreement is binding. See
Preliminary Issue Re Three
Member Panel Request
Respondent asserts in its second Additional Submission that, even
though its three member panel request was not paid for in a timely manner, that
it substantially complied with UDRP Rule 5(c) by indicating that a check was on
the way (in fact a faxed copy of the check was provided to NAF). The Panel finds that NAF’s strict
construction of the Rule was not in error and that the appointment of a single
member panel was not prejudicial to Respondent, as the Panel has carefully
reviewed ALL of the submitted evidence.
Respondent’s request for a three member panel is therefore denied.
Complainant’s rights in the mark are both
common law and through a federally registered service mark. Complainant asserts, and Respondent does not
dispute, that she has used the SUNDOOR mark in a broad context for over twenty
years, to the extent that the name has taken on a secondary meaning. See
British Broad Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000). See also
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (“The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.”). Additionally, Complainant has filed for and
obtained a federal service mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004). The
domain names are clearly identical to or confusingly similar to the
Complainant’s mark. Respondent makes no
argument to the contrary, nor could he. Each of the domain names fully incorporates
the mark, and the only difference is the generic top level domain, which is
insufficient to avoid confusion. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000). As for
the domain name <sun-door.com>,
the hyphen is irrelevant in determining confusing similarity. See Health Devices Corp. v.
Because the Complainant has made a prima facie showing in support of her
allegations the burden now shifts to Respondent to show that he has rights or
legitimate interests in the names. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Respondent cannot meet that burden. First, Respondent is not commonly known by the
names. Indeed, on his own website
Respondent disavows any connection to the names. On the “Q. and A.” portion of his website
Respondent states: “in 2003 the Firewalking Institute publicly disclaimed any
connection with Sundoor…” While
Respondent maintains that the “sundoor” mark was community property, and he
owns it along with his ex-wife because it was never divided by the court in the
divorce proceedings, the fact is that Respondent is not presently known by the
names and appears to be using the names only as a means of disrupting
Complainant’s business. Such use is not
a bona fide offering of goods or
services, or a legitimate noncommercial use. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb.
16, 2006) (holding that respondent’s use of confusingly similar domain names to
complainant Wal-Mart’s mark in order to divert Internet users to its site did
not constitute a bona fide offering of goods and services). Because Respondent is not commonly known by
the names, and because he is not using the names to carry on a bona fide offering of goods or services,
or a legitimate noncommercial use, the Panel determines that Respondent has no
legitimate rights or interest in the names. In his second Additional Submission Respondent
cites cases interpreting the Lanham Act which he says demonstrate that the
senior user of a mark cannot lose his rights to use the mark. However, this forum, and this case, are not about trademark law, and
whether or not Respondent may continue to use the “sundoor” mark. Such issues must be decided in another forum. Rather, this matter is about the domain names
which Respondent registered, and the Policy dictates under what circumstances
registered domain names may be transferred from a Respondent to a Complainant. Based on the Policy, and not based on general
principles of trademark law, the Panel has determined that Respondent has no
rights or legitimate interests in the domain name.
First, it is clear that Respondent registered
the names with knowledge of Complainant’s mark, whether common law or federally
issued. This fact alone can be evidence
of bad faith. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006). See also
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <sundoor.org>, <sundoor.net>
and <sun-door.com>
domain names be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: April 3, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum