Jack Rogers Operating Company LLC v. George
Claim Number: FA0905001263143
PARTIES
Complainant is Jack Rogers Operating Company LLC (“Complainant”), represented by Richard P. Flaggert, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jackrogers.com>,
registered with Godaddy.com, 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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 15, 2009; the National Arbitration Forum received a hard
copy of the Complaint on May 18, 2009.
On May 15, 2009, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <jackrogers.com>
domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name.
Godaddy.com, Inc. has verified that Respondent is bound by the
Godaddy.com, 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 May 26, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 15, 2009 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@jackrogers.com by e-mail.
Respondent's Response was received in hard copy and electronic copy on June 18, 2009. However, in that both copies were received subsequent to the Response deadline, the Response is considered deficient under ICANN Rule 5. Notwithstanding, the Panel determined to consider the Response for all purposes.
An Additional Submission was received from Complainant on June 19, 2009
and found to be timely and complete pursuant to the National Arbitration
Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on June 19, 2009
and found to be timely and complete pursuant to the National Arbitration
Forum’s Supplemental Rule 7.
On June 18, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <jackrogers.com> domain name is identical to Complainant’s JACK ROGERS mark.
2. Respondent does not have any rights or legitimate interests in the <jackrogers.com> domain name.
3. Respondent registered and used the <jackrogers.com> domain name in bad faith.
B. Respondent submitted a Response which essentially attacked the position of Complainant on the grounds that the USPTO registrations of Complainant for JACK ROGERS were weak and had been abandoned. Thus, Respondent’s registration and renewal registration of the <jackrogers.com> was proper in that Respondent had long standing rights and legitimate interests in the domain with the knowledge and consent of Complainant and did not register and use it in bad faith.
C. Additional Submissions:
Each
of the parties filed an Additional Submission which was considered by the
Panel.
FINDINGS
Complainant has rights in the JACK
ROGERS mark through its evidence of a registration of the mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,492,461 issued
September 25, 2001, filed September 7, 2000).
Complainant also held a prior registration of the JACK ROGERS mark with
the USPTO, but the registration was not renewed and has now expired (Reg. No.
872,198 issued July 1, 1969, canceled July 10, 2001). In
addition to its registration, Complainant has provided ample evidence of common
law rights in the JACK ROGERS mark.
Since 1951 Complainant, through its predecessor in interest, has used
the JACK ROGERS mark in connection with its footwear made famous, in part, by
the JACK ROGERS sandals worn by Jacqueline Kennedy. In both its Complaint and Additional
Submission, Complainant has submitted various media articles and advertisements
as evidence of use and media attention as well as affidavits in support of
common law trademark rights. In its
Additional Submission, Complainant asserts that since 1962 its revenue from
sales of Complainant’s footwear bearing the JACK ROGERS mark has exceeded $150
million, and most recently in 2008, Complainant’s sales revenue was $5.2
million. However, Respondent’s
registration date of April 11, 2000 for the disputed domain name predates the
filing date of Complainant’s trademark registration for the JACK ROGERS mark. This case has arisen due to Respondent’s
renewal of the registration on April 8, 2009.
Respondent notes not only its registration of
the domain name at issue on April 10, 2000, prior to any USPTO registration of
the JACK ROGERS mark by Complainant, it quotes the following disclaimer of
Complainant upon registration of the design mark with the USPTO: “No claim is
made to the exclusive right to use ‘JACK ROGERS,’ apart from the mark as
shown.” Further, Respondent attacks the common law trademark theory of
Complainant by saying that there has been an insufficient showing of a
secondary meaning with respect to the JACK ROGERS mark.
Complainant asserts that it has not licensed or otherwise authorized
the Respondent to use the JACK ROGERS mark and that the Respondent is not
commonly known by that name. However, during
the nine year period from initial registration of the domain to its renewal,
Respondent made use of the name in connection with a bona fide offering of “Jack
Rogers” footwear with the knowledge and tacit consent of Complainant and
Complainant’s predecessor in interest.
Further, between April 2000 and the filing of the Compliant, it appears
that neither Complainant nor Complainant’s predecessor in interest requested
that Respondent cease use of the domain <jackrogers.com>. Complainant’s predecessor in interest closely
monitored Respondent’s use of the domain and did ask Respondent from time to
time to modify its use of <jackrogers.com>, and Respondent always
complied with such requests. Such
requests included asking Respondent to forward the domain to Respondent’s other domain <caramiasf.com>
(in an around May 2002); specifically asking Respondent to offer other
trademarked footwear in addition to “Jack
Rogers” footwear (in and around March 2003); and in July 2003, asking
that <jackrogers.com>
redirect to a general Internet search page.
Respondent complied with each of these requests and, since 2003, <jackrogers.com>
has directed to a general Internet search page. Correspondingly, since approximately
September 2003, if “jackrogers.com” is typed in the URL line on a web browser,
the link comes up as Forbidden. [Annex
11]. Additionally, at all times
Complainant and Complainant’s predecessor in interest have continued to supply
and fill Respondent’s orders for Complainant’s “Jack Rogers” footwear, when they were well aware that Respondent
was a large retailer of the footwear to the public through Respondent’s brick
and mortar as well as online stores, namely, Cara
Mia, <caramiasf.com> and <sandalworld.com>.
It does not appear that Respondent acquired and registered the domain name at issue for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant, or to a competitor of the Complainant. Further, there is no allegation that Respondent actually offered to sell the domain name to Complainant, Complainant’s predecessor in interest, or to any third party.
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.
Complainant has rights in the JACK
ROGERS mark through its evidence of a registration of the mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,492,461 issued
September 25, 2001, filed September 7, 2000).
Complainant also held a prior registration of the JACK ROGERS mark with the
USPTO, but the registration was not renewed and is now expired (Reg. No.
872,198 issued July 1, 1969, canceled July 10, 2001). Still, Complainant has a valid trademark
registration, and the Panel finds that Complainant has established rights in
the mark under the liberal interpretation given Policy ¶ 4(a)(i). See Intel Corp. v.
Macare, FA 660685
(Nat. Arb.
Forum Apr. 26, 2006) (finding that the complainant had established rights in
the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the
USPTO); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum
Nov. 29, 2005) (finding from a preponderance of the evidence that the
complainant had registered its mark with national trademark authorities, the
Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes
of Policy ¶ 4(a)(i).”).
In addition to its registration, Complainant has common law rights in
the JACK ROGERS mark. Since 1951,
Complainant has used the JACK ROGERS mark in connection with its footwear. In both its Complaint and Additional
Submission, Complainant has submitted various media articles and advertisements
as evidence of use and media attention.
In its Additional Submission, Complainant asserts that since 1962 its
revenue from sales of Complainant’s footwear bearing the JACK ROGERS mark has
exceeded $150 million, and most recently in 2008, Complainant’s sales revenue
was $5.2 million. These articles and sales
revenue figures are a sufficient showing of secondary meaning in the
mark, so as to confer upon Complainant common law rights in the JACK
ROGERS mark under Policy ¶ 4(a)(i). See Enfinger
Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005)
(finding that the complainant had common law rights in the McMULLEN COVE mark
because the complainant provided sufficient evidence that the mark had acquired
secondary meaning, including development plans, correspondence with government
officials, and newspaper articles featuring the mark); see also Bibbero Sys., Inc. v. Tseu & Assoc.,
FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had
registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the
BIBBERO mark because it had developed brand name recognition with the word
“bibbero”).
The <jackrogers.com> domain name is identical to its JACK ROGERS mark because the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant for purposes of determining identicality. The disputed domain name is identical to Complainant’s mark because the deletion of the space within the mark is irrelevant for purposes of determining identicality. Accordingly, the Panel finds that the <jackrogers.com> domain name is identical to the JACK ROGERS mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
While there are arguments to the
effect that the Complainant’s rights in the JACK ROGERS mark are not exclusive
and not particularly well protected, the Panel finds that the Complainant has
satisfied Policy ¶ 4(a)(i).
Complainant has not established a prima facie
case in support of its arguments that Respondent lacks rights and legitimate
interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006)
(holding that the complainant did not satisfactorily meet its burden and as a
result found that the respondent had rights and legitimate interests in the
domain name under UDRP ¶ 4(a)(ii)); see
also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent’s use of a pay-per-click website
resolving from the <jackrogers.com> domain name is a bona fide offering of
goods and services. With Complainant’s
full knowledge and tacit consent, Respondent has made actual use of the
disputed domain name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See EU Prop. Portfolio
Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7,
2007) (holding that the respondent’s website usage of pay-per-click links was a
bona fide offering of goods and
services).
Respondent
is “one of the largest retailers of Complainant’s footwear” and Respondent has
had an implied license, since 1999, to use the JACK ROGERS mark, as authorized
by Complainant’s predecessor in interest.
Accordingly, the Panel finds that
Respondent has made demonstrable preparations to use the disputed domain name
in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). See Farberware Licensing
Co., LLC v. Pfaltzgraff
Accordingly, the Complainant has
not satisfied Policy ¶ 4(a)(ii).
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
As noted above, Respondent has
rights or legitimate interests in the <jackrogers.com> domain name
pursuant to Policy ¶ 4(a)(ii), and thus Respondent did
not register or use the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom
Cycle, D2004-0824 (WIPO Jan. 18,
2005) (finding that the issue of bad faith registration and use was moot once
the panel found the respondent had rights or legitimate interests in the
disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track,
FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has
rights and legitimate interests in the disputed domain name, his registration
is not in bad faith.”).
Since Respondent is “one of the largest retailers of Complainant’s
footwear” and Respondent has an implied license to use the JACK ROGERS mark,
also as noted above, Respondent did not register or use the disputed domain
name in bad faith under Policy ¶ 4(a)(iii). See Eddie Bauer, Inc. v. Cole Sales Solutions,
Inc., AF-0243 (e-Resolution July 21, 2000) (denying a complaint on the
grounds that that the domain name <eddiebauercamping.com> was not
registered and being used in bad faith because no commercial use was
contemplated until a formal licensing agreement with the complainant was in
place. Further, finding that the domain name had not yet been used, other than
to advertise a forthcoming website, which does not amount to use in bad faith);
see also Weber-Stephen Prods. Co. v. Armitage Hardware, D2000-0187
(WIPO May 11, 2000) (finding that the respondent as a licensed dealer of the
complainant’s products was using <webergrills.com>,
<webergrill.com>, <weber-grills.com>,
<weber-grill.com>,<webergrillsource.com>,
<webergrillstore.com>, <webergrillshowroom.com>,
<webergrills-ah.com>, <webgrills.com>, and <web-grills.com> in good faith
because the complainant was aware of and repeatedly approved the respondent’s
website over a period of three years).
Accordingly, the Complainant has
not satisfied Policy ¶ 4(a)(iii).
DECISION
The Complainant having failed to satisfy all three elements of the
Policy, the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: June 29, 2009
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum