The Mark Travel Corporation v. ATHS d/b/a
Snug Harbor Travel
Claim Number: FA0304000154644
PARTIES
Complainant
is The Mark Travel Corporation,
Milwaukee, WI (“Complainant”) represented by Brian G. Gilpin, of Godfrey & Kahn. Respondent is ATHS, Amityville, NY (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
The
domain name at issue is <funjetvacations.net>,
registered with Melbourne It, Ltd. d/b/a
Internet Names Worldwide.
PANEL
The
undersigned certifies 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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 16, 2003; the Forum received a hard copy of the
Complaint on April 17, 2003.
On
April 17, 2003, Melbourne It, Ltd.
d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the
domain name <funjetvacations.net>
is registered with Melbourne It, Ltd.
d/b/a Internet Names Worldwide and that the Respondent is the current
registrant of the name. Melbourne It, Ltd. d/b/a Internet Names
Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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
April 17, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 7, 2003
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@funjetvacations.net by e-mail.
A
timely Response was received and determined to be complete on May 7, 2003.
Complainant
submitted a timely Additional Submission on May 12, 2003.
On May 20, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Houston Putnam
Lowry, Charted Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
provides individuals, companies, and families outstanding travel services and
low prices in connection with airfare, hotels, and travel packages. Currently, Complainant offers air, hotel and
travel packages to some of the most popular destinations, including several
destinations in Mexico, Europe, Florida, California, Aruba, Jamaica, and Las
Vegas. Complainant has built an
extensive travel network, partnering with airlines such as Air Jamaica, Alaska
Airlines, Aloha Airlines, American Airlines, ATA, Continental Airlines, Delta,
Hawaiian Airlines, Ryan International Airlines, US Airways, and United and
hotels such as Buena Vista Suites, Marriott, Days Inn, Embassy Suites,
Econolodge, Hilton, Holiday Inn, La Quinta, and Sheraton to name a few. In addition, Complainant operates charter
flights to select locations. (Schaefer
Aff. ¶ 2.)
Complainant
owns many trademarks and registrations, including the following (the “FUNJET
Family of Trademarks”):
Since
at least as early as 1994, Complainant has been using the mark FUNJET VACATIONS
in connection with certain travel-related services. In 1994, Complainant filed an application in the United States
Patent and Trademark Office to register the mark FUNJET VACATIONS. In 1995, Complainant’s U.S. Reg. No.
1,936,065 issued for the mark FUNJET VACATIONS in connection with “wholesale
and retail travel services, namely, arranging air transportation and ground
accommodation travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since
at least as early as 1994, Complainant has been using the following mark in
connection with certain travel-related services: 
. In 1995, Complainant filed an application in
the United States Patent and Trademark Office to register the mark. In 1997, Complainant’s U.S. Reg. No.
2,031,874 issued for the mark for use in connection with “wholesale and retail
travel services, namely, arranging air transportation and ground accommodation
travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since
at least as early as 1994, Complainant has been using the following mark in
connection with certain travel-related services: 
. In 1995, Complainant filed an application in
the United States Patent and Trademark Office to register the mark. In 1997, Complainant’s U.S. Reg. No.
2,040,036 issued for the mark for use in connection with “wholesale and retail
travel services, namely, arranging air transportation and ground accommodation
travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since
at least as early as 1994, Complainant has been using the following mark in
connection with certain travel-related services: 
. In 2002, Complainant filed an application in
the United States Patent and Trademark Office to register the mark in
connection with “wholesale and retail travel services, namely, arranging air
transportation and ground accommodation travel packages for marketing by retail
travel agents.” (Schaefer Aff. ¶ 5.)
Since
at least as early as 1975, Complainant has been using the mark FUNJET in
connection with certain travel-related services. In 1982, Complainant filed an application in the United States
Patent and Trademark Office to register the mark FUNJET. In 1983, Complainant’s U.S. Reg. No.
1,258,871 issued for the mark FUNJET in connection with “wholesale travel
services-namely, arranging air transportation and ground accommodation travel
packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since
at least as early as 1975, Complainant has been using the mark LAS VEGAS FUNJET
in connection with certain travel-related services. In 1978, Complainant filed an application in the United States
Patent and Trademark Office to register the mark LAS VEGAS FUNJET. In 1980, Complainant’s U.S. Reg. No.
1,137,030 issued for the mark LAS VEGAS FUNJET in connection with “wholesale
travel services-namely, arranging air transportation and ground accommodation
travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since
at least as early as 1977, Complainant has been using the mark FLORIDA FUNJET
in connection with certain travel-related services. In 1978, Complainant filed an application in the United States
Patent and Trademark Office to register the mark FLORIDA FUNJET. In 1978, Complainant’s U.S. Reg. No.
1,104,487 issued for the mark FLORIDA FUNJET in connection with “wholesale
travel services-namely, arranging air transportation and ground accommodation
travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since
at least as early as 1986, Complainant has been using the mark FUNWAY HOLIDAYS
FUNJET in connection with certain travel-related services. In 1986, Complainant filed an application in
the United States Patent and Trademark Office to register the mark FUNWAY
HOLIDAYS FUNJET. In 1997, Complainant’s
U.S. Reg. No. 1,455,774 issued for the mark FUNWAY HOLIDAYS FUNJET in
connection with “wholesale travel services, namely, arranging air
transportation and ground accommodation travel packages for marketing by retail
travel agents.” (Schaefer Aff. ¶ 4.)
Since
at least as early as 1987, Complainant has been using the mark FUNJET … THE
FUNWAY TO GET AWAY! in connection with certain travel-related services. In 1993, Complainant filed an application in
the United States Patent and Trademark Office to register the mark FUNJET … THE
FUNWAY TO GET AWAY!. In 1993,
Complainant’s U.S. Reg. No. 1,804,816 issued for the mark FUNJET … THE FUNWAY
TO GET AWAY! in connection with “wholesale travel services, namely, arranging
air transportation and ground accommodation travel packages for marketing by
retail travel agents.” (Schaefer Aff. ¶
4.)
Since
at least as early as 1995, Complainant has been using the following mark in
connection with certain travel-related services: 
. In 1996, Complainant filed an application in
the United States Patent and Trademark Office to register. In 1997, Complainant’s U.S. Reg. No.
2,115,459 issued for the mark in connection with “wholesale and retail travel
services, namely, arranging air transportation and ground accommodation travel
packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since
at least as early as 1995, Complainant has been using the following mark in
connection with certain travel-related services: 
. In 1996, Complainant filed an application in
the United States Patent and Trademark Office to register the mark. In 1997, Complainant’s U.S. Reg. No.
2,106,617 issued for the mark in connection with “wholesale and retail travel
services, namely, arranging air transportation and ground accommodation travel
packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
In
1995, Complainant began using certain of its FUNJET Family of Trademarks on the
internet in connection with travel services.
(Schaefer Aff. ¶ 6.) Complainant
has registered and is using the following domain names in connection with its
internet-based sales and marketing efforts:
Domain Name Registration
Date
funjetvacations.com June 17,
1998
funjet.com April 24, 1995
lasvegasfunjet.com December 8, 1998
funjetlasvegas.com December
8, 1998
funjetjamaica.com December
8, 1998
jamaicafunjet.com December 8, 1998
cancunfunjet.com December
8, 1998
funjetcancun.com December
8, 1998
(Schaefer
Aff. ¶ 6.) Through widespread use of
its FUNJET Family of Trademarks and domain names throughout the United States
and the world, Complainant has acquired a valuable reputation and developed
goodwill.
First, Respondent registered the domain name <funjetvacations.net>
on July 2, 2002 (Schaefer Aff. ¶ 13.)
Complainant owned nine federal trademark registrations for the FUNJET
Family of Trademarks at that time.
(Schaefer Aff. ¶ 4.) The fact
that Respondent registered the <funjetvacations.net> domain name,
despite the existence of Complainant’s registration for an identical mark and
many similar marks, is indicative that registration of the domain name was
designed to trade on the goodwill of Complainant’s mark and was registered in
bad faith. Cellular One Group v. Paul Brien, Case No. D2000-28 (WIPO March 10,
2000). “Respondent’s use of exactly the
same name as Complainant’s trademark evidences an intent to attract Internet
users to its website by creating a likelihood of confusion with the
Complainant’s mark. Such intent is
manifest from the name itself.” Infinity2,
Inc. v. Total Health & Wellness,
FA 94867 (Nat. Arb. Forum Jul. 5, 2000).
Second, Respondent had constructive and actual knowledge of
Complainant’s rights in the FUNJET Family of Trademarks, thus supporting a
finding of bad faith. See Expedia, Inc. v. European travel Network,
D2000-0137 (WIPO Apr. 19, 2000); Document
Technologies v. International Electronic Communications, Inc., D2000-0270
(WIPO Jun. 6, 2000) (Respondent’s knowledge of Complainant’s mark at the time
of registration of the domain name suggests bad faith). Respondent had constructive notice of
Complainant’s FUNJET Family of Trademarks marks due to Complainant’s numerous
registrations prior to the registration of funjetvacations.net. See
Toyota Motor Sales USA v. Rafi Hamid d/b/a ABC Automobile Buyer, D20001-0032
(WIPO March 28, 2001). Further, Respondent is a distributor of certain of
Complainant’s travel packages.
(Schaefer Aff. ¶ 8.) These
travel packages are provided under the FUNJET Family of Trademarks. As
Respondent distributes travel packages compiled by Complainant, there can be no
doubt that Respondent was aware of Complainant’s trademarks when it registered
the <funjetvacations.net> domain
name. In
addition, Respondent refers to itself on its website connected to
funjetvacations.net as “Your Funjet Vacations Experts.” (Ex. 2).
By doing so, Respondent refers to Complainant by one of its FUNJET
Family of Trademarks. Such reference is
tantamount to admitting to the existence of Complainant’s rights in the marks.
Third, Respondent registered
a domain name containing at least two of Complainant’s trademarks in their
entireties. (Schaefer Aff. ¶ 13). Such registration alone is evidence of bad
faith. See Toyota Motor Sales USA v. Rafi Hamid d/b/a ABC Automobile Buyer,
D20001-0032 (WIPO March 28, 2001).
Specifically, “No plausible explanation exists as to why Respondent
selected the name … [FUNJET VACATIONS] as part of the Domain Name[s] other than
to trade on the goodwill of … [Complainant].”
Id.
Lastly, Respondent’s offering to sell the disputed domain name to
Complainant for an amount in excess of its out of pocket expenses is evidence
of bad faith. See Wellness International Network, LTD v. Apostolics.com, FA 96189
(Nat. Arb. Forum Jan. 16, 2001) (finding that an offer to sell domain name for
$60,000 is evidence of bad faith); Dollar
Rent A Car Systems Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11,
2000) (finding that Respondent demonstrates bad faith by registering the domain
name for the purpose of transferring the domain name in the amount of $3,000); Moynahan v. Fantastic Sites, Inc.,
D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where Respondent offered to
sell the domain name to Complainant for $10,000). Here, Respondent has offered to sell Complainant the domain name <funjetvacations.net>
for $50,000. (Schaefer Aff. ¶ 12.) Such an amount is clearly in excess of
Respondent’s expenses associated with the domain name <funjetvacations.net>.
B. Respondent
As
noted in the Complaint, Respondent is an authorized distributor of
Complainant. Complainant admits in the
Complaint that:
Respondent has certainly been using the domain name in dispute in
connection with the offering of goods or services [and]
. . .
may have limited rights to use and display
Complainant’s trademarks for promotional purposes relating to its resale of the
travel products offered by Complainant.
Respondent is a
licensed travel agent and has been an authorized reseller of Complainant’s
travel products and services since 2001.
Declaration of Besnik Vathi at ¶ 1.
(“Vathi Dec.”). Complainant has
consented to Respondent’s sale of Complainant’s products and services through
its web site. Annexed as Exhibit 2 of
the Response are various documents sent by Complainant to Respondent evidencing
this relationship as well as copies of checks paid by Complainant to Respondent
for commission earned in connection with booked vacations. In fact, Complainant has even paid
commissions to Respondent as late as April 22, 2003 – following the filing of
this Complaint. Id.
In 2002, Respondent
sold Complainant vacation packages to approximately 450 passengers, which
generated revenues for Complainant in excess of $200,000. Beznik Dec. at ¶ 2. This year, Respondent has already sold
Complainant vacation packages to approximately 550 passengers, with estimated
revenues to Complainant of $300,000. Id.
at 3. Respondent spends approximately
$4,000 per month advertising Complainant’s vacation packages. Id. at ¶ 4.
In early April 2003,
counsel for Complainant, Peter Schaefer, verbally contacted Respondent and
advised him to remove certain links from the bottom of Respondent’s web site
that were associated with travel products deemed competitive by
Complainant. Id. at ¶ 5. This was the first complaint made by
Complainant at any time. Id. Respondent removed those links on the same
day of Mr. Schaefer’s call. Id. During the phone call, Mr. Schaefer also
stated, for the first time, that the Complainant objected to Respondent’s use
and registration of the Disputed Domain.
Id. at ¶ 6. He offered Respondent $50.00 to cease and
desist its use of the domain name. Id. Respondent was infuriated with what he was
offered as heavy-handed tactics from the lawyer of a company for whom
Respondent had been working with in good faith to generate substantial travel
business, and had invested substantial money in operating and advertising the
business. Respondent indicated he had
no intention of giving the name away, and that Complainant would have to pay
him $50,000 to get the name. Id. This number certainly was not made as an
offer to Complainant, as characterized by Respondent. Id. Respondent was
simply expressing his outrage to Complainant’s counsel with a response to
Complainant’s unreasonable demands and bulling tactics. Id.
Nothing governing Respondent’s
distributor relationship with Complainant limits Respondent’s use of
Complainant’s mark in a domain name, and Complainant even admits that
Respondent has limited rights to use the mark to promote its vacation packages. Respondent clearly states on the web site
that is operated by Snug Harbor Travel, and that it is “one of the largest
Seller[s] of Funjet vacations.”
Respondent did not register the Disputed Domain to sell to Complainant,
to disrupt its business, to prevent Complainant from registering a domain name
reflecting its trademark, or to confuse users.
Vathi Dec. at ¶ 7.
C.
Additional Submission by Complainant
“The majority view rejects any
claim by a licensee to the right to register a domain name consisting of, or
containing, the licensor’s trademark.” Nikon,
Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26,
2001); Hunter Fan Company v. MSS, FA 98067 (Nat. Arb. Forum Aug.
23, 2001) (citing and agreeing with Nikon).
Similarly, an authorized distributor or even an entity actually licensed
to sell products has no claim to the right to register a domain name consisting
of the manufacturer’s trademarks. Toyota
Jidosha Kabushiki Kaisha t/a Toyota Motor Corp. v. Double Time Jazz a/k/a Jamey
Aerbersold, FA 113316 (Nat. Arb. Forum July 10, 2002); Motorola
Inc. v. NewGate Internet Inc., D2000-0113 (WIPO Apr. 14, 2000) (stating that
“the right to resell products does not create a right to use a mark more
extensively than required to advertise and sell the product. The use of a mark as a domain name clearly
goes further than what is required merely to resell products.”); Stanley
Works and Stanley Logistics, Inc. v. Camp Creek Co., D2000-0113
(WIPO Apr. 13, 2000) (reasoning that “even if Respondent is a retail seller of
Complainant’s products, the collateral trademark use necessary to allow resell
[sic] of Complainant’s product is not enough to give Respondent proprietary
rights in Complainant’s trademarks, and certainly not enough to confer the
right to use these trademarks as domain names.”); Ullfrotte AB v. Bollnas
Imports, D2000-1176 (WIPO Oct. 23, 2000) (finding that the fact that
Respondent legitimately sold goods originating from the Complainant does not
give Respondent the right to register and use the mark as a domain name without
the consent of the trademark owner); Gorstew Ltd. v. Caribbean Tours &
Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (reasoning that use of the
trademark in a domain name is “classic trademark infringement, even if the ultimate
result of the same is that some revenue flows to the owner of the marks”). In this case, Respondent’s assertion that it
has legitimate interests in the disputed domain name is similar to the
assertion made by the respondent in Infinity2, Inc. v. Total Health &
Wellness:
Respondent also asserts that it has a legitimate,
fair use of the name, without intent to misleadingly divert consumers or to
tarnish the . . . mark. Contrary to
Respondent’s assertion in this regard, its intent appears to be just the
opposite, that is to attract consumers to Respondent’s website by using
Complainant’s trademark as the sole
component of its domain name except only for the domain level designation. The intent to divert consumers is manifest
from the name itself, which suggests clearly and compellingly that that the
website belongs not to an entity that simply distributes [Complainant’s]
products but to one that is
[Complainant] itself.
Infinity2, Inc. v. Total
Health & Wellness, FA 94867 (Nat. Arb. Forum July 5, 2000) (emphasis
in original).
A distributor cannot use a
manufacturer’s trademark in a domain name when the distributor, even though
selling the manufacturer’s goods, has no permission to use the trademark as the
domain name. Avon
Products, Inc. v. Lee, D2001-0272 (WIPO Apr. 12, 2001). “Respondent in
this case would only have a right to register the domain name . . . if
Complainant had specifically granted that right.” Nokia Corp. v. Nokia Ringtones &
Logos Hotline, D2001-1101 (WIPO Oct. 18, 2001).
See also Nokia Corp. v. Nick Holmes t/a Etype
Media, D2002-0001 (March 6, 2002) (finding that respondent did not have the
right to incorporate a trademark into a domain name without the authority of
the trademark owner). “That is
especially true if the domain name suggests a broader relationship than in fact
is the case.” R.T.
Quaife Engineering, Ltd. v. Luton, D2000-1201 (WIPO Nov. 14, 2000). The use of the domain under such
circumstances is not in connection with a bona fide offering of goods or
services. Caterpillar Inc. v. off
Road Equipment Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000).
FINDINGS
The operative acts of this case are very
simple. Complainant provides travel
packages under the mark “FunJet Vacations.”
Some of these packages are sold through travel agents, one of which is
Respondent (who has been selling these packages since 2001 and apparently
continues to sell them after this proceeding was commenced). Respondent earns a commission for each travel
package sold. Respondent is specifically
authorized to sell these packages electronically.
Respondent registered the domain name
FunJetVacations.net on July 2, 2002.
While this website originally contained links to travel offerings that
competed with FunJet offerings, such links were removed at Complainant’s
request. The only offerings on the <funjetvacations.net> domain name are Complainant’s travel products. The site contains the phrase “Your Funjet
Vacations Experts” and contains Respondent’s contact information.
Complainant markets its products under
eight domain names and Respondent uses one domain name in addition to the one
at issue in this proceeding.
Complainant notified Respondent by telephone on April 3, 2003 that it
was not authorized to use the “FunJet Vacations” trademark in a domain name.
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 trademark rights in the following family of FUNJET marks: FUNJET VACATIONS, FUNJET, LAS VEGAS FUNJET,
FLORIDA FUNJET, FUNWAY HOLIDAYS FUNJET, and FUNJET…THE FUNWAY TO GET AWAY! Complainant has used the FUNJET mark since
at least as early as 1975, and has used the FUNJET VACATIONS mark since at
least as early as 1994.
The
<funjetvacations.net> domain name is identical to Complainant’s
FUNJET VACATIONS trademark because the generic top-level domain “.net” is
irrelevant in a Policy ¶ 4(a)(i) analysis.
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Blue Sky Software Corp. v. Digital Sierra
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"). Furthermore, the
absence of a space between the words of the mark in the <funjetvacations.net> domain name is also inconsequential
because spaces are not permitted in second level domains. Therefore, the Panel finds the <funjetvacations.net> domain name identical to Complainant’s
FUNJET VACATIONS mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9,
2000) (finding that the domain name <radioshack.net> is identical to
Complainant’s mark, RADIO SHACK).
The Respondent also concedes this
point.
Under ICANN Dispute Resolution Policy
§4(c), the following is a partial list of how one might prove rights to a
domain name:
(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.
Respondent has
rights and legitimate interests in the domain name because it is an authorized
distributor of Complainant. As a
distributor, Respondent argues it uses the domain name in connection with a bona
fide offering of goods and services.
See Oki
Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001). An
authorized dealer of Complainant’s goods may use Complainant’s trademark in its
domain name if Respondent is
1) actually selling the goods or services at
issue;
2) selling only Complainant’s products on
the website in question;
3) accurately disclosing the relationship
between Complainant and Respondent (meaning Respondent is not causing confusion
by suggesting Respondent is the owner of the trademark); and
4) not attempting to corner the market in
all domain names incorporating Complainant’s mark and thereby prevent
Complainant from reflecting its mark in its own domain name); see also Weber-Stephen
Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (finding
that Respondent, as an authorized dealer of Complainant’s WEBER GRILL products,
had rights and legitimate interests in <webergrills.com>,
<webergrill.com>, <weber-grills.com>, <webergrillsource.com>,
<webergrillstore.com>, <webergrillshowroom.com>,
<webergrills-ah.com> and <webgrills.com> because it was using the
domain names in order to make a bona fide offering of Complainant’s goods and
services).
In this case, Respondent is actually
selling Complainant’s travel services.
Respondent is selling only Complainant’s
travel products on the disputed domain name, although it is possible to
eventually click through to Respondent’s other site where competing products
are sold. When Complainant objected to
certain hyperlinks because they connected to competing products, Respondent
removed the hyperlinks. Complainant
neither disputes or admits this. The
Panel has not independently reviewed the site because this proceeding only
considers the parties’ submission.
The website bears a logo that says:
“Funjetvacations.net – Your Funjet Vacation Experts.” It clearly discloses Respondent’s name (which allows a click
through to Respondent’s full contact information). Based upon this Panel’s knowledge of the travel business as a
consumer, this means Respondent re-sells Complainant’s products. The page also discloses “Snug Harbor Travel
is one of the largest Seller [sic] of Funjet Vacations.” Respondent is not claiming the trademark as
their own.
Respondent has registered only one domain
name, while Complainant has registered eight domain names (including
<funjetvacations.com>).
Other cases cited by Respondent, K&N
Engineering, Inc. v. Kinnor Services a/k/a Phenomena Ltd., D2000-1077 (WIPO
Jan. 19, 2001), Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017
(WIPO March 14, 2000), ABIT Computer Corporation v. Motherboard Super Store,
Inc., D2000-0399 (WIPO Aug. 8, 2000), Canon U.S.A. Inc., Astro Business
Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,
D2000-0819 (WIPO Oct. 16, 2000), Hewlett Packard Company, v. Napier, FA
94368 (Nat. Arb. Forum April 28, 2000), The Kittinger Company, Inc. v.
Fisgus, AF-0108A-B (eResolution May 8, 2000) and The New Piper Aircraft, Inc. v. Piper.com, FA0094367 (Nat. Arb. Forum May 2, 2000), are
more persuasive than the cases Complainant cites.
Most of the cases cited by Complainant
can be distinguished as follows:
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Case name |
Aggravating factor |
Date |
|
Stanley Works v. Camp Creek, Case D2000-0113 |
registered multiple names (10) |
13-Apr-00 |
|
RT Quaife v. Bill Luton, Case D2000-1201 |
failed to respond honestly to customer inquiries |
14-May-00 |
|
Infinity2 v. Total Health & Wellness, Case FA0005000094867 |
violated distributorship agreement |
5-Jul-00 |
|
Gorstew v. Twinsburg Travel, Case FA0005000094944 |
registered multiple names (9) |
7-Jul-00 |
|
Ullfrotte AB v. Bollnas Imports, Case
D2000-1176 |
confusion over who owns site/trademark |
23-Oct-00 |
|
Nikon et al v. Technilab, Case D2000-1774 |
sold competing goods using the trademark |
26-Feb-01 |
|
UVA Solar GmbH v. Mads Kragh, Case D2001-0373 |
distributor terminated |
7-May-01 |
|
Avon Products v. Lee, Case D2001-0272 |
confusion over who owns site/trademark |
22-May-01 |
|
Nokia v. Nokia Ringtones, Case D2001-1101 |
sold competing goods using the trademark |
18-Oct-01 |
There is no doubt an authorized
distributor of a trademarked service may use the trademark in connection with
the sale of the trademarked service.
Without a specific demarcation of how far the trademark is used (and
nothing specific was introduced into evidence here), it is clear the trademark
may be used in advertisements for the trademarked service. The trademark may also be used on stationary
and in brochures (once again in connection with the trademarked service). Although it is less common, distributors
sometime construct words to represent telephone numbers that incorporate a
trademark.
Respondent’s website was operational for
about 8 months before Complainant contacted Respondent.
Under these circumstances it can be said
Respondent meets the following safe harbors of the Uniform Dispute Resolution
Policy to acquire an interest in the disputed domain name:
4 (c)(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 and services; or
4 (c)(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.
Under
ICANN Uniform Domain Name Dispute Resolution Policy Paragraph 4(b), the
following non-exclusive factors indicate registration and use of a domain name
in bad faith:
(i) circumstances indicating that 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 respondent’s documented
out-of-pocket costs directly related to the domain name; or
(ii) 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 engaged in a pattern of
such conduct; or
(iii) 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 web
site 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 respondent’s web site or location or of a product or service on respondent’s
web site or location.
"Bad faith" is defined in
Black's Law Dictionary 7th edition at page 134 as: "1. Dishonesty of belief
or purpose..". In Halsey v. Brotherhood (1881), 19 Ch. D. 386 Lord
Coleridge L.C.J. in determining whether there was evidence of mala fides stated
that the task of the Court was to consider "whether there is anything to
show that what the defendant stated was stated without reasonable and probable
cause".
Neither party provided the Panel with a
copy of the agreement between the parties establishing Respondent as a reseller
of Complainant’s services. The Panel
assumes this was not provided because it was silent on the issue at hand.
Complainant claims Respondent
is violating the “eLN agreement” it has with Snug Harbor Travel. First of all, the eLN agreement supplied is
between Respondent and Trisept Technology, LLC. For the purposes of this discussion, it is assumed Complainant
does business under the Trisept tradename (if not, it would have been helpful
to know the relationship between the entities). It is not even clear if (and if it does, how) the disputed
domain name hooks up to the web interface discussed in the eLN agreement. For the purposes of this decision, the Panel
assumes the hyperlinks somehow connect to the disputed domain name to the web
interface discussed in the eLN agreement.
Nothing in the eLN agreement explicitly says the “FunJet Vacations” mark
may (or may not) be used in a domain name.
Complainant claims Respondent
violated eLN agreement §3(b), which says in relevant portion, Respondent
"must comply with all rules, procedures and requirements from time to time
communicated by [Complainant] in connection with the installation, training,
maintenance and use of eLN." No
copies of any rules, procedures or requirements were provided. In addition, the use of a domain name
doesn’t really involve “the installation, training, maintenance and use of
eLN.” If Complainant didn’t want
Respondent to use its trademark in a domain name, it could have clearly imposed
this requirement in the eLN agreement.
Complainant next claims eLN
agreement §3(f) provides Respondent’s “[s]ite may not contain or advertise any
content, or link to a site that contains or advertises any content, that is . .
. inappropriate in [Complainant’s] sole judgment.” This provision regulates content of a website
and not the use of domain names.
Respondent
is using the domain name to generate hundreds of thousands of dollars of
revenue for Complainant. Respondent was
not diluting Complainant’s mark.
Respondent
raised the $50,000 offer to sell registration rights to “express outrage”
because Complainant contacted Respondent to request use of the domain name
cease and Complainant offered to purchase the registration rights for $50. Respondent spends $4,000 per month to
advertise Complainant’s vacation packages and thus was offended by
Complainant’s actions. While this is
not the best way to conduct business, nothing in the record as a whole
indicates Respondent obtained the domain name primarily for the
purposes of reselling it, See Mark
Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding
that considering or offering to sell a domain name is insufficient to amount to
bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it
to the owner of trademark for an amount in excess of out-of-pocket expenses); see
also LifePlan v. Life Plan, FA
94826 (Nat. Arb. Forum July 13, 2000) (finding that “the mere offering [of the
domain name for sale], without more, does not indicate circumstances suggesting
that Respondent registered the domain name primarily for the purpose of selling
. . . the domain name to the Complainant”); see also Sumner v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000) (finding no
bad faith where Respondent did not contact Complainant first, but rather,
Complainant first contacted Respondent about purchasing the domain name); see
also General Mach. Prod. Co. v. Prime
Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding it significant
that the Complainant, and not Respondent, had initiated contact, inquiring
about purchasing the domain name <craftwork.com>, and that this fact
tended to weigh against a finding of bad faith).
It
should be noted Complainant is not being blocked from using its trademarks as a
domain name because it has eight domain names incorporating its marks,
including <funjetvacations.com> (the .com equivalent of the .net
domain name in dispute in this case).
No pattern of domain name registration abuse is claimed here.
Respondent’s
use of the disputed domain name does not disrupt Complainant’s business because
Respondent is actually selling Complainant’s product. Likewise, there is no evidence of actual confusion even though
the domain name is the same as one of Complainant’s registered marks.
The bad faith
must exist both at the time of registration AND at the time
of the complaint, Parker Hannifin Corporation v. East Bay
Website Company, AF-0587 (eResolution
Dec. 22, 2000) Simply terminating Respondent’s
distributorship agreement would not allow this particular case to fall under
the ICANN Uniform Dispute Resolution Policy at a future time.
DECISION
Having
failed to establish all three elements required under ICANN Policy, the Panel
concludes that relief shall be DENIED.
Houston Putnam Lowry, Panelist and
Chartered Arbitrator
Dated: May 29, 2003
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