Jim Vitello d/b/a Caution Brand Apparel
v. Michael Castello a/k/a Traveler.com LLC
Claim Number: FA0305000159460
PARTIES
Complainant
is Jim Vitello d/b/a Caution Brand Apparel, Covina, CA (“Complainant”). Respondent is Michael Castello a/k/a Traveler.com LLC, Palm Springs, CA (“Respondent”).
The
domain name at issue is <caution.com>
registered with Enom, 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.
Hon.
Charles A. Kuechenmeister (Ret.) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 28, 2003; the Forum received a hard copy of the Complaint
on May 30, 2003.
On
June 2, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <caution.com> is registered with Enom,
Inc. and that the Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom, 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
June 5, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 25,
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@caution.com by e-mail.
A
timely Response was received and determined to be complete on June 9, 2003.
Complainant
filed an additional submittal on June 11, 2003. It was timely received and was considered by the Panel.
Respondent
filed an additional submittal on June 15, 2003. It was timely received and was considered by the Panel.
On June 17, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon.
Charles A. Kuechenmeister (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant
is the owner of U.S. Trademark Registration No. 2,195,828 for CAUTION!, and
U.S. Trademark Registration No. 2,197,839 for CAUTION! UNDERWEAR, with
CAUTION written in a diamond-shaped box resembling a traffic control sign. Both trademarks show registration dates in
October 1998 and first use in December 1996.
The CAUTION! and CAUTION! UNDERWEAR marks are for men's and women's
clothing, namely, boxer shorts, boxer briefs, briefs, thongs, lingerie,
pajamas, nightshirts, robes and swimwear, in Class 25.
Complainant
has used the CAUTION! marks since December 1, 1996 in connection with clothing
and apparel products, including but not limited to, products such as underwear
and tee shirts. Complainant distributes
the CAUTION! brand of goods through non- exclusive licensee’s, specialty
chains, discount chains, department store chains and through the CAUTION!
websites. Complainant owns the domains:
<caution.us>, <cautionunderwear.com>, <cautionusa.com>,
<cautionkids.com>, <cautionwear.com>, <cautionchick.com> and
<cautionchicks.com>. As a result
of, among other things, CAUTION!’s continuous use, exclusive use and magazine
and television promotion, the CAUTION! Marks are known as identifying
Complainant’s exclusive brand of CAUTION! consumer goods. Thus, Complainant’s CAUTION! marks have
acquired a large amount of goodwill and distinctiveness due to the longstanding
sales of goods provided to consumers under the trademarked “CAUTION!” brand of
goods.
Hundreds
of thousands of dollars have been spent protecting and building the CAUTION!
brand and thousands of units have sold weekly in stores across the USA and
millions of consumers have seen the CAUTION! brand name in stores and on nationwide
television.
The
domain name <caution.com>,
(the “subject domain name” or “domain name”) fully incorporate Complainant’s
CAUTION! mark and the CAUTION! brand name, and is identical to the
Complainant’s CAUTION! Mark. It is thus
confusingly similar to Complainant's CAUTION! trademark.
Upon
information and belief, Respondents have no trademark or intellectual property
rights or other legitimate interest in the subject domain name.
On
January 6, 2000 and September 15, 2000, Complainant sent Respondent notices of
its CAUTION! marks and demands that Respondent cease and desist using the <caution.com>
domain name. Respondent has failed and
refused to cease using the same.
Complainant
has never authorized, licensed, or otherwise permitted the Respondent to use
the <caution.com> domain name or any of its trademarks.
The
Respondent registered and is using <caution.com> in bad faith.
Respondent
registered and has used the subject domain name in connection with its business
activities related to the travel industry.
It uses <caution.com> as the name for a website that
immediately sends visitors to its related <traveler.com> website, with
its links or banner ads to travel and other related services.
Respondent
is trading on Complainant's goodwill to divert traffic to book airfares, hotel
rooms and to sell advertising on its websites which are linked to <caution.com>.
Respondent
is intentionally creating consumer confusion and attempting to direct for
itself web traffic that is rightfully intended for Complainant.
Respondent
is attempting to reap financial gain from selling the subject domain name for a
price that is well in excess of what he paid to register the same and is
actually selling advertisements for same on his linked websites.
Respondent
has registered the <caution.com> domain name in order to prevent
the Complainant, as the owner of the CAUTION! trademark, from reflecting that
mark in a corresponding domain name and has engaged in a pattern of such
conduct.
Respondent
is not using the subject domain name in connection with the bonafide offering
of goods and services.
On
the date that Respondent registered the subject domain name, it had at least
constructive notice of Complainant's use of the CAUTION! trademark in that some
five days prior to the registration, Complainant ran full page advertisements
in magazines targeted to Palm Springs, Laguna Beach, Los Angeles
and San Diego, areas where Respondent maintains a presence. It is probable that Respondent saw these ads
and registered its domain name in an attempt to trade on Complainant's
advertising and notoriety.
Many
other entities have registered U.S. trademarks using the word
"caution." Examples are
Caution Condoms, Caution Closures, Caution Dakota Hats, Caution Kitty, and Caution
Crew.
Complainant's
trademarks are registered with the exclamation point. Respondent's use of the subject domain name does not include the
exclamation point.
A
visitor to the <caution.com> website would never confuse
Respondent's intent, usage or appearance with that of Complainant. They have absolutely nothing to do with each
other. Since purchasing the domain in
1997, Respondent has consistently utilized <caution.com> as an
integral part of its travel network services, travel advisories, travel
warnings, online bookings, etc.
Respondents
were located in Boynton Beach, Florida in May of 1997, when it registered the
subject domain name, and had no knowledge whatever of the advertisements run
earlier in the named California cities by Complainant. Respondent's selection of the word
"caution" in its domain name resulted solely from an idea relating to
the common meaning of the word as related to its travel-oriented business
activities.
C. Additional Submissions
The
Additional Submissions of both parties contain extensive argument with little
if any additional material factual allegations or information not contained in
the Complaint and the Response.
FINDINGS AND 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
owns two U.S. Patent and Trademark Office (USPTO) registrations for its
CAUTION!, including registration numbers 2,195,828 and 2,197,839. Complainant has used the CAUTION! Mark in
the U.S. beginning as early as December 1996 and has been using the mark continuously
ever since.
Respondent’s
<caution.com> domain name is identical to Complainant’s
CAUTION! mark because the disputed domain name appropriates Complainant’s mark
and simply omits the exlamation point at the end of the mark. The omission of the exclamation point does
not sufficiently differentiate the domain name from the mark under Policy ¶
4(a)(i) because punctuation marks such as exclamation points are impermissible
in a domain name on the Internet. See Mrs. World Pageants, Inc. v. Crown Promotions,
FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not
significant in determining the similarity of a domain name and mark); see
also Chernow Communications Inc. v.
Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence
of punctuation marks, such as hyphens, does not alter the fact that a name is
identical to a mark").
Based
upon the foregoing, the Panel finds and determines that <caution.com>
is identical or confusingly similar to the mark CAUTION! And CAUTION! UNDERWEAR,
in which Complainant has rights.
Respondent maintains legitimate Internet travel
networks. It uses the <caution.com> domain name in
connection with its travel-related business by directing visitors to the <caution.com> website to a
legitimate travel-oriented site actively operated by Respondent. This appears to be a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i). See Sweeps Vacuum & Repair Ctr., Inc. v.
Nett Corp., D2001-0031
(WIPO Apr. 13, 2001) (finding bona fide use of a generic domain name,
<sweeps.com>, where Respondent used a legitimate locator service
(goto.com) in connection with the domain name); see also First Am. Funds, Inc. v. Ult.Search, Inc.,
D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation
of a portal website is a legitimate interest).
It
appears that the first time Respondent had notice of Complainant’s dispute with
Respondent’s using <caution.com> or “caution” in any context was
the January 2002 cease and desist notice sent by Complainant. Respondent was already using the disputed
domain name as above-described at that time in connection with its bona-fide
Internet travel businesses.
Were
Complainant’s CAUTION! or CAUTION! UNDERWEAR marks less generic in nature, or
were they more universally recognized as representing Complainant as
distinguished from the common meaning of the word “caution,” the Panel might be
more receptive to the allegation that Respondent is trading on Complainant’s
fame. Here, however, Complainant’s
evidence falls well short of the mark.
On balance, due to the generic nature of the <caution.com> domain name, Complainant has failed to
demonstrate that Respondent has no rights or legitimate interests in the domain
name. See FilmNet Inc. v. Onetz,
FA 96196 (Nat. Arb. Forum Feb. 12, 2001)
(finding that Complainant failed to establish that Respondent did not have
rights or legitimate interests in the <filmnet.com> domain name, where
the disputed domain name is wholly comprised of generic words, even though
Complainant is the owner of the FILMNET mark); see also Energy Source Inc. v. Your Energy Source,
FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights
and legitimate interests in the domain name where “Respondent has persuasively
shown that the domain name is comprised of generic and/or descriptive terms,
and, in any event, is not exclusively associated with Complainant’s business”).
Based upon the foregoing, the Panel finds
and determines that Complainant has failed to demonstrate that Respondent has
no right or legitimate interest in respect of the disputed domain-name.
Ordinarily,
having found against Complainant on the element of Respondent’s right or
legitimate interest in <caution.com> , the Panel would not address the bad faith
element. Here, however, given the
relationship between this element and Respondent’s right or ligitimate interest
in the subject domain name, the Panel does address the allegations directed at
bad faith.
First, the only evidence of bad faith registration
is Complainant’s assertion that Respondent had constructive notice of
Complainant’s marks because of the print ads in Palm Springs, Laguna Beach, San
Diego and Los Angeles, run on May 22, 1997, five days before it secured its
registration of <caution.com> on May 27,
1997. Respondent denies actual
knowledge of Complainant’s mark as of the date of registration, and its
assertion that it had no presence in those cities and in fact was based in
Florida in May of 1997 was unrefuted.
This eliminates the constructive notice claim. Further, Respondent
registered <caution.com> before
either of Complainant’s marks were registered with the USPTO. There is no credible evidence of
registration in bad faith.
As
to both registration and use, the generic nature of the disputed domain name
itself rebuts any allegation by Complainant that Respondent registered or used
the disputed domain name in bad faith. See Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284
(eResolution Sept. 9, 2000) (finding no bad faith where Respondent was using
the descriptive domain name <thelowestfare.com> to lead consumers to a
source of lowest fares in good faith); see also Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that
"[c]ommon words and descriptive terms are legitimately subject to
registration as domain names on a 'first-come, first-served' basis").
Based upon the foregoing, the Panel finds
and determines that Complainant failed to demonstrate that the Respondent
registered and is using <caution.com>
in bad faith.
DECISION
Based
upon the foregoing findings and discussion, the relief sought in the Complaint
is DENIED.
Honorable Charles A. Kuechenmeister
(Ret.)
Dated:
July 1, 2003
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