Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC
Claim Number: FA1503001607881
Complainant is Chiquita Canyon, LLC (“Complainant”), represented by Scott M. Hervey of Weintraub Tobin Chediak Coleman Grodin, California, USA. Respondent is Registration Private / Domains By Proxy, LLC (“Respondent”), represented by Erica E. Larsen, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <chiquitalandfill.net> and <chiquitalandfill.org>, registered with WILD WEST DOMAINS, LLC.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2015; the Forum received payment on March 3, 2015.
On March 5, 2015 and March 6, 2015, WILD WEST DOMAINS, LLC confirmed by e-mail to the Forum that the <chiquitalandfill.net> and <chiquitalandfill.org> domain names are registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chiquitalandfill.net, postmaster@chiquitalandfill.org. Also on March 6, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 25, 2015.
A timely Additional Submission was received from Complainant on March 30, 2015 in accordance with the Forum's Supplemental Rule #7.
On April 8th, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that the names “CHIQUITA CANYON”, “CHIQUITA CANYON LANDFILL” and “CHIQUITA LANDFILL” (collectively “CHIQUITA MARKS”) are solely used as identification of Complainant’s landfill, even being used by the public as identification.
Complainant states that it has been an active member of the community, participating in various events from 2012 through 2014. Complainant has had its commitment to the community recognized by various civic leadership organizations and governmental bodies.
Complainant argues that it has invested significant resources on the marks, engaging in print, web and radio advertising.
Since 2002, complainant has been in the process of expanding the landfill, including the expansion of the daily disposal limits, potential conversion of part of the land into a technology site, amongst others. Such expansion plans have, allegedly, been received with mixed feelings, there being organizations and individual groups both in favor and against such plans.
According to Complainant, Respondent is one of the groups opposed to the expansion of the landfill’s operation. Complainant states that Respondent has registered the disputed domain names and established a website at www.chiquitalandfill.net, where he makes available a number of documents and link to third party content which is in opposition to Complainant’s expansion plans for the landfill.
Complainant defends that the claim of common law rights in the marks does not prevent Complainant from showing legitimate trademark rights protectable under the Policy, arguing that the Policy is applicable to registered and unregistered trademarks and service marks. Complainant argues that the possibility of acquiring rights in a trademark through use is a fundamental principle of trademark law, these rights exist even if the trademark is not registered.
Complainant states that common law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in a name, and sufficient association of the same with the party itself. Complainant defends that its landfill and trademarks are well-known and recognized in the community. The investments made by Complainant in marketing, advertising and promotion of its services has resulted in the consumers and general public associating the marks with the landfill services offered by the Complainant. Therefore, Complainant states that is sufficient to establish common law trademark rights within the meaning of paragraph 1(a)(i) of the Policy.
Complainant defends that the disputed domain names are exactly the same as its “Chiquita Landfill” mark, as removing spaces between terms and appending the gTLD are considered inconsequential changes that do not affect the application of the Policy.
Complainant defends that, even if Respondent states that Complainant does not have common law rights for “Chiquita Landfill”, the disputed domain names are still confusingly similar to Complainant’s marks “Chiquita Canyon” and “Chiquita Canyon Landfill”, since the dominant element of these marks is the word “Chiquita”, incorporated entirely within the Respondent’s domain names alongside the less distinctive word “Landfill”. The use of a generic term, argues the Complainant, does not differentiate the disputed domain names from Complainant’s marks.
Complainant also argues that the addition of a disclaimer on its website does not prevent the disputed domain names from being confusingly similar to the marks. Complainant argues that the users are only exposed to the disclaimer once they arrive at the website, doing little to prevent confusion, as concluded by past Panel decisions.
Complainant argues that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services and has not acquired any common law trademark rights for the marks in the disputed domain names or similar marks. Complainant states that the use of a domain name confusingly similar to Complainant’s trademark to operate a gripe/complaint website is not a bona fide offering of goods and services pursuant to Policy 4(c)(i), or a legitimate noncommercial fair use pursuant to Policy 4(c)(iii).
Complainant argues that the First Amendment and the right to free speech do not protect the Respondent’s use of the disputed domain names. Complainant defends that expressing ones views is not the same as using someone else’s name to identify as the source of those views. Complainant quotes Monte and Pat Roberts, Inc. v. Bill Keith, D2000-0299 (WIPO June 9, 2000) and Planned Parenthood Federation of America v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), in which trademark rights prevailed over First Amendment rights.
Complainant states that it does not intend to stifle Respondent’s criticisms and comments on its practices, but to prohibit Respondent from using the disputed domain names, confusing Internet users on the true origin of the information made available on the website by the Respondent and diverting users from the Complainant’s real website.
According to Complainant, Respondent has registered the domain in bad faith because it was done primarily for the purpose of disrupting the business of the Complainant. Since Respondent is against the expansion of the landfill and its activities, Respondent must be considered a competitor of Complainant. Additionally, Complainant states that Respondent had previous knowledge of Complainant at the time the disputed domain names were registered, acknowledging the Complainants rights over the Marks.
Complainant also argues that the disclaimer available on the website does not preclude a finding of bad faith.
B. Respondent
Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
Respondent has rights or legitimate interests in the <chiquitalandfill.net> domain name and has never occupied the <chiquitalandfill.org> domain name. Respondent argues that it previously used the <chiquitalandfill.net> domain name to maintain a website with the sole purpose of education by collecting information for the community regarding a proposed expansion of Complainant’s landfill and the potential violations of local and state laws, and that such use is a legitimate noncommercial fair use. The content of the resolving website is moved to the <c4cclc.com> domain and the <chiquitalandfill.net> domain has been stripped of its content.
Respondent states that it has kept the name of the group visible in every page of the website, in order to avoid confusion of the viewers.
Respondent argues that Complainant does not own the CHIQUITA CANYON trademark, having applied on October, 21, 2014, after having sent Respondent an e-mail regarding the use of the mark on the disputed domain names.
Respondent has not engaged in bad faith registration or use. Respondent maintains that it is using the disputed domain name to exercise its First Amendment rights and provide a venue for people to voice concerns about Complainant.
Respondent argues that before Complainant, LaidLaw Waste Systems operated the landfill until 2007. According to Respondent, the Chiquita Canyon Landfill existed before the Complainant.
Respondent requests the disputed domain names remains under Respondent’s ownership until its expiration date of August 5, 2015, when Respondent will not renew their registration, allowing Complainant to purchase the Domain Names.
C. Additional Submissions
In its additional submission, Complainant argues that by stating Complainant has used the CHIQUITA CANYON trademark since 2009 it, making clear that Complainant’s rights over the marks are previous to the registration of the disputed domain names.
Complainant also notes that Respondent has admitted to no longer making use of the disputed domain names. Complainant argues that this admission is evidence of a lack of rights under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant is the owner and operator of a landfill that operates under the names “CHIQUITA CANYON”, “CHIQUITA CANYON LANDFILL” and “CHIQUITA LANDFILL” (collectively “CHIQUITA MARKS”).
Complainant is the owner of trademark No. 86430511 for “Chiquita Canyon” in the United States since October 21, 2014, having a registered first use at least as early as December 31, 1972. Additionally, Complainant owns the domain name <chiquitacanyon.com>, registered on March 2, 2004.
Respondent is a group of community members in the Santa Clarita Valley in California to communicate and share information in regard to the Chiquita Canyon branch of Waste Connections, INC., initially formed due to the plans of the landfill’s expansion.
At the time of this decision, the domain name <chiquitalandfill.org> was not in use and <chiquitalandfill.net> contained a number of links mentioning the Citizens for Chiquita Canyon Landfill Compliance, that did not lead anywhere else.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 asserts unregistered common law rights in the CHIQUITA marks dating back to at least 1972. Complainant states that the mark is used by Complainant in connection with a landfill in the Los Angeles, California area. The Panel notes that registration with a governmental entity or authority is not necessary to establish rights in a trademark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Furthermore, Complainant asserts that the CHIQUITA marks have acquired secondary meaning. Complainant offers the following to support that claim: a listing of various events in the Santa Clarita Valley to which Complainant has contributed to or sponsored, evidence that Complainant had been mentioned in various television and news radio segments, and evidence that Complainant has engaged in print, web, and radio advertising that displays the CHIQUITA marks. Additionally, Complainant provides evidence of its application to the USPTO for the CHIQUITA CANYON mark (Serial Number 86430511 filed Oct. 21, 2014). In this regard, the Panel also notes that prior panels have established that relevant evidence of secondary meaning includes advertising, media recognition, and sales figures. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). Thus, the Panel concludes that Complainant has provided sufficient evidence to establish that it has rights under Policy ¶ 4(a)(i).
Complainant asserts that the <chiquitalandfill.net> and <chiquitalandfill.org> domain names are confusingly similar to the CHIQUITA marks. For the CHIQUITA and CHIQUITA LANDFILL marks, Complainant argues that the disputed domain names contain the Complainant’s entire CHIQUITA LANDFILL mark with the addition of a gTLD. In this sense, the Panel notes that the mere addition of a gTLD, be it “.net” or “.org” or any other gTLD, can not distinguish a domain name from the mark at issue. 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). As well, prior panels have found that the removal of spaces in a mark does not differentiate the mark to evade a finding of confusingly similar or identical. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (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”). Thus, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s marks.
In view of the above, the Panel finds that Paragraph 4(a)(i) has been fulfilled.
It is well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the CHIQUITA marks in domain names. The Panel notes that the record is void of any evidence to indicate that Respondent is commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that even if Respondent’s use of the disputed domain names is protected by the First Amendment, thus consisting of noncommercial use, he may not use a confusingly similar domain name to do so.
The Panel notes that while a respondent is within its First Amendment rights to create a website where Internet users can voice comments about a complainant, they may not exercise those rights by creating a domain name that is confusingly similar to one of the complainant’s marks. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”). Therefore, the Panel concludes that the exercise of Respondent’s first amendment rights is not a justification for using the disputed domain names. In light of this, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Robo Enters., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (rejecting the respondent’s asserted rights or legitimate interest in the domain name <roboenterprises-investors.com>, noting that while the content of the respondent’s website may enjoy First Amendment and fair use protection, those protections do not create rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark).
In its additional submission, Complainant argues that Respondent admitted to failure to make active use of the disputed domain names. In regard to the <chiquitalandfill.org> domain name, the Panel sees that Respondent admits that it “has never occupied this domain nor utilized it via a re-direct or in print and other marketing materials”. Additionally, Respondent states that the content from the <chiquitalandfill.net> domain name has been stripped and moved to the <c4cclc.com> domain. Complainant argues that this admission is also an evidence of a lack of rights under Policy ¶¶ 4(c)(i) and4(c)(iii).
Therefore, the Panel finds that Paragraph 4(a)(ii) has been fulfilled.
Based on all arguments provided, the Panel finds that Respondent does not have the right to completely appropriate Complainant’s trademarks, once it would mislead Internet users, creating a form of initial interest confusion. In this sense, in the Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003), the panel wrote, “Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”
Notwithstanding such conclusion, as mentioned, Respondent admitted to failure to make active use of the disputed domain names. In light of this, the Panel notes that in certain cases, prior panels have found a failure to make an active use of a domain name to amount to bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Therefore, based on the current status of the disputed domain names, the Panel finds that Respondent has failed to make an active use of the domain names, infering bad faith under Policy ¶ 4(a)(iii).
The Panel also finds that Respondent has no rights or legitimate interests in the disputed domain names, that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Also, the Panel notes that, in certain cases, a disclaimer does not mitigate a finding of bad faith. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel concludes that Respondent’s use of a disclaimer does not remove Respondent’s actions from the realm of bad faith use and registration.
In view of the above, the Panel finds that Paragraph 4(a)(3) has been fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chiquitalandfill.net> and<chiquitalandfill.org> domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: April 22, 2015
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