Bordan Shoe Company, Inc. v. pacificmountain.com, Secret Registration Customer ID 224397 / Dyn Inc
Claim Number: FA1508001634343
Complainant is Bordan Shoe Company, Inc. (“Complainant”), California, USA. Respondent is pacificmountain.com, Secret Registration Customer ID 224397 / Dyn Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pacificmountain.com> (the “Domain Name”), registered with Dynamic Network Services, Inc.
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.
Clive Elliott Q.C. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2015; the Forum received payment on August 20, 2015.
On August 25, 2015, Dynamic Network Services, Inc. confirmed by e-mail to the Forum that the Domain Name is registered with Dynamic Network Services, Inc. and that Respondent is the current registrant of the name. Dynamic Network Services, Inc. has verified that Respondent is bound by the Dynamic Network Services, Inc. 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 August 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@pacificmountain.com. Also on August 26, 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 September 1, 2015.
On September 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott Q.C. 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 Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that the Domain Name is identical to a trademark in which it has rights, PACIFIC MOUNTAIN, without the .com TLD.
A search at the Trademark Electronic Search System (http://tmsearch.uspto.gov) shows that there are only 6 live trademarks and service marks on the United States Patent and Trademark Office Register related to “PACIFIC MOUNTAIN”:
1. Mountain Pacific, Inc : Owner: Mountain Pacific, Inc. Corporation California;
2. 1st Reverse Mortgage USA, a division of Mountain Pacific Mortgage : Owner: Mountain Pacific Mortgage Company Corporation Colorado;
3. Mountain Pacific Group Global Investors : Owner: Mountain Pacific Group, LLC Limited Liability Company, Washington;
4. Mountain Pacific Bank : Owner: Mountain Pacific Bank Corporation, Washington;
5. Pacific Mountain : Owner: J. M. Smucker Company, The Corporation, Ohio; and
6. Pacific Mountain : Owner: Bordan Shoe Company, Inc. Corporation, California.
Complainant contends that in view of the Whois Database information listed for the Domain Name, none of the trademark or service mark owners above is the owner of the Domain Name and further, Respondent has never been commonly known by the Domain Name.
Complainant asserts that there is no evidence of Respondent’s 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, and no website is being hosted under the Domain Name.
Complainant asserts that the Domain Name has been registered and is being used in bad faith by Respondent, and that as Respondent does not own any trademark or service mark related to “pacific mountain”, nor has he ever been commonly known by the Domain Name, the domain is not hosting any website or webpage, and Complainant is the owner of the trademark “PACIFIC MOUNTAIN”, Respondent is preventing Complainant from reflecting its mark in a corresponding domain name.
B. Respondent
Respondent asserts that he has continuously used the Domain Name for email services in connection with his meteorological and scientific consultancy business since 1997. As a small/individual business owner, Respondent argues that he did not feel the need to register a trademark or service mark in connection with the Domain Name.
Respondent denies that his fair use of the Domain Name misleadingly diverts consumers or tarnishes the trademark at issue because the use of the Domain Name is not related to the goods and services intended by the trademark at issue, nor is the Domain Name used in connection with any of the goods and services Complainant intends to apply the trademark to in the future.
Respondent contends that the Domain Name was not registered or used in bad faith because he registered the Domain Name in 1997, 18 years before Complainant registered the trademark at issue, and therefore could not have registered the Domain Name in order to prevent Complainant from reflecting the trademark in a corresponding domain name. Further, Respondent states that he was not aware of the existence of Complainant’s business or recently registered trademark prior to this current UDRP action by Complainant.
Respondent points out that the Domain Name is not offered for sale currently and has not been offered for sale at any time since it was registered.
Complainant establishes the first element of the Policy but fails to establish the second and third elements and the complaint is therefore denied.
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 contends that it has rights in the PACIFIC MOUNTAIN mark through registration of the mark with the USPTO (Reg. No. 4,685,205 registered February 10, 2015). It is well established that a complainant has rights in a mark based on registration of the mark with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). On this basis the Panel concludes that Complainant has rights in the PACIFIC MOUNTAIN mark under Policy ¶ 4(a)(i).
Complainant also contends that the Domain Name is identical to the PACIFIC MOUNTAIN mark in which Complainant claims to have rights. The Domain Name contains Complainant’s entire PACIFIC MOUNTAIN mark, eliminates spacing between words, and adds the generic top-level domain “.com.”
Respondent makes effort to challenge the above. Accordingly, the Panel finds that the Domain Name is identical to Complainant’s PACIFIC MOUNTAIN mark under Policy ¶ 4(a)(i).
That however is not the end of the matter because Complainant must establish all three of the elements of the Policy to succeed in its complaint.
In particular, it is incumbent on Complainant to establish a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). Complainant contends it has done so on the basis that Respondent has not been commonly known by the Domain Name.
Respondent responds by saying that the Domain Name has been used in connection with his meteorological and scientific consultancy business since 1997. Similarly, Respondent argues that the Domain Name is not used in connection with the goods and services offered by Complainant. Panels have endorsed this argument under Policy ¶ 4(c)(iii) where a legitimate noncommercial or fair use has been demonstrated. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (“The use of domain names for non-commercial purposes is a recognized method of proving rights and legitimate interests on the part of such user even when the use may cause some disadvantage or harm to other parties.”).
Further, while not relied upon by Respondent to establish his bona fides or that he has a legitimate interest in the Domain Name, the Panel notes that in the Response the Contact Name is identified as: Matthew Bye and the Contact Emails(s) are identified as including: matthew.bye@pacificmountain.com
The above suggests that Respondent is using an email address which corresponds to the Domain Name. This allows an inference to be drawn that Respondent is using the Domain Name as part of some form of identification in the course of trade. There is nothing on the record to suggest that this form of use of the domain name has not occurred or that it is not legitimate or proper.
Therefore, the Panel finds that Respondent has made use of the Domain Name in a legitimate way pursuant to the requirements of the Policy.
The Panel finds that Complainant 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).
In this case there is one important factor which militates against Complainant’s argument. Respondent contends that his registration of the Domain Name, 18 years before the registration of the PACIFIC MOUNTAIN mark, indicates that he could not possibly have intended to prevent Complainant from reflecting his rights in the mark. Understandably, Panels have decided against finding bad faith in cases where the domain was registered before registration of a mark. See Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel).
There is merit in Respondent’s argument. In the present situation, it is difficult to see how a party’s actions can be characterised as being in bad faith when the only rights upon which Complainant relies are trademark registration rights acquired 18 years after the Domain Name was registered and Respondent asserts (without challenge) it has been using the Domain Name.
Accordingly, the Panel concludes that Respondent has not acted in bad faith under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pacificmountain.com> domain name REMAIN WITH Respondent.
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Clive Elliott Q.C. Panelist
Dated: September 16, 2015
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