Chattanooga Lookouts Baseball Club v.
Cayman Trademark Trust
Claim
Number: FA0408000309920
Complainant is Chattanooga Lookouts Baseball Club (“Complainant”),
represented by Ian K. Leavy, of Miller & Martin PLLC,
Suite 1000 Volunteer Building, 832 Georgia Avenue, Chattanooga, TN 37402-2289. Respondent is Cayman Trademark Trust (“Respondent”), P.O. Box 908, Georgetown, Grand Cayman GT KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <chattanoogalookouts.com>, registered with
Bulkregister, Llc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 9, 2004; the Forum received a hard copy of the
Complaint on August 11, 2004.
On
August 9, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the
domain name <chattanoogalookouts.com> is registered with Bulkregister,
Llc. and that Respondent is the current registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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
August 11, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 31, 2004 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@chattanoogalookouts.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 10, 2004, after the expiration of the response period, the parties
submitted a Joint Request to Stay the Administrative Proceeding. The proceedings were stayed for a period of
20 days. On September 28, 2004 the stay
was lifted and the matter will proceed to decision.
With
the lifting of the stay Respondent submitted an untimely response and
Complainant submitted an untimely reply.
The Panel, in its discretion, has considered the untimely pleadings.
On
September 8, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <chattanoogalookouts.com>
domain name is confusingly similar to Complainant’s LOOKOUTS mark.
2. Respondent does not have any rights or
legitimate interests in the <chattanoogalookouts.com> domain name.
3. Respondent registered and used the <chattanoogalookouts.com>
domain name in bad faith.
B. Respondent disputes the factual allegations
raised in the Complaint; however, consents to an immediate transfer of the
domain name <chattanoogalookouts.com>
to
Complainant. Respondent requests the
Panel to forego a substantive analysis of the Complaint and dismiss the
Complaint and order the transfer.
C. Complainant requests that the matter proceed
to decision.
Complainant
operates a double-A minor league baseball team called the CHATTANOOGA LOOKOUTS,
which has historical ties to Chattanooga, Tennessee dating back to 1885.
Complainant
registered the LOOKOUTS mark with the United States Patent and Trademark Office
on May 27, 1997 (Reg. No. 2,065,256) for use in connection with “entertainment
services in the nature of baseball games and exhibitions.” Complainant currently operates a website at
the <lookouts.com> domain name, which provides information and services
related to the baseball organization.
Respondent
registered the domain name <chattanoogalookouts.com> on July 9,
2001. Respondent is using the disputed
domain name in connection with a generic search engine website. The majority of the links on the first page
of the website involve baseball-related items or baseball-related merchandise.
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.
The registration
of a mark with an authoritative governmental entity is sufficient under paragraph
4(a)(i) of the Policy to establish rights in a mark. Complainant registered the LOOKOUTS mark with the United States
Patent and Trademark Office in 1997, effectively establishing rights in the
mark under the Policy. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
In comparing the disputed
domain name <chattanoogalookouts.com>
with Complainant’s
LOOKOUTS mark, it is apparent that the domain name has incorporated
Complainant’s mark in its entirety.
Respondent has merely appended the geographic term “Chattanooga” to the
LOOKOUTS mark. As a general rule, a
domain name is deemed confusingly similar to a mark if the domain name
incorporates a mark in its entirety and merely adds a geographic term. See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000)
(finding that Respondent’s registration of the domain name
<net2phone-europe.com> is confusingly similar to Complainant’s mark . . .
“the combination of a geographic term with
the mark does not prevent a domain name from being found confusingly
similar"); see also VeriSign,
Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing
similarity between Complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where
Respondent added the word “India” to Complainant’s mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly
similar to Complainant’s CMGI mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com>
is confusingly similar to Complainant’s famous mark).
Complainant has
established Policy ¶ 4(a)(i).
Respondent is
not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii)
of the Policy. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
The disputed
domain name is used as a generic search engine website that links to a variety
of baseball-related websites. The
evidence before the Panel suggests that the only connection between “Chatanooga
Lookouts” and the sport of baseball flows through Complainant. Therefore, it is highly likely that
Respondent uses the domain name <chattanoogalookouts.com> merely
to lure potential Internet users interested in Complainant’s baseball
organization to the unrelated search engine website. The Panel finds that Respondent is not using the domain name in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use); see also Bank of Am. Corp. v. Northwest Free
Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also Seiko Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Furthermore,
because Respondent is willing to transfer the domain name to Complainant,
Respondent has no rights or legitimate interests in the disputed domain
name. See Colgate-Palmolive Co.
v. Domains For Sale, FA
96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the
domain name at issue to Complainant, as reflected in its Response, is evidence
that it has no rights or legitimate interests in the domain name.); see also
Marcor Int’l v. Langevin, FA
96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the
domain name at issue indicates that it has no rights or legitimate interests in
the domain name in question); see also Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b
(eResolution May 25, 2000) (finding that Respondent’s willingness to transfer
is evidence of its lack of legitimate rights/interests in the name).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent is
using the disputed domain name to host a website that offers links to a variety
of commercial websites relating directly to Complainant’s field of
business. The fact that Respondent is
using a domain name confusingly similar to Complainant’s LOOKOUTS mark, and has
failed to rebut Complainant’s assertions, allows the inference that Respondent
is intentionally attempting to attract Internet users to its website for
commercial gain by creating a likelihood of confusion with Complainant’s mark
pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb.
Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary
use of Complainant's mark when the domain name resolves to commercial websites
and Respondent fails to contest the Complaint, it may be concluded that
Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv));
see also Am. Online, Inc. v.
Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad
faith where Respondent registered and used an infringing domain name to attract
users to a website sponsored by Respondent).
Also, because Respondent
is willing to transfer the domain name to Complainant, Respondent registered
and/or used the domain name in bad faith.
See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(finding Respondent’s willingness to transfer and its failure to develop the
site are evidence of its bad faith registration and use); see also Global Media Group, Ltd. v. Kruzicevic,
FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to
address Complainant’s allegations coupled with its willingness to transfer the
names is evidence of bad faith registration and use).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <chattanoogalookouts.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 11, 2004
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