Deer Valley Resort Company v.
Intermountain Lodging
Claim Number: FA0505000471005
PARTIES
Complainant
is Deer Valley Resort Company (“Complainant”),
represented by Preston C. Regehr, of Parsons Behle and Latimer,
201 South Main Street, Suite 1800, P.O. Box 45898, Salt Lake City, UT
84145-0898. Respondent is Intermountain Lodging (“Respondent”),
represented by Marcus G. Theodore, of Marcus G. Theodore, P.C., 466 South 500 East, Salt Lake City, UT
84102.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <deervalleypropertyrentals.com>,
registered with Go Daddy Software, 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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 4, 2005.
On
May 3, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <deervalleypropertyrentals.com>
is registered with Go Daddy Software, Inc. and that the Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
May 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 31,
2005 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@deervalleypropertyrentals.com by e-mail.
A
timely Response was received and determined to be complete on June 1, 2005.
Additional
submissions have been received from both parties as permitted by the National
Arbitration Forum’s Supplemental Rule 7.
The Panel has considered these additional submissions to the extent that
they contain relevant material that could not reasonably have been included in
the parties’ initial submissions.
On June 6, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the owner of various trademarks comprised of or incorporating the phrase
DEER VALLEY, including the following:
Service
Mark: DEER VALLEY (and design)
U.S.
Registration No. 1,199,979
Registration
date: June 29, 1982
Services:
Resort hotel and motel services
First
use and first use in interstate commerce: September 1980
Service
Mark: DEER VALLEY
U.S.
Registration No. 1,575,619
Registration
date: January 2, 1990
Services:
Ski resort services; rental of skiing equipment and
supplies;
skiing instruction (in International Class 41)
Restaurant
services (in International Class 42)
First
use and first use in interstate commerce: December 1981
Trade
Mark: DEER VALLEY (and design)
U.S.
Registration No. 1,504,048
Registration
date: September 13, 1988
Goods: Clothing, namely shirts and hats
First
use and first use in interstate commerce: December 1981
Complainant
asserts that it also owns common-law rights in the DEER VALLEY mark for various
goods and services. Complainant
contends that the disputed domain name, <deervalleypropertyrentals.com>, registered by Respondent in January
2004, is identical or confusingly similar to its DEER VALLEY marks.
Complainant
further contends that Respondent has no rights or legitimate interests in the
disputed domain name. Complainant
asserts that Respondent must have known of Complainant’s trademark rights when
it registered the name, based upon Complainant’s federal trademark
registrations, the fame of Complainant’s marks, and the fact that Respondent
has registered multiple domain names incorporating the marks. Complainant states that it has not licensed
Respondent to use its marks, and asserts that Respondent is not commonly known
by Complainant’s marks, but rather by Respondent’s business name, Intermountain
Lodging, Inc., or its domain name, <gotoparkcity.com>, to which it has
redirected users attempting to access a website at the disputed domain
name. Complainant contends that
Respondent’s commercial use of the disputed domain name in this manner fails to
give rise to rights or legitimate interests.
Finally,
Complainant contends that Respondent registered and is using the disputed
domain name in bad faith. Complainant
asserts that Respondent has intentionally attempted to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks as to the source, sponsorship, affiliation, or endorsement
of Respondent’s website or of a product or service on the site; that
Respondent’s use of the disputed domain name to redirect Internet users to its
website promoting vacation property rentals located near Complainant’s Deer
Valley Resort is an attempt to trade unfairly on the goodwill of Complainant’s
marks and will lead to consumer confusion; and that Respondent’s registration
of three domain names incorporating the DEER VALLEY marks and at least one
other domain name incorporating another resort’s trademark evinces a pattern of
registering infringing domain names.
B.
Respondent
Respondent
asserts that DEER VALLEY has for many years served as a geographic term describing
a region near Park City, Utah, where Respondent operates a business of renting,
managing, and selling real property.
Respondent offers the following evidence (inter alia) in support
of this assertion:
·
According
to a published history of the area, local residents have used the term DEER
VALLEY to refer to the region for several decades, and Complainant took its
name from this pre-existing geographic name.
·
A map in
the local telephone directory uses DEER VALLEY as a geographic term.
·
Real estate
agents commonly use the term DEER VALLEY to describe properties located within
this area.
·
Numerous
other business entities registered with the Utah State Department of Commerce
have names that incorporate DEER VALLEY.
Respondent
claims that it uses DEER VALLEY in its geographic sense rather than in any
trademark sense, and asserts that it has been using the term in this manner
since 1979. Respondent further argues
that Complainant should be estopped from raising untimely objections to
Respondent’s longstanding use of DEER VALLEY as a geographic term. Respondent contends that it has rights or
legitimate interests in the disputed domain name arising from this usage, and
denies that it registered and is using the domain name in bad faith.
C.
Additional Submissions
(As
noted above, the Panel considers the additional submissions only to the extent
that they contain relevant material that could not reasonably have been
included in the parties’ initial submissions.)
In
its Additional Submission, Complainant disputes Respondent’s claim that it has
used the term DEER VALLEY for its property business since 1979. Complainant states that there were no
lodging accommodations in the area presently occupied by Complainant’s resort until
late 1980, and that Respondent was not incorporated until 1981.
Complainant
also disputes Respondent’s claim that DEER VALLEY is a geographic term. Complainant asserts that the uses of the
term offered by Respondent involve references to Complainant’s resort rather
than to a geographic area. For example,
the roads that contain DEER VALLEY in their names were built after the Deer
Valley Resort opened and were named with Complainant’s authorization. Complainant concedes that the local Board of
Realtors has used DEER VALLEY in a descriptive manner, but contends that this
use is improper and states that it will ask the Board of Realtors to remedy the
error. Complainant denies that it
adopted its name from a pre-existing geographic name, and asserts to the
contrary that its founders coined the term DEER VALLEY in 1980. Complainant possesses incontestable rights
in its DEER VALLEY marks, and contends that Respondent therefore cannot attack
the marks as geographically descriptive, citing Lake at Las Vegas Joint Venture v. Principal Equiti, Inc., D2002-0758 (WIPO Oct. 4, 2002).
Complainant
takes issue with Respondent’s laches argument, pointing out that it is not
seeking to prevent Respondent from marketing properties located in the area
near Complainant’s resort, but rather merely to enforce its trademark rights
against the disputed domain name, which was registered in 2004.
In
its Additional Submission, Respondent denies that Complainant coined the term
DEER VALLEY in 1980, citing to (inter alia) a 1955 geological survey map
published by the U.S. Department of Interior that uses the term to describe a
large region that includes the present resort site. Respondent states that Complainant owns only a small portion of
this region, while other parties own the surrounding properties.
FINDINGS
The Panel finds as follows: (1) The disputed domain name is confusingly
similar to a mark in which Complainant has rights; and (2) Complainant has
failed to sustain its burden of proving that Respondent lacks rights or legitimate
interests in respect of the disputed domain name. Because the second finding is dispositive of the present matter,
the Panel declines to enter a finding as to bad faith.
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 clearly has trademark rights
in DEER VALLEY arising from its federal trademark registrations. The disputed domain name, <deervalleypropertyrentals.com>, combines Complainant’s mark with the
generic phrase “property rentals.” That
phrase fails to distinguish the domain name from Complainant’s mark, and the
domain name therefore is confusingly similar to the mark for purposes of the
Policy.
Complainant’s allegations clearly suffice
for a prima facie showing that Respondent lacks rights or legitimate
interests in the disputed domain name.
The burden of production thus shifts to Respondent to rebut that showing
with evidence that it has rights to or legitimate interests in the domain name. However, the ultimate burden of proof on
this issue (as on all of the elements required by the Policy) remains with
Complainant. See, e.g., Document Techs.,
Inc. v. Int’l Elec. Communications, Inc., D2000-0270 (WIPO June 6, 2000).
Respondent’s use of DEER VALLEY to
describe property rentals might be legitimate on either of two grounds: First, if Complainant prevails in its
argument that DEER VALLEY is only a trademark and not a geographic name, then
Respondent might nonetheless be permitted to use the mark in a nominative sense
in order to describe goods or services that are properly described by the
mark. Second, if DEER VALLEY serves as
both a geographic term and a trademark, then Respondent may be entitled to use
the term in its geographic sense. (The
Panel does not consider Respondent’s implicit argument that the term is merely
geographically descriptive and thus incapable of serving as a trademark, for
the reasons set forth in Lake at Las
Vegas Joint Venture v. Principal Equiti, Inc., D2002-0758 (WIPO Oct. 4, 2002)).
If Respondent were forced to rely upon
the first ground, Complainant would almost certainly prevail. Respondent claims to be using the term DEER
VALLEY to refer to properties located in a geographic region that includes
Complainant’s Deer Valley Resort.
However, Internet users attempting to access a website using the
disputed domain name are redirected to a website that markets properties that
are located throughout “all of Park City Utah, Deer Valley, and the
Canyons.” It is not clear to the Panel
that nominative fair use rights permit the use of the mark to describe
properties that are located near but not within the resort. But even if that were so, Respondent’s use
goes far beyond that, and therefore is clearly illegitimate (assuming DEER
VALLEY is solely a trademark and not a geographic term). See,
e.g., Dr. Ing. h.c. F. Porsche AG v.
Limex, LLC, D2003-0649
(WIPO Nov. 27, 2003) (noting that fair use of a trademark must be limited to
products properly described by the trademark, citing Ty Inc. v. Perryman, 306
F.3d 509 (7th Cir. 2002)).
On the second ground -- i.e., if DEER
VALLEY can properly be used as a geographic term -- Respondent would have a
much stronger case. Respondent’s
website does indeed market properties located in the area that Respondent claims
is known as DEER VALLEY (among other areas), and that activity certainly would
qualify as a “bona fide offering of goods or services” under Paragraph 4(c)(i)
of the Policy.
The question of rights or legitimate
interests therefore boils down to a single issue: whether DEER VALLEY is a geographic name as well as a
trademark. The burden of proof on this
issue clearly rests upon Complainant, but beyond that the standard is not so
clear. On the one hand, although proceedings
under the Policy necessarily are constrained by the streamlined nature of the
process and therefore akin to summary judgment in federal courts, the Policy
clearly contemplates that a panel will decide disputed questions of fact based
upon the evidence before it. See, e.g., Ciccone v. Parisi,
D2000-0847 (WIPO Oct. 12, 2000). On the
other hand, the Policy clearly does not
contemplate that panels will decide cases involving legitimate trademark
disputes.
[T]his proceeding relates to a legitimate
trademark dispute between the parties and is not susceptible to adjudication
under the Policy. The Policy covers
only cyber squatting and cyber piracy, that is, instances “where the domain
name registrant’s business activities (to the extent that they exist at all)
are merely a pretext designed to camouflage the registrant’s intent to exploit
the trademark value of a domain name.” Palace Holding SA v. Priston Entmt. Ltd.,
D2003-0705 (WIPO Dec. 5, 2003). Only
cases within “the relatively narrow class of cases of ‘abusive registrations’”
are susceptible to adjudication under the Policy’s streamlined
dispute-resolution procedure. ICANN Second Staff Report on Implementation
Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999),
Paragraph 4.1(c), available at
http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm.
[T]he fact that the policy’s
administrative dispute-resolution procedure does not extend to cases where a
registered domain name is subject to a legitimate dispute (and may ultimately
be found to violate the challenger’s trademark) is a feature of the policy, not
a flaw. The policy relegates all
“legitimate” disputes -- such as those where both disputants had longstanding
trademark rights in the name when it was registered as a domain name -- to the
courts; only cases of abusive registrations are intended to be subject to the
streamlined administrative dispute-resolution procedure. Id.
See
Pub. Co. Accounting Oversight Bd. v. Nagel, FA 290974 (Nat. Arb. Forum Aug. 17, 2004); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 24,
2002) (“If the existence of such rights or interest turns on resolution of a
legitimate trademark dispute, then Respondent must prevail, because such
disputes are beyond the scope of this proceeding.”).
The question therefore becomes whether
Respondent’s allegations concerning the existence of a geographic sense of the
term DEER VALLEY, together with the evidence Respondent offers in support
thereof, are sufficient to raise a “legitimate trademark dispute.” The Panel is of the view that Respondent’s
allegations and evidence are indeed sufficient in this regard. Complainant may well be capable of
demonstrating that its mark does not also function as a geographic name, but it
must do so in a forum more amenable to a full consideration of all of the relevant
evidence.
The Panel finds that Complainant has
failed to sustain its burden of proving that Respondent lacks rights or
legitimate interests in the disputed domain name.
The Panel’s conclusion as to rights or
legitimate interests being dispositive of the present matter, the Panel
declines to address the question of registration and use in bad faith.
DECISION
Having
considered the elements required under the ICANN Policy, the Panel concludes
that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: June 9, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum