Skydive Arizona, Inc. v. CASC, Inc. c/o Cary
Quattrocchi
Claim Number: FA0607000748150
PARTIES
Complainant is Skydive Arizona, Inc. (“Complainant”), represented by J. Rick Taché, of Snell & Wilmer L.L.P., One Arizona Center, 400 E. Van Buren, Phoenix, AZ 85004-2202. Respondent is CASC, Inc. c/o Cary Quattrocchi (“Respondent”), represented by E. Jeffrey Walsh, of Greenberg Traurig, LLP, 2375 East Camelback Road, Suite 700, Phoenix, AZ 85016.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arizona-skydiving.com>,
registered with Enom, Inc.
PANEL
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 13, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 17, 2006.
On July 17, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <arizona-skydiving.com>
domain name 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 July 20, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 10, 2006 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@arizona-skydiving.com by e-mail.
On August 9, 2006, Respondent requested, pursuant to Supplemental Rule 6, an extension of 20 days to respond to the Complaint, claiming that Complainant provided the National Arbitration Forum with an incorrect address for Respondent and that as a result, Respondent did not receive the Complainant until July 30, 2006 and did not procure counsel until August 2, 2006, leaving it with insufficient time to investigate the underlying claim. Respondent also alleged that Complainant had filed several other complaints against Respondent with an incorrect mailing address listed for Respondent, and that Complainant has refused to provide Respondent with copies of these Complaints, and therefore Respondent needed additional time to investigate this matter.
On August 9, 2006, Complainant responded to Respondent’s request and opposed an extension, claiming it was Respondent’s responsibility to maintain correct contact information with the registrar, the provider fulfilled its obligations under the UDRP Rules, Respondent’s Counsel failed to account for the delay in obtaining the Complaint from Respondent, and the other complaints are independent matters.
Despite Complainant’s objections, on August 10, 2006, the National Arbitration Forum found that extenuating circumstances existed and granted Respondent an extension and set a new deadline of August 21, 2006 for a filing of a Response.
Respondent submitted an electronic copy of its Response on August 21,
2006, within the deadline for Response, but did not submit a hard copy until
August 22, 2006. Therefore, the
National Arbitration Forum has determined the Response to be deficient
according to Supplemental Rule #5(b).
A timely and complete Additional Submission from Complainant was
received by the National Arbitration Forum on August 28, 2006.
A timely Response to Complainant’s August 28, 2006 Submission was
received from Respondent on September 5, 2006.
On August 31, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <arizona-skydiving.com> domain name is confusingly similar to Complainant’s SKYDIVE ARIZONA mark.
2.
Respondent does not have any rights or legitimate
interests in the <arizona-skydiving.com> domain name.
3.
Respondent registered and used the <arizona-skydiving.com>
domain name in bad faith.
B. Respondent failed to submit
a conforming Response in this proceeding.
C. Complainant’s Additional
Submission
1.
Complainant’s
trademark rights in SKYDIVE ARIZONA are based on 20 years of continuous use.
2. Respondent is not commonly known by the <arizona-skydiving.com> domain name.
3.
Respondent uses the <arizona-skydiving.com>
domain name in bad faith because its business model is misleading.
D. Respondent’s Additional Submission
1. Complainant’s SKYDIVE ARIZONA is highly descriptive and, since it was just registered under Section 2(f) in June 2006, it is not incontestable.
2. Respondent operates a legitimate Internet business and therefore has a legitimate right to use the <arizona-skydiving.com> domain name because it fairly describes the products and services it offers on its website.
3.
Respondent is not engaging in bad faith when it directs
traffic from one of its websites to another of its websites.
FINDINGS
Complainant holds a U.S. Trademark
Registration for SKYDIVE ARIZONA, issued June 6, 2006, on the Principal
Register under Section 2(f), which contains a disclaimer of the word “skydive”
apart form the mark as shown.
Respondent registered the <arizona-skydiving.com>
domain name in 2002, and sells skydiving certificates through that website.
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 is a well-known provider of skydiving services, and states that national skydiving teams from around the world come to its facilities in Arizona to train. Complainant has hosted the United States National Championship for skydiving and regularly hosts events related to the America’s Cup, Arizona Challenge and Mission Impossible skydiving competitions. The Panel finds that Complainant has established rights in the SKYDIVE ARIZONA mark through continuous use in connection with skydiving operations since 1986, as well as through its U.S. Trademark Registration, issued June 6, 2006. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Furthermore, Complainant provided a copy of a District Court of Arizona decision granting summary judgment in favor of Complainant on the claim that the term ARIZONA SKYDIVING is confusingly similar to Complainant’s SKYDIVE ARIZONA mark.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
It is undisputed that Respondent operates a
business selling skydiving certificates through its <arizona-skydiving.com>
website, including certificates
that could be used in the state of Arizona.
Despite Complainant’s complaints about how Respondent operates its business, Respondent is indeed making a
bona fide offer of goods or services.
Complainant argues that Respondent is “merely a booking agent.” Here again, however, it is not the job of
this Panel to assess whether Respondent offers a good product or service, just
that it offers something legitimate.
Complainant mentioned Respondent’s alleged
affiliation with a large network of independent skydive centers or “drop
zones,” and itself provided a list of hundreds of domain names owned by
Respondent reflecting skydiving and various geographic locations around the
United States. The Panel notes that all
of the domain names are descriptive and show that the Respondent is using a
certain business model or method which is, albeit different from Complainant’s,
legitimate. In fact, the nature of
Respondent’s business is fairly reflected in the many descriptive domain names
it has registered to sell products or services related to skydiving, including <arizona-skydiving.com>. See Dog.com v. Pets.com, FA93681 (Nat. Arb. Forum March 31, 2000)
(respondent has a legitimate interest in using a domain name that identifies
and promotes the type of goods and services it offers on its website).
Respondent is certainly not required to only
use its business name to promote products or services. A business may choose any word it deems appropriate to promote business
on the Internet, and businesses often choose descriptive words, as Respondent
has done. See W. Hay Co. v.
Forester, FA 93466 (Nat. Arb. Forum Mar. 3, 2000) (finding the respondent
had the right to register a domain name because “western” is a generic term
that generally refers to a particular section of the country); see also Energy Source Inc. v.
Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that
the 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”).
The Panel finds
that Complainant has not satisfied Policy ¶ 4(a)(ii).
DECISION
Complainant, having failed to establish all three elements required
under the ICANN Policy, is DENIED relief.
Sandra J. Franklin, Panelist
Dated: September 12, 2006
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