Skydive Arizona, Inc. v. Registerfly.com c/o
Domain Registration
Claim Number: FA0607000749489
PARTIES
Complainant is Skydive Arizona, Inc. (“Complainant”), represented by J. Rick Tache of Snell & Wilmer L.L.P., One Arizona Center, 400 E. Van Buren, Phoenix, AZ, 85004-2202. Respondent is Registerfly.com c/o Domain Registration (“Respondent”), represented by E. Jeffrey Walsh, of Greenberg Traurig, LLP, 2375 East Camelback Road, Suite 700, Phoenix, AZ, 85016.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skydivearizona.net>
and <arizonaskydive.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically July 13, 2006; the National Arbitration Forum received a hard
copy of the Complaint July 17, 2006.
On July 17, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <skydivearizona.net>
and <arizonaskydive.com> domain names are registered with Enom,
Inc. and that the Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound
by the Enom, Inc. registration agreement and thereby has 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 25, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 14, 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@skydivearizona.net and
postmaster@arizonaskydive.com by e-mail.
On August 23, 2006, Respondent, pursuant to Supplemental Rule 6, requested an
extension until August 28, 2006, 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 August 23, 2006, a date that was after the deadline for Response. On August 24, 2006, the National Arbitration Forum, with Complainant’s consent, granted Respondent an extension and set a new deadline of August 28, 2006, for a filing of a Response.
Respondent then sent to the National Arbitration Forum an electronic
copy of the Response, received August 28, 2006, but the hard copy arrived
August 29, 2006, one day after the extended deadline for a Response. Thereafter, the National Arbitration Forum
determined that the Response was deficient according to Supplemental Rule 5(a).
On September 5, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
The Deficient Response:
As a preliminary procedural issue, the Panel addresses the Respondent’s
deficient response. Respondent
submitted an electronic copy of its Response August 28, 2006, which was within
the deadline for filing a Response.
Respondent did not submit a hard copy of the Response until August 29,
2006, which was outside the deadline for filing a Response. The National Arbitration Forum determined,
as a matter of procedure, that the Response was deficient according to
Supplemental Rule 5(a).
The Panel may consider a deficient
Response along with the Complaint but is not required to consider it in light
of its deficient nature. See Talk
City Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (concluding
that no weight would be afforded to the facts alleged in the respondent’s
deficient submission, partly because it “did not contain any certification that
the information contained in the e-mail was, ‘to the best of Respondent’s
knowledge complete and accurate’” in accordance with Rule 5(b)(viii)); see
also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to
accept Respondent’s deficient Response that was only submitted in electronic
form because it would not have affected the outcome had the Panel considered
it). But see Strum v.
Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a
Response inadmissible because of formal deficiencies would be an extreme remedy
not consistent with the basic principles of due process. . ..”); see also J.W. Spear & Sons
PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding
that where Respondent submitted a timely Response electronically, but failed to
submit a hard copy of the Response on time, “[t]he
Panel is of the view that given the technical nature of the breach and the need
to resolve the real dispute between the parties that this submission should be
allowed and given due weight”).
The Panel
reviewed the Response but determined that nothing in the Response would require
an outcome that is different from the one contained here.
That
would not be appropriate here because Respondent has not brought the issue to
the Panel in a form that would permit the Panel to defer to the federal
court. The Panel finds that it is
appropriate under Rule 18, to proceed with resolution of the domain name
dispute. See Creative
Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003)
(choosing to proceed with a decision under the authority of Rule 18(a), despite
the filing of a lawsuit over the parties respective trademark rights in federal
court); see also BPI Commc’ns, Inc. v. Boogie TV LLC, FA 105755 (Nat.
Arb. Forum Apr. 30, 2002) (deciding it proper to proceed despite the
complainant’s filing suit in federal court for trademark and service mark
infringement).
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1.
Respondent
registered domain names that are confusingly similar to a mark in which
Complainant has exclusive rights.
2.
Respondent has
no rights to or legitimate interests to the mark contained within the disputed
domain names.
3.
Respondent
registered and used the domain names in bad faith.
B. Respondent makes the following points in
response:
1.
That
Complainant failed to show exclusive rights to its “purported service mark
SKYDIVE ARIZONA” inasmuch as Complainant has not shown that its mark has
acquired “secondary meaning” with the skydiving public.
2.
That Respondent
is “a real business that provides skydiving throughout the United States” and
has a “Legitimate Right to Use the <skydivearizona.net> and <arizonaskydive.com>
domain names.”
3.
That
Complainant failed to show bad faith registration and use on the part of
Respondent.
FINDINGS
Complainant asserts
continuous use of the SKYDIVE ARIZONA mark to refer to its skydiving operations
since 1986.
Respondent registered the <skydivearizona.net> and <arizonaskydive.com>
domain names on November 12, 2003, prior to Complainant’s registration of the
mark.
Complainant
registered the SKYDIVE ARIZONA mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 3,099,847
issued June 6, 2006, filed June 17, 2005).
Complainant has expended considerable sums
and effort to develop its business using the SKYDIVE ARIZONA mark and
Complainant has acquired considerable prestige, recognition and acknowledgment
within the skydiving community for its mark and business.
Complainant has shown common law rights in
the SKYDIVE ARIZONA mark since 1986 and legal rights since 2005.
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 Complainant to 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)
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 that it
registered the SKYDIVE ARIZONA mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 3,099,847
issued June 6, 2006, filed June 17, 2005).
Respondent registered the <skydivearizona.net> and <arizonaskydive.com>
domain names on November 12, 2003, prior to Complainant’s registration of the
mark.
Complainant does not need to own a valid trademark registration in order to establish rights in the SKYDIVE ARIZONA mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant asserts that it has continuously used the SKYDIVE ARIZONA mark to refer to its skydiving operations since 1986. Complainant alleges that it is a world-renowned provider of skydiving services and that it provides training services at its facilities in Arizona to national skydiving teams from countries across the world.
Complainant also claims that it has hosted the United States National Championship for skydiving on numerous occasions and regularly hosts events related to the America’s Cup, the Arizona Challenge and Mission Impossible skydiving competitions.
In addition, Complainant alleges that its SKYDIVE ARIZONA facilities are the home of Omniskore, the organization that developed the most widely-used computerized scoring and judging system for competitive skydiving. Complainant maintains that Omniskore prominently displays Complainant’s SKYDIVE ARIZONA mark on its scoring devices; and that Complainant’s mark appears on television screens around the world during skydiving competitions.
Complainant provided a copy of a district court of Arizona decision in which the district judge granted summary judgment in Complainant’s favor on several claims, including that the term ARIZONA SKYDIVING was confusingly similar to Complainant’s SKYDIVE ARIZONA mark. The Panel notes as well that Respondent distinguished that Decision.
Complainant provided substantial evidence to show that it has made continuous and extensive use of the SKYDIVE ARIZONA mark in connection with skydiving operations and that Complainant is known throughout the world for his skydiving training operations. Therefore, the Panel finds that Complainant’s SKYDIVE ARIZONA mark acquired secondary meaning and that Complainant established common law rights in the SKYDIVE ARIZONA mark pursuant to Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Complainant contends that the disputed domain name that Respondent registered, <skydivearizona.net>, is identical to Complainant’s SKYDIVE ARIZONA mark because the disputed domain name incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the mere addition of a gTLD to Complainant’s mark in the disputed domain name is not relevant for the purposes of Policy ¶ 4(a)(i). Respondent’s disputed domain name, <skydivearizona.net>, is identical to Complainant’s SKYDIVE ARIZONA mark. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark).
With respect to the <arizonaskydive.com> domain name, Complainant alleges that the disputed domain name is confusingly similar to Complainant’s SKYDIVE ARIZONA mark, under Policy ¶ 4(a)(i), since it merely inverts the two words that comprise Complainant’s mark. The Panel finds that such alteration is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name. See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) (“Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”).
Respondent contended that Complainant’s proof did not rise to the level of showing for its SKYDIVE ARIZONA mark secondary meaning among consumers, especially first-time skydivers, in connection with Complainant’s skydiving business. Respondent also contended that Complainant’s sole operations are in Arizona, whereas Respondent’s business operates nationwide. The Panel disagrees and finds Complainant’s proof sufficient to show common law rights and secondary meaning.
The Panel finds
that Complainant satisfied ICANN Policy ¶
4(a)(i).
Complainant established that it has rights
to and legitimate interests in the mark contained in its entirety within the
two disputed domain names. Complainant
urges that Respondent has no such rights.
Complainant must first make a prima facie showing that
Complainant has rights to or legitimate interests and that Respondent lacks
such rights and legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii). Once Complainant does so,
the burden then shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Productions, 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 Policy ¶ 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 Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”).
One way for Respondent to make such
a showing is to show that Respondent is commonly known by the mark contained
within the domain names. Complainant
alleges that Respondent’s WHOIS information establishes that Respondent is not
commonly known by the disputed domain names.
In fact, no evidence in the record suggests that Respondent is or has
ever been known by the disputed domain names and the Panel finds that this Respondent is not commonly known by the disputed
domain names under Policy ¶ 4(c)(ii). See
The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also M. Shanken
Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record).
Furthermore, Complainant asserts and the record shows that Respondent’s <skydivearizona.net> and <arizonaskydive.com> domain names resolve to yet a third domain name that displays a website that advertises goods and services that are in direct competition with Complainant. Complainant asserts that Respondent uses the disputed domain names to advertise skydiving services in Arizona but urges that Respondent is actually located in Georgia. In addition, Complainant claims that Respondent uses the disputed domain names to advertise a phone number for Internet users to call to purchase skydiving services from Respondent that are, in actuality, useless in the state of Arizona.
The Panel finds that Respondent’s
use of the disputed domain names in this manner 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 MSNBC Cable, LLC
v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or
legitimate interests in the famous MSNBC mark where the respondent attempted to
profit using the complainant’s mark by redirecting Internet traffic to its own
website); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”). The Panel concludes that Respondent failed to show
rights to or legitimate interests in the disputed domain names that are
confusingly similar to Complainant’s mark.
Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Based on the evidence presented by Complainant, and the lack of extrinsic evidence with Respondent’s deficient Response, the Panel infers that Respondent is operating under the disputed domain names for its own commercial benefit. Further, those accessing the disputed domain names are then directed to Respondent’s own website where Respondent’s services are offered. Further, the disputed domain names contain in both instances, Complainant’s SKYDIVE ARIZONA mark and are capable of creating confusion as to Complainant’s affiliation with the <skydivearizona.net> and <arizonaskydive.com> domain names and the resulting website. Given that Complainant’s operation in this area of commerce dates back to 1986, the Panel finds that Respondent’s knowing use of Complainant’s mark permits the finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant claims that Respondent registered more than 900 domain names containing the term “skydiving” and geographic identifiers, establishing a pattern of preventing true mark holders from registering domain names containing their respective marks. However, previous panels have interpreted Policy ¶ 4(b)(ii) only to encompass situations where the respondent was subject to previous UDRP proceedings resulting in transfer of domain names containing the marks of the complainant or numerous other parties. Complainant provided no evidence of previous cases ruling against Respondent on this point and Complainant provided no evidence that other parties have rights in marks containing the term “skydiving,” combined with geographic identifiers.
Respondent concedes that it uses the disputed domain names to promote its business and to sell skydiving certificates to customers in different states and that it has registered numerous other domain names containing the word “skydiving” combined with the names of American cities and states in order to advertise its business. Thus, Respondent argued, it had no specific bad faith as to Complainant’s business. However, the evidence shows in this case that Respondent knowingly used Complainant’s protected mark to register two domain names, <skydivearizona.net> and <arizonaskydive.com>, to use in Complainant’s area of commerce. The Panel infers that those seeking Complainant’s services would be diverted to Respondent’s website for Respondent’s own financial gain. This is sufficient to support findings of bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel
finds that Complainant satisfied ICANN
Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skydivearizona.net>
and <arizonaskydive.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 25, 2006.
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