Skydive Arizona, Inc. v. Granter Media c/o J D
Claim Number: FA0607000757483
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 Granter Media c/o J D (“Respondent”), 3240 South Cobb Drive, Suite X, Smyrna, GA 30080.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <skydivingarizona.com>, registered with Registerfly.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2006.
On July 14, 2006, Registerfly.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skydivingarizona.com> domain name is registered with Registerfly.com, Inc. and that Respondent is the current registrant of the name. Registerfly.com, Inc. has verified that Respondent is bound by the Registerfly.com, 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 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 16, 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@skydivingarizona.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Subsequently, Respondent requested additional time to respond to the Complaint. The Panel denied the request. A Response was received notwithstanding, which the Panel does not consider to be in compliance with ICANN Rule #5(a), and was not considered.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skydivingarizona.com> domain name is confusingly similar to Complainant’s SKYDIVE ARIZONA mark.
2. Respondent does not have any rights or legitimate interests in the <skydivingarizona.com> domain name.
3. Respondent registered and used the <skydivingarizona.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, Skydive Arizona, Inc., has operated an extensive skydiving operation in the state of Arizona since 1986. Complainant has continuously utilized the SKYDIVE ARIZONA mark since its inception in connection with providing skydiving instructional services, skydiving team training, hosting skydiving competitions and events and selling skydiving products and equipment. Complainant has advertised extensively under the SKYDIVE ARIZONA mark and has generated significant public goodwill in the SKYDIVE ARIZONA mark. Complainant has also registered its SKYDIVE ARIZONA mark with the United States Patent and Trademark Office (Reg. No. 3,099,847 filed June 17, 2005, issued June 6, 2006). Complainant has registered the <skydiveaz.com> domain name in order to operate a website providing skydiving information, goods and services to Internet users.
Respondent registered the <skydivingarizona.com> domain name on April 19, 2003. Respondent is operating a commercial website in direct competition with Complainant, and using the disputed domain name to redirect Internet users to that competing website. Respondent’s website claims to offer skydiving instructional services as well as skydiving products at a facility in Arizona. Respondent’s website urges potential customers to call a 1-800 number and purchase a certificate for skydiving lessons that is supposedly redeemable at any Arizona location of Respondent’s skydiving business. However, it appears that Respondent may not actually have any Arizona skydiving operations and other skydiving operations, such as Complainant, are not willing to honor certificates purchased through Respondent.
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."
In view of Respondent's failure to submit a timely response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 has established common law rights in the SKYDIVE ARIZONA mark through continues and extensive use of the mark for twenty years. Complainant has used the SKYDIVE ARIZONA mark in connection with all aspects of its skydiving operations and has advertised under the mark extensively. Complainant has established secondary meaning in the SKYDIVE ARIZONA mark through its extensive and continuous use of the mark. Complainant did not file for registration of the SKYDIVE ARIZONA mark with the USPTO until June 17, 2005, after Respondent had registered the disputed domain name. However, the Panel does not require a mark to be registered in order to find that Complainant has rights in a mark, thus the Panel finds that Respondent had established common law rights in the mark prior to registration with the USPTO and prior to Respondent’s registration of the disputed domain name. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent’s <skydivingarizona.com> domain name
is confusingly similar to Complainant’s SKYDIVE ARIZONA mark. Respondent’s domain name merely converts the
term “skydive” from Complainant’s mark to the term “skydiving.” This is a minor difference that does not
alter the core meaning of the term and it is particularly confusing in light of
the fact that Complainant and Respondent appear to be operating in the same
line of business. The Panel finds that
Respondent’s minor alteration of Complainant’s mark does not overcome the
confusing similarity between the disputed domain name and Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see
also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that adding the suffixes "502" and "520" to the
ICQ trademark does little to reduce the potential for confusion); see also
Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat.
Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further
increased by the fact that the Respondent and [Complainant] operate within the
same industry.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertions create a prima facie case under the Policy, shifting the burden to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because the Respondent’s failure to submit a timely Response means that Respondent has not presented the Panel with any evidence or arguments in support of Respondent’s rights or legitimate interests in the disputed domain name, the Panel views Respondent’s failure to respond as evidence that Respondent lacks rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent is using the <skydivingarizona.com> domain
name to redirect Internet users to its commercial website which offers
skydiving goods and skydiving instruction services in direct competition with
Complainant. Respondent is using the
goodwill established in Complainant’s SKYDIVE ARIZONA mark to attract Internet
users to its competing website. The
Panel finds that such use is not 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 Bank of Am. Corp. v. Nw. Free Cmty. 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 Coryn Group,
Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding
that the respondent was not using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
There is no available evidence
indicating that Respondent is commonly known by the <skydivingarizona.com>
mark. Respondent’s WHOIS
information identifies Respondent as “Granter Media,” which has no obvious
connection to the disputed domain name.
Further, Complainant asserts that Respondent is in no way sponsored by
or affiliated with Complainant and Complainant has not given Respondent
permission to use Complainant’s mark in a domain name. Based on the available evidence, the Panel
finds that Respondent is not commonly known by the disputed domain name and
thus, lacks rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <skydivingarizona.com> domain name is confusingly similar to Complainant’s SKYDIVE ARIZONA mark. Potential customers seeking Complainant’s genuine website may easily be redirected to Respondent’s website either through an Internet search engine or by typing the variation of Complainant’s mark used in Respondent’s domain name into a web browser. Once at Respondent’s website, Internet users have every reason to mistakenly believe that they are at Complainant’s genuine website because Respondent’s website is also commercial website offering skydiving goods and services. Respondent is using a confusingly similar domain name to attract Internet users to its website and profiting from their confusion by selling skydiving goods and services in competition with Complainant. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Respondent’s use of the <skydivingarizona.com> domain
name to redirect Internet users to its commercial website in competition with
Complainant not only benefits Respondent, but it also directly harms
Complainant. Internet
users interested in Complainant’s skydiving goods and services who instead find
themselves redirected to Respondent’s website may do business with Respondent
instead of with Complainant. The Panel
finds that this disrupts Complainant’s business and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
the respondent and the complainant were in the same line of business in the
same market area); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from the complainant's marks
suggests that the respondent, the complainant’s competitor, registered the
names primarily for the purpose of disrupting the complainant's business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skydivingarizona.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 30, 2006
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