Mark Paigen v. Research and Design
Claim Number: FA0609000791739
PARTIES
Complainant is Mark Paigen (“Complainant”), represented by Gary J. Nelson, of Christie, Parker & Hale LLP, PO Box 7068, Pasadena, CA 91109-7068, USA. Respondent is Research and Design (“Respondent”), represented by Daniel R. Greening, of Research and Design, 416 Bee St. Apt. B, Sauslito, CA 94965-2315.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chaco.com>
(hereinafter the “Domain Name”), registered with Go Daddy Software, Inc.
PANEL
The undersigned, Christopher Gibson, 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.
PROCEDURAL HISTORY
The Complainant submitted a Complaint to the National Arbitration Forum
(“NAF”) electronically on September 7, 2006; the National Arbitration Forum
received a hard copy of the Complaint on September 8, 2006.
On September 8, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <chaco.com>
domain name 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 September 11, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 2, 2006 by which the 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@chaco.com by e-mail.
A timely Response was received and determined to be complete on October
2, 2006.
The NAF received an Additional Submission from Complainant on October
4, 2006 and determined it to be timely and complete pursuant to Supplemental
Rule 7. The NAF also received an
Additional Submission from Respondent on October 9, 2006 and determined it to
be timely and complete in accordance with Supplemental Rule 7.
On October 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Christopher Gibson as Panelist.
RELIEF SOUGHT
The Complainant requests that the Domain Name be transferred from the
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that: (i) Complainant has trademark rights in the
word CHACO; (ii) the Domain Name is confusingly similar to the CHACO mark;
(iii) Respondent has no right or legitimate interest in the Domain Name; and
(iv) Respondent has registered and is using the Domain Name in bad faith. Complainant’s arguments are reviewed below.
Rights in CHACO:
Complainant is a company specializing in the manufacture and distribution of
sandals, and is the owner of a United States trademark registration for
CHACO. The Complainant has been using
the CHACO trademark in association with sandals since as early as September
1994. The Complainant operates a
website at <chacousa.com>.
Confusingly similar: Complainant contends that the Domain Name is
confusingly similar to the CHACO mark, which merely lacks the “.com” top-level
domain suffix.
No right or legitimate interest: Complainant contends that
Respondent’s use of the Domain Name cannot be considered bona fide,
noncommercial, or fair use because Respondent has adopted the CHACO mark for a
passive website. Complainant claims
that the website associated with the Domain Name has been passive for nearly
nine years, with extremely few changes during this period. The failure to develop an active website is
evidence that Respondent has no rights or legitimate interest in the Domain
Name. Further, Respondent is not commonly
known by the term Chaco (or any variation), and has not acquired any trademark
rights in this word. The WHOIS record
shows that Respondent is instead known
as Research and Design. Finally,
Complainant confirms that Respondent is not a licensee of Complainant.
Registered and using the Domain Name in bad faith:
Complainant contends that Respondent's registration of the contested
Domain Name prevents Complainant from reflecting its CHACO mark in a
corresponding domain name in direct violation of the UDRP, para. 4(b)(ii). Complainant also asserts that Respondent has
indicated the Domain Name is for sale for an amount in excess of $50,000. The attempt to sell a passively held domain
name for an excessively high price is evidence that Respondent registered and
is using the Domain Name in bad faith.
Complainant further contends that registering a domain name which
incorporates a well-known trademark and passively holding that domain name with
no active website are both actions that constitute evidence of bad faith. Thus, Respondent’s passive holding of the
Domain Name and refusal to use it in conjunction with an operating business
supports a finding of bad faith. The
CHACO mark is so obviously connected with Complainant that use of an identical
domain name by someone with no connection with Complainant also suggests bad
faith.
B.
Respondent
Respondent has filed a detailed Response to the Complaint, in which it
contends that it obtained and has legitimately used the Domain Name in good
faith for the purpose of offering bona fide, non-competitive products
and services, in particular: (i) the Chaco Pueblo open-source application and
information about Chaco Communications, the company which originally developed
this software, and (ii) photos and information about Chaco Canyon in New
Mexico. Respondent’s contentions are
reviewed below.
Respondent states that the Domain Name has been in its possession since
August 1994, even before Complainant had formed its company and registered its
trademark. Respondent asserts there is
strong evidence showing that the purpose of obtaining the Domain Name was to
offer Respondent’s creations and experiences in relation to Chaco Canyon (the
area in New Mexico) and Chaco Communications, not to resell the Domain Name. At the time of the Complaint, Respondent
indicates that the website associated with the Domain Name offered links to the
following products or services: downloads of the Chaco Pueblo open-source
application; a list of virtual-worlds supported by this application; a
description of the whereabouts of former Chaco Communications employees (Daniel
Greening was the CEO and Ron Lussier an engineer); a link to Daniel Greening's
personal website; and a link to Ron Lussier's website, where he sells
photographs including photographs of Chaco Canyon taken as early as 1993.
With respect to Chaco Communications, Respondent explains that the
Domain Name was originally registered in relation to this company. Respondent indicates that Daniel Greening
and Ron Lussier registered “Chaco Communications” as a California business in
October 1994. The logo for Chaco
Communications, which still appears on the website, was designed by Daniel
Greening's mother. The company built
software packages for sale, including the Chaco Pueblo application (which is
stated to add certain multimedia to text-based multi-user adventure
games). While Chaco Communications
eventually merged into another company, the Chaco Pueblo application was made
available on an open-source basis in March 1999 and is still in use today. Over the years, the website associated with
the Domain Name has served as a reference point for people to find the Chaco
Pueblo application, and it was actively offering downloads of this application
at the time of the Complaint in this case.
As to the place name Chaco Canyon, this refers to a region in and
around the Chaco Culture National Historical Park in New Mexico. Daniel Greening and Ron Lussier visited this
region several times starting in 1991.
They visited and interviewed archaeologists studying the area, and
became intrigued by Chaco Canyon's natural beauty and history. Ron Lussier has taken many photographs of
the Chaco area, which have been offered from the Domain Name website through a
link to Ron Lussier's personal website.
Respondent also states that Daniel Greening wrote about his experiences
and research on Chaco Canyon in 1995-1996 and published these writings on the
website associated with the Domain Name.
Respondent contends that there is a sentimental attachment to Chaco
Canyon because Respondent’s general partners, Daniel Greening and Ron Lussier,
both shared an interest in this area.
Ron Lussier proposed marriage to Daniel Greening in Chaco Canyon in
April 1993.
Respondent has also provided information through Google Analytics to
show that a significant number of the referring sources for the Domain Name’s
website are search engines and websites that reference the site for information
about the Chaco Canyon area and the Chaco Pueblo open-source application. Exhibit A to the Response shows that the
official site of the New Mexico Tourism Office refers to the Domain Name’s web
pages for the Chaco Canyon National Park.
Respondent specifically denies that the website associated with the
Domain Name is a passive site. The web
pages were not “parked”, but actively offered goods and services related to
Respondent. Respondent asserts that
simply because the content on this website remained unchanged for months, this
did not reduce its usefulness as a bona fide website offering goods and
services. Respondent argues that there
is no requirement under the ICANN rules that the content of a website must
change with a certain frequency. Further,
Respondent contends that the Domain Name originally backed a multi-year engineering
effort to develop a software product known as Chaco Pueblo and was not
registered for the purpose of depriving Complainant of the Domain Name.
Respondent claims that the Domain Name’s website has never contained
statements offering the Domain Name for sale.
Respondent emphasizes that the website has offered goods and services in
a non-conflicting, non-competitive field.
In response to Complainant’s contention that the Domain Name was offered
for sale by Respondent for a price “well above $50k,” Respondent indicates that
it has received numerous offers to purchase the Domain Name every year. Its response of "Nope" and “well
over $50k” to the inquiry received from Complainant’s agent was an indicator of
its disinterest in selling the name.
Respondent further argues that even if it was willing to sell the Domain
Name at a high price, this is not an indication of bad faith but instead a
reflection of the investment Respondent has made in the goods and services
offered through the Domain Name’s website.
Respondent also contends that it has done nothing to disrupt
Complainant's business. Respondent has
not used the Domain Name to exploit confusion with Complainant's CHACO
mark. The Domain Name's website has not
offered any products related to sandals or clothing. Respondent contends that the registered trademark CHACO covers
sandals, shoes, shirts and hats.
Respondent indicates that during the three years when Chaco Communications
was active, Complainant never asserted its CHACO trademark rights. Respondent argues that trademark protection
is limited to its field of use – Chaco Communications and Chaco Sandals
operated in very different fields.
Respondent also indicates that Chaco is a commonly used place name
referring to Chaco Canyon in New Mexico, as noted above. This too, according to Respondent, supports
Respondent's use of the Chaco name to promote the Chaco Canyon area. Respondent thus argues that it has never
intentionally redirected Internet users seeking Complainant’s sandal products
to its own website for commercial gain, and has at all times used the Domain
Name for its own unrelated purposes.
Finally, Respondent states that Complainant has never asked Respondent
to place a link on the Domain Name’s website to the Chaco Sandals site. Respondent indicates that it would have done
so at no charge, and would still be willing to do so now.
C.
Additional Submissions
Both parties have filed an Additional Submission. Aside from some additional points addressing
the merits, which are intended to reinforce the contentions summarized above,
the main issue addressed in the parties’ additional submissions is that
Respondent’s Response should not be considered because it was filed by a
third-party and not by Respondent. This
issue is addressed below.
FINDINGS
The parties in this case have both done a good job of briefing the
issues in dispute and providing evidence in support of their positions. The complainant has submitted evidence in
support of its trademark registration and website, WHOIS record, and
information concerning the Respondent’s website. Respondent has also submitted information and analysis (using
Google Analytics) concerning the website associated with the Domain Name.
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.”
A threshold issue to be addressed – which was raised by Complainant in
its Additional Submission – is that Respondent has defaulted by failing to file
a timely response. Complainant contends
that Respondent is listed as Research and Design, but that the Response in this
case was filed instead by two individuals, Daniel Greening and Ron Lussier, who
are not Respondent. Complainant
explains that the Response repeatedly refers to “Respondent Dan Greening” and
“Respondent Ron Lussier,” but gives no explanation of any relationship between
these two individuals and Respondent, Research and Design. Complainant contends that Daniel Greening
and Ron Lussier are third parties to this proceeding, and that the Panelist is
under no obligation to consider a document filed by a third-party. Complainant cites several prior NAF
decisions in support of its contention that under these circumstances, the
Panelist should conclude that Respondent has failed to file timely a Response
in this case.
According to Complainant, a consequence of this failure to file a
Response is that all allegations in the Complaint remain uncontradicted and the
Panelist should take as true all reasonable inferences of fact in the
Complaint.
Respondent has filed an Additional Submission, in which it contends
that Respondent – Research and Design – has timely filed a Response in this
case. Respondent explains that Research
and Design is a general partnership between Ron Lussier and Dan Greening, which
has been operating since 1991.
Respondent states that Research and Design was identified as the
responding party on the Response, in particular, in the section titled
“Respondents Information,” where Respondent is identified both by its entity
name, “Research and Design,” and by the names of the partners making up the
entity, “Daniel R. Greening and Ron Lussier.”
Respondent asserts that this was done to make clear that the two are
equivalent: that is, under California partnership law, either partner is
authorized to bind the partnership and the individuals are essentially
interchangeable with their partnership.
Respondent therefore contends that Daniel Greening and Ron Lussier are
not third-parties to this case, but direct parties who operate a general
partnership under the name of Respondent, Research and Design.
Respondent also states that Daniel Greening is listed as the
administrative and technical contact in the WHOIS record for Respondent, with
his complete contact information included (Respondent explains that the address
information on the WHOIS record is out-of-date because of a recent move in
August 2006). The WHOIS record confirms
this point. Respondent also claims that
Complainant contacted Daniel Greening by phone in 2001, indicating that
Complainant was aware of the relationship between Respondent and Daniel
Greening.
Finally, aside from attempting to distinguish several of the NAF cases
relied upon by Complainant, Respondent notes several specific places in the
Response in which the reference is to Respondent as an entity, and not to
Daniel Greening or Ron Lussier.
Respondent also notes that the Response’s Certification clearly refers
to Respondent as an entity.
Respondent concludes that the connections between the Domain Name,
Research and Designed, Daniel Greening and Ron Lussier are extremely strong and
close, and have been maintained in a transparent and open manner, not
concealed, and should have been obvious to anyone.
The Panelist has considered the submissions of the parties on this
threshold issue of whether a timely Response has been filed in this case. The Panelist considers that the explanations
provided in the Additional Submission of Respondent have clarified any
confusion that might have existed on this point. The Panelist observes the following items in support of his
decision that the Response was timely filed and can be considered in this case:
§
Research and
Design was identified as the responding party in the Response itself, in the
section titled “Respondents Information;”
§
Daniel R.
Greening was identified as the authorized representative of the Respondent in
the Response, in a section titled “Respondents’ Authorized Representative;”
§
The WHOIS
record identifies Daniel Greening as the administrative and technical contact
for the registrant of the Domain Name (i.e., the Respondent). It should be noted that under the Rules for
Uniform Domain Name Dispute Resolution Policy (Rule 2(a)), the administrative
and technical contacts for a domain name (as listed in the WHOIS database) are
identified as the important contact points for, among other things, discharging
Complainant’s responsibility of achieving notice to a respondent;
§
Daniel Greening
signed the Response filed in this case and explained that no lawyers were
involved in the preparation of the Response; instead, the Response was prepared
by himself, with assistance from Ron Lussier; and
§
Respondent has
claimed (with no contradicting evidence) that Research and Design is a general
partnership in which Daniel Greening and Ron Lussier are the general partners,
and that Daniel Greening and Ron Lussier were married in Massachusetts and are
registered domestic partners in California.
Under these circumstances, the Panelist concludes that Respondent filed
a timely response because Daniel Greening had authority to sign and submit the
Response on behalf of Respondent. The
failure to provide initially a clear explanation concerning Research and Design
and its relationship to Daniel Greening and Ron Lussier – and any language in
the Response which refers to Respondent in the plural form (or as “Respondent
Greening” or “Respondent Lussier”) – does not upset this conclusion.
B. Merits of Dispute
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 in
which Complainant has rights;
(2)
Respondent up
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.
There is no dispute between the parties that
the Domain Name registered by Respondent is identical or confusingly similar to
the CHACO mark in which Complainant has rights. Complainant prevails on this first element.
As indicated in the review of contentions
above, the parties dispute whether the Respondent has any right or legitimate
interest in the Domain Name. The
Panelist is persuaded by the information, explanations and evidence contained
in Respondent’s certified Response (and attachments thereto), as well as
certain evidence presented by Complainant itself, that Respondent has had a
long-standing and legitimate interest in the Domain Name.
In particular, the Panelist notes that
Respondent’s general partners have demonstrated both a personal and
professional interest in the Chaco Canyon area of New Mexico. The Panelist is persuaded by the explanation
of the choice of the name “Chaco” for the Domain Name and its initial use for
the California company, Chaco Communications, established by Respondent’s
general partners. The Panelist is also
persuaded by Respondent’s use of the Domain Name during the period after Chaco
Communications ceased to operate, even if the content on the Domain Name’s web
site has been quite “static.” Unlike
the typical circumstance involving “passive holding” (as previous UDRP panels
have defined it), in which a domain name resolves to a blank web page, error
page or some other type of holding page with no content on it, Complainant’s
own evidence shows that Respondent has been maintaining a website during the
past nine years which contains links to various content, all of which is
related to Respondent’s own legitimate activities and unrelated to
Complainant. The fact that the content
of the web site has changed extremely infrequently does not undermine the valid
purposes of the web site.
Respondent’s use of the Domain Name, first to operate a technology business unrelated to Complainant, and thereafter for various other purposes (e.g., distribution of open-source Chaco Pueblo software application and links to websites offering information and photographs of Chaco Canyon) constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i). See, e.g., Jeannette Martello v. Cockerell and Associates, FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services) and the cases cited therein.
Complainant has
failed to establish that Respondent has no rights or legitimate interests in
the Domain Name.
Technically, it is
not necessary for the Panelist to reach the question of whether or not there
has been bad faith on the part of Respondent under Policy ¶ 4(a)(iii), because
Respondent has sufficiently established its rights or legitimate interests in
the Domain Name. See Brasserie
Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005); see also Lockheed Martin Corp. v. The Skunkworx
Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of
bad faith registration and use was moot once the panel found the respondent had
rights or legitimate interests in the disputed domain name). However, the Panelist nonetheless finds that
Respondent’s submissions have
effectively rebutted Complainant’s contention that Respondent has been merely
hoarding the Domain Name, or that the website associated with the Domain Name has
been passive, in violation of Policy ¶ 4(b)(i).
Respondent has shown that it has used the
Domain Name to provide information on non-competing products and services,
previous employees of Chaco Communications, and to display information and
photographs of Chaco Canyon.
Complainant has provided no evidence to suggest that Respondent has
attempted to disrupt Complainant’s business or divert Internet users for
commercial gain. It is clear that the Domain Name contains a geographic term which
Internet users do not exclusively identify with Complainant’s sandals and other
products. Finally, there is no evidence
that Respondent registered the Domain Name with the primary purpose for selling
it to the complainant or a competitor of Complainant. Because Complainant initiated the offer to sell and
Respondent was unwilling to transfer the disputed domain name until Complainant
inquired, the Panel finds that Respondent did not register and use the Domain
Name in bad faith under Policy ¶ 4(b)(i) by naming a speculative price (i.e.,
in excess of $50,000). See Puky GmbH
v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence
to hold that the domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(i) where the complainant initiated contact with the respondent
and the respondent responded with an offer to sell its domain name registration
for $50,000).
The Complainant has failed to establish that the Domain Name has been registered and is
being used in bad faith. The Complaint must fail.
DECISION
Having failed to establish two of the three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Christopher Gibson, Panelist
Dated: October 25, 2006
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