Trek Bicycle Corporation v.
Image G/Ikonographics
Claim Number: FA0611000852695
PARTIES
Complainant is Trek Bicycle Corporation (“Complainant”), represented by Mary Catherine Merz, of Merz & Associates, P.C., 1140 Lake Street, Suite 304, Oak Park, IL 60301. Respondent is Image G/Ikonographics (“Respondent”), represented by Steven Brower, of Stephan, Oringher, Richman, Theodora & Miller, 535 Anton Boulevard., Ninth Floor, Costa Mesa, CA 92626-1902.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trek.com>, registered with Network
Solutions, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Michael A. Albert (chair), the Honorable James A. Carmody, and David E.
Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on November 27,
2006; the National Arbitration Forum received a hard copy of the
Complaint on November 28, 2006.
On November 27, 2006, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <trek.com> domain name is registered
with Network Solutions, Inc. and that
Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 1, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 21, 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@trek.com by e-mail.
A timely Response was received and determined to be complete on December 21, 2006.
On December 27, 2006, Complainant submitted a timely additional
submission; however, this submission did not comply with Rule 7 of the National
Arbitration Forum’s UDRP Supplemental Rule (the “Supplemental Rules”) because
the Forum received the fee late. For the
reasons stated in the Discussion section, the Panel will consider this
submission despite the defect.
On January 7, 2007, Respondent submitted a timely additional submission
which fully complied with Supplemental Rule 7.
On January 5, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the Forum
appointed Michael A. Albert, the Honorable James A. Carmody, and David
E. Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Trek Bicycle Corporation (“Trek”), manufactures and sells
bicycles and bicycle related goods. In
addition, Complainant’s wholly owned subsidiary, Trek Travel LLC (“Trek
Travel”) offers cycling vacations.
Complainant holds several registered trademarks related to its
business. Complainant has registered
trademark rights for the use of TREK in connection with bicycles and bicycle
frames under Reg. No. 1,168,276 (Registered Sept. 8, 1981; first used March 10,
1977). Complainant also indicates that
it holds a registered service mark for the use of TREK TRAVEL in connection
with vacation services under Reg. No. 3,031,210 (Registered Dec. 20, 2005;
First used Oct. 1, 2002).
In essence, Complainant avers Respondent recently posted pay-per-click
links for cycling vacations on its website and this change in the underlying
use of the website requires this Panel to transfer the Domain Name.
Complainant claims that <trek.com> is identical to
TREK. Complainant does not assert or
provide reasons why <trek.com> is also identical or confusingly
similar to TREK TRAVEL.
Complainant asserts that Respondent has no legitimate rights or
interests in <trek.com> because Respondent is not known by the name
“Trek,” does not offer goods and services under the mark TREK, and does not
have a license from Complainant to use that mark. Additionally, Complainant avers that
Respondent’s sole use of “trek” is in connection with the Domain Name <trek.com>.
Complainant contends that Respondent registered and used the Domain
Name in bad faith. Complainant asserts
that Respondent is misleading consumers and injuring Complainant’s business by
posting pay-per-click advertisements to competing businesses.
Complainant notes that Respondent registered the Domain Name in
1994. After learning that <trek.com>
was unavailable, Complainant began operating a web site in connection with its
bicycle business at <trekbikes.com>.
Later, Complainant created a website in connection with its cycle
vacation business at <trektravel.com>.
In 2002, Complainant contacted Respondent about transferring the site
but Respondent wanted “an exorbitant amount” of money “in the neighborhood of
six figures.”
Complainant knew of the Domain Name long before bringing its
Complaint. But Complainant asserts that
Respondent did not use the Domain Name “in connection with bicycles or
bicycle-related goods or services” until recently. Respondent’s changes to the content of its
website prompted Complainant to file its Complaint.
B. Respondent
Respondent, Image G/Ikongraphics, does not clearly state the nature of
its business in its filings. According
to its website, Respondent is “the leading provider of motion control
cinematography and related special effects services to the entertainment,
advertising, and multimedia industries.”
Respondent “acknowledges that the [D]omain [N]ame [<trek.com>]
and the registered trademark (TREK) are the same.” But Respondent argues that there are at least
eight other registered TREK marks in which the Complainant lacks rights. Accordingly, Respondent claims “the mere fact
that Complainant holds one of [nine] registrations on the single word ‘Trek’
does not prove a likelihood of confusion between the disputed domain name and
the registration held by Complainant.”
Furthermore, Respondent avers that a “prior judicial determination, that
the [TREK] mark is limited to bicycles and bicycle-related equipment . . . is
binding on Complainant under the doctrine of offensive collateral
esoppel.” Thane Int’l, Inc. v. Trek Bicycle Corp., No. 99-01470, 1999 WL
33268644, *9 (C.D. Cal. Dec. 20, 1999) (“[I]n light of the undisputed facts
before this Court, it is clear that Trek’s protection should be limited to
bicycles and bicycle-related equipment and accessories, including stationary
bikes.”), rev’d on other grounds, 305
F.3d 894 (9th Cir. 2002).
Respondent further asserts that TREK TRAVEL is “hardly
distinctive.” In support, Respondent
cites the existence of another company which has been operating under the
registered mark TREK TOURS LTD.
Respondent claims that the existence of Trek Tours, Ltd. demonstrates
that “the term ‘trek’ has an ordinary meanings with no relationship to Trek
Bicycles.” In addition, Respondent
points out that the ordinary meaning of the word “trek” relates to journeys and
trips and its meaning has “nothing to do with bicycles.”
Additionally, Respondent asserts it has legitimate rights and interests
in <trek.com>. Respondent
claims it used to work closely on projects with Paramount Pictures, which holds
rights to various STAR TREK marks. Respondent
claims it tried to persuade Paramount to enter into a joint venture that would
turn <trek.com> into a promotional Star Trek site. The site would provide information about the
special effects of Star Trek and promote the Respondent’s company at the same
time. Respondent admits that “Paramount
was apparently not yet prepared to get involved in the internet.” Respondent provides supporting correspondence
to corroborate its claims of a potential business use of the <trek.com>
domain name in connection with the STAR TREK franchise. This correspondence dates back to the mid
1990’s. Although Respondent acknowledges
that it “never intended to be known by ‘[t]rek,’” it argues in support of its
allegation of legitimate rights to the Domain Name that Paramount never
challenged Respondent’s rights in <trek.com>.
Respondent asserts that it registered and uses the Domain Name in good
faith. Respondent claims that it
registered the website in connection with its relationship with Paramount and
planned to launch a promotional website.
From the time of registration until April of 2006, Respondent claims it
used the website “privately” (i.e. Internet users could not access the site
without a password). During this time,
Respondent asserts it displayed content on its password-protected site relating
to Star Trek special effects. Respondent
has provided the Panel with printed copies of representative content from the
private site.
Respondent admits that in April of 2006 it changed the format of the
website. At that time, the Respondent
claims it gave its web-hosting company responsibility for administering part of
its website. “That company elected to
post a ‘pay-per-click’ site, which contains filtered advertising from Yahoo!
and Google related to ‘Trekking.’”
Respondent claims it was not aware of the change until Complainant
brought this proceeding.
Respondent admits that some of the advertising links resolve to
websites of cycle vacation companies.
But Respondent claims that none of the links resolve to websites that
sell bicycles or related equipment.
Respondent argues that offensive collateral estoppel limits
Complainant’s rights in TREK to “bicycle sales or equipment,” and therefore
that its current use cannot be deemed to be in bad faith. Respondent also avers that the content of its
site does not refer to Trek (the bicycle company) because it uses the term
“trek” according to its ordinary meaning in connection with travel and
journeying.
C. Additional Submissions
1. Complainant’s Reply
In its Reply, Complainant asserts that Paragraph 4(b)(iv) of the
Policy “does not require that the domain
name was actually registered with bad faith intent to trade off of the goodwill
in Complainant’s trade name and mark when it was originally applied for registration
in 1994; it requires only that the current use of the [D]omain [N]ame is such
that a likelihood of confusion with Complainant’s name and mark is
caused.”
Additionally, Complainant contends that Respondent initially registered
the Domain Name in bad faith “because [it was] initially trying to trade off of
the goodwill of Paramount. . . .”
Lastly, Complainant claims the doctrine of collateral estoppel is
inappropriate and unavailing. First, the
ruling in the Thane International
“addressed the scope of fame Complainant had established in its mark [TREK] as
of 1999.” Fame is “ever evolving and
cannot be limited to the snap shot in time that was represented in the Thane International decision.” Even if Thane
International is limiting, Complainant argues its rights in TREK would
still require this Panel to find bad faith use.
2. Respondent’s Sur-Reply
Respondent
states it has a continuing relationship with Paramount Studios. In addition, Respondent claims it “continues
to maintain a ‘private website’ at that address. If contacted by a registered IP address the
[<trek.com>] [D]omain [N]ame will respond with a password screen. . .
.” Respondent further asserts that it
uses the domain name for e-mail and FTP in connection with its business.
FINDINGS
The Panel will consider the additional
submissions even though Complainant’s submission was technically defective due
to untimely fee payment. Other than this
defect, the submission was timely and complied with the Supplemental
Rules. In the interests of reaching the
merits of the dispute, this Panel will not exclude consideration of the
otherwise proper submissions due to this minor and rapidly-remedied defect.
The Panel finds that Complainant has provided
sufficient evidence to establish that the Domain Name is identical or
confusingly similar to Complainant’s registered marks.
The Panel finds that Respondent fails to
rebut Complainant’s showing that Respondent lacked rights or a legitimate
interest in the Domain Name.
Additionally, the Panel finds that
Complainant has failed to establish that Respondent registered the Domain Name
in bad faith, but has established that the Respondent’s current use of the
Domain Name in bad faith.
Because Complainant needs to prove both
bad-faith registration and bad-faith use, the Panel denies Complainant’s
request for transfer.
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. Procedural Issue
Complainant’s Reply is an additional submission. Complainant timely filed its additional
submission on December 27, 2006; however, the additional submission is
deficient pursuant to Supplemental Rule 7 because the Forum received the filing
fee late. Respondent availed itself of the opportunity to file an additional
submission in response to Complainant’s additional submission. Accordingly, the Panel does not believe
Respondent would be harmed as a result of considering Complainant’s additional
submission. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (considering Complainant’s additional
submission that was deficient under Supplemental Rule 7 even when Respondent
did not submit a further additional submission).
Furthermore, considering the deficient additional
submission is consistent with the policy of ensuring substantive consideration
of the parties’ arguments and evidence. See Strum v.
Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“ruling a
Response inadmissible because of formal deficiencies would be an extreme remedy
not consistent with the basic principles of due process”); Buy Owner International, Inc. v. Frank, D2002-0407 (WIPO July 23, 2002) (considering
the substance of a one-page e-mail sent to the Forum as a Response, even though
e-mail failed to comport with Paragraph 5(a) of the Rules). Accordingly, the Panel will consider
Complainant’s deficient additional submission.
One member of the Panel would decline to consider both
of the additional submissions, on the basis that they consist primarily of
material that is or could have been included in the parties’ initial
submissions.
B. UDRP Claim
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.
The Panel finds that the Domain Name is
identical to TREK. Indeed, Respondent
“acknowledges that the [D]omain [N]ame [<trek.com>] and the registered
trademark [TREK] are the same.”
The Panel further finds that Complainant has
rights in the TREK mark. A “successful
trademark registration with the USPTO creates a presumption of rights in a
mark.” See U.S. Postal Serv. v. Stine, FA 671209 (Nat. Arb. Forum May 19,
2006) (citing Am. Online, Inc. v. Thomas
P. Culver Enters., D2001-0564 (WIPO June 18, 2001)); Innomed Tech., Inc. v. DRP Servs., FA 221117 (Nat Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant’s rights in a mark.”).
Respondent’s arguments that Complainant does
not have rights to TREK fail to rebut the presumption of rights that go with a
registered mark. Respondent’s citation
to other registered TREK marks that are used concurrently in other markets does
not undermine Complainant’s right to the mark TREK at least in connection with
bicycles and bicycle-related products and services. See
Speed Channel, Inc. v. This Domain Is Not For Sale, FA 566696 (Nat. Arb.
Forum Nov. 28, 2005) (holding that Respondent could not claim that a registered
mark for use in television services was diluted by registered marks that were
used concurrently in different markets).
Even if the ruling in Thane International could limit Complainant’s rights in TREK to
bicycle and bicycle-related equipment, this limitation would still confirm
Complainant has rights in TREK. See Thane Int’l, 1999 WL 33268644, *9
(holding “the [TREK] mark was weak when applied to other non-bicycle-related
equipment” within an analysis of the “strength of mark” prong in the Ninth
Circuit’s multi-factor test for determining a likelihood of confusion).
In addition, Respondent bolsters the
proposition that Complainant has rights to TREK through its rationale for why
“trek” is “hardly distinctive” when applied to bicycles. If the Panel accepts Respondent’s contention
that the word “trek” has nothing to do with bicycles, then under U.S. trademark
principles the mark is actually stronger then it would be if the mark was merely
descriptive of bicycles. See, e.g. 2 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 11:14 (2006) (“McCarthy”) (“Some courts
flatly state that arbitrary and fanciful marks are automatically ‘strong’ marks
and therefore will be given a wide scope of protection.”); McCarthy 11:11 (“By
the very nature of the term ‘arbitrary’ it is assumed that the word used as a
mark is in use in the language but has no descriptive connotation with this
product.”).
Complainant does not specifically claim or
describe how the Domain Name is also identical or confusingly similar to TREK
TRAVEL. Paragraph 3(ix) of the Rules
requires Complainant to describe “(1) the manner in which the domain name(s)
is/are identical or confusingly similar to a trademark or service mark in which
the Complainant has rights.” Complainant
has not satisfied Paragraph 3(ix)’s requirement to specifically identify how <trek.com>
is confusingly similar to TREK TRAVEL.
But Complainant does identify its rights to TREK TRAVEL and asserts that
Respondent’s practice of linking to competing cycle vacation companies trades
off of Complainant’s goodwill. The Panel
finds that the Domain Name is confusingly similar to Complainant’s registered
TREK TRAVEL mark. The Domain Name
incorporates the entirety of Complainant’s mark “TREK” and the dominant portion
of the mark TREK TRAVEL. Individuals
looking for information on Trek’s cycling vacation company would likely be
confused by the use of <trek.com> for a purpose unconnected to
Trek’s products and services. See Phat Fashions, LLC v. Kevin Ross, FA
104983 (Nat. Arb. Forum Apr. 9, 2002) (holding that <phattyz.com> was
confusingly similar to Complaint’s registered family of marks, including PHAT,
PHAT THREADS, PHAT FARMS and BABY PHAT, because the domain name incorporated
PHAT). As stated above, the evidence
that another company concurrently uses TREK TOURS LTD in one market does not
undermine the presumption that Complaint has rights to TREK TRAVEL in a
different market. See Speed Channel, Inc., FA 566696.
While it is true that “trek” is a dictionary
word, and could potentially be used in a generic sense, Respondent does not
claim to have registered the mark in connection with trekking or for some other
purpose relating to the generic meaning of the word. Rather, it claims to have registered the mark
in connection with a possible use relating to the STAR TREK franchise owned by
Paramount.
Respondent provides evidence that in the
mid-1990s it entered into discussions with Paramount regarding using the Domain
Name to promote both Star Trek and Respondent’s own special effects work. A letter from Paramount indicates that it was
interested in the arrangement. But
Respondent admits that the venture never took off. Respondent never offered STAR TREK related
goods and services under <trek.com> to the public. Respondent’s initial plans for the
public promotional site were legitimate only in connection with Paramount’s
rights and good will in STAR TREK, or if they constituted a fair use of that
mark. Respondent’s allegation that it has a continuing relationship with
Paramount Studios is unsubstantiated by any evidence. Moreover, Respondent does not define the
specific nature of the relationship, let alone establish that it ever acquired
any rights in or to the STAR TREK mark.
Also, Respondent fails to show that it is currently preparing to use the
Domain Name in connection with a bona
fide offering of goods or services.
Accordingly, the Panel is not persuaded that Respondent ever used the
Domain Name or is now preparing to use the Domain Name in connection with a bona fide offering of goods and services
which could support a legitimate interest in the Domain Name. See
Policy ¶ 4(c)(i).
Currently, Respondent is using the Domain
Name in a way that cannot, as matter of law, support a claim of legitimate
rights or interests. In April 2006,
Respondent began posting links under the Domain Name that advertise and resolve
to bicycle vacation companies, in direct competition with Complainant. Respondent’s use of the Domain Name to
“misdirect Complainant’s customers and potential customers by providing links
to third party websites for commercial gain” is not a bona fide use, a legitimate noncommercial use, or a fair use. Bank of
Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (citing WeddingChannel.com Inc. v. Vasiliev, FA
156716 (Nat. Arb. Forum June 12, 2003)); Valiant
Trust Co. v. Valiant Trust, FA 844658 (Nat. Arb. Forum Jan. 11, 2007) (“The
Panel finds Respondent’s attempt to pass itself off as Complainant’s business
is neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii).”).
Respondent further admits that it “never
intended to be known by ‘Trek’” and presents no arguments or evidence to rebut
Complainant’s assertion that Respondent is not commonly know by the Domain
Name. The Panel does not find that the Respondent
has any rights to the Domain Name through Respondent’s own name. See
Policy ¶ 4(c)(ii).
For all of these reasons, the Panel rules
that Respondent does not have a legitimate interest in the Domain Name.
The plain language of the Policy requires
both bad-faith registration and bad-faith use of the Domain Name to meet the
third element of the test. See Guildline Instruments Ltd. v. Anderson,
D2006-0157 (WIPO Apr. 12, 2006) (explicitly requiring that the Respondent both
registered and used the domain name in bad faith); e-Duction, Inc. v. Zuccarini,
D2000-1369 (WIPO Feb. 5, 2001) (“This case thus presents the relatively novel
question of whether bad faith use alone, without bad faith registration, is
sufficient to justify transfer . . . . because the Policy requires both bad
faith use and bad faith registration, the Panel . . . must deny the
Complaint.”).
Complainant claims that Respondent registered
the Domain Name in a bad faith attempt to trade off of the goodwill of
Paramount. But Respondent’s evidence
that Paramount and Respondent discussed the possibility of a promotional STAR
TREK website at <trek.com> belie Complainant’s bare assertions of bad
faith registration. It is not clear if
Respondent truly registered the Domain Name in good faith. But Complainant fails to prove that
Respondent registered the Domain Name in bad faith. Under the Policy, bad faith use without bad
faith registration is insufficient to satisfy the third element of Paragraph
4(a). See Guildline Instruments
Ltd., D2006-0157 (denying
transfer because Complainant failed to allege bad faith registration and the
Record contained no evidence of bad faith registration or bad faith
acquisition); e-Duction, Inc., D2000-1367 (denying transfer
even though Complainant proved bad faith use because Complainant could not
prove bad faith registration); Arena
Football League, LLC v. Armand F. Lange & Assoc., FA 128791 (Dec. 26,
2002) (denying transfer because Complainant failed to prove bad faith
registration even in view of evidence that the Respondent renewed the Domain
Name in bad faith).
Because the Panel finds Complainant failed to
show bad faith registration, it need not rule on the issue of whether
Respondent uses the Domain Name in bad faith.
As discussed above, however, the Panel has already noted that
Respondent’s use of pay-per-click advertising under an identical and
confusingly similar Domain Name would likely be deemed bad faith use, because
those advertisements offer products and services that compete directly with
Complainant’s business. See LD Product, Inc. v. Kelly, FA 831318
(Nat. Arb. Forum Dec. 12, 2006) (“Respondent’s use of an identical domain name
to advertise competing products and services constitutes bad faith use.”); Staples, Inc. v. Morgan, D2004-0537
(WIPO Sept. 20, 2004) (“[T]he Panel is persuaded that Respondent’s registration
and use of the Disputed Domain Name for re-directing Internet users,
particularly customers and potential customers of Complainants, from
Complainants’ website to the website of . . . a company which directly competes
with Complainants, constitutes bad faith and use.”).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Michael A. Albert (chair), the Honorable
James A. Carmody, and David E. Sorkin, Panelists
Dated: January 19, 2007
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