Mariah Boats, Inc. v Shoreline Marina LLC

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

Mariah Boats, Inc.,

Complainant.

vs.

Shoreline Marina, LLC

Respondent.

DECISION
Forum File No. FA0004000094392

The Arbitrator's Oath of impartiality and independence is already on file with the National Arbitration Forum ("NAF"). On April 27, 2000, NAF contacted the undersigned to solicit interest in serving as an Arbitrator for this Administrative Proceeding. After confirming that neither the Undersigned nor the Arbitrator's law firm had a conflict in this matter, the Undersigned accepted the appointment on April 28, 2000. NAF transmitted the case file to this Panel for decision on April 28, 2000, by e-mail and Priority Mail.

Procedural Findings

Domain Name: mariahboats.net

Domain Name Registrar: Network Solutions, Inc., Herndon, Virginia

Domain Name Registrant: Shoreline Marina LLC;

Administrative Contact: Mark Detournillon

Date of Domain Name Registration: July 26, 1999

Date Complaint Filed: April 3, 2000

Date Response to Complaint Filed: April 24, 2000; Response was timely filed

Date Complainant's Reply Filed: April 28, 2000

1. On March 31, 2000, Complainant submitted a Complaint to NAF pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint and exhibits were received by NAF on April 3, 2000. After reviewing the Complaint, and determining the document to be in administrative compliance, NAF formally commenced the captioned Administrative Proceeding on April 6, 2000, and the Registrar was formally notified thereof.

2. On April 6, 2000, NAF forwarded its Complaint Notification Instructions and the Complaint to Respondent, notifying Respondent that an Administrative Proceeding had been filed against it with respect to the subject domain name. NAF required Respondent to submit its Response to the Complaint by no later than April 26, 2000.

3. On April 7, 2000, the Registrar, Network Solutions, Inc., ("NSI"), confirmed by e-mail that (i) it received the Commencement of Administrative Proceeding from NAF, (ii) it received a copy of the Complaint from the Complainant; (iii) NSI is the Registrar for the domain name at issue; and that (iv) Respondent, Shoreline Marina LLC, is the current Registrant of the domain name.

4. Respondent's Response and the Declaration of Mark Detournillon were received by NAF on April 24, 2000. Respondent's papers are silent regarding its election to proceed before a single arbitrator or a panel of three arbitrators. UDRP, Rule 5(b)(iv). On April 27, 2000, Complainant submitted a Reply to NAF by FedEx Courier.

5. For ease of reference, the Panel shall use the following abbreviations within its decision: "Cmpl." shall refer to Complainant's Complaint; "Resp." shall refer to the Response of Shoreline Marina, L.L.C.; "Reply" shall refer to the Reply of Mariah Boats, Inc.; "Schoen Decl." shall refer to the Declaration of Paul G. Schoen, Esquire, Complainant's counsel, dated March 29, 2000; "Detournillon Decl." shall refer to the Declaration of Respondent's member and administrative contact, Mr. Mark Detournillon, dated April 21, 2000; and "Exh." shall refer to one or more of the Exhibits attached to Complainant's various submissions. No exhibits appear to have been submitted with Shoreline Marina's Response.

Factual Findings

The Parties

6. The Complainant is Mariah Boats, Inc. ("Mariah Boats"), an Illinois corporation located in Benton, Illinois. The Respondent is Shoreline Marina, LLC ("Shoreline"), a Virginia limited liability company located in Moneta, Virginia.

The Domain Name and Registrar

7. The domain name is MARIAHBOATS.NET. The Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.

The Parties' Contentions

Complainant

8. Mariah Boats is the owner of U.S. Trademark Registration Nos. 1,636,829 for MARIAH (issued March 5, 1991; first use May 26, 1989) for "gasoline powered pleasure boats"; 1,752,425 for MARIAH (issued February 16, 1993; first use September 27, 1991) for "power boats"; 1,755,183 for MARIAH VIRTUS INEGRITAS & Design (issued March 2, 1993; first use February 11, 1992) for "power boats"; 2,070,810 for MARIAH VIRTUS INEGRITAS & Design (issued June 10, 1997; first use December 31, 1996) for "financing of the purchase of boats, trailers and boat replacement parts"; 2,070,815 for MARIAH (Stylized) (issued June 10, 1997; first use December 31, 1996) for "financing of the purchase of boats, trailers and boat replacement parts"; 2,092,040 for MARIAH FINANCIAL SERVICES (issued August 26, 1997; first use December 31, 1996) for "financing of the purchase of boats, trailers and boat replacement parts"; 2,159,047 for MARIAH BOATS (issued May 19, 1998; first use July 1, 1995) for "short sleeve shirts, long sleeve shirts, jackets, sweaters, sweatshirts and hats"; 2,100,732 for MARIAH VIRTUS INEGRITAS & Design (registered September 30, 1997; first use July 15, 1994) for "clothing, namely, shirts, jackets and caps"; and 2,085,301 for MARIAH (Stylized) (issued August 5, 1997; first use July 15, 1994) for "clothing, namely t-shirts, polo shirts, long sleeve sport shirts, clipper jackets, caps and sweaters". (Cmpl., collective Exh. 1).

9. Mariah Boats is a manufacturer of power and pleasure craft boats, and component parts therefor. (Cmpl., p. 2). Mariah Boats claims common law use of the names "Mariah" and "Mariah Boats" in connection with its business. (Cmpl., p. 3). Mariah Boats has submitted no evidentiary support for these contentions.

10. However, the panel was able to access Mariah Boats' web site, located at the URL http://www.mariahboats.com. Ownership of the MARIAHBOATS.COM domain name was verified from NSI's WhoIs lookup site. Throughout the mariahboats.com web site, there are several references to "Mariah" and "Mariah Boats" in connection with Mariah Boats' business.

11. In March, 2000, Mariah Boats discovered that Shoreline was the registrant for the domain name MARIAHBOATS.NET. Shoreline registered this domain name with NSI on July 26, 1999 (Cmpl., Exh. 2). On March 15, 2000, Mariah Boats' counsel called and spoke with Shoreline's Mark Detournillon. After advising Mr. Detournillon of Mariah Boats' trademark rights, Mariah Boats' counsel made several offers on his client's behalf to acquire the MARIAHBOATS.NET domain name from Shoreline: (i) in exchange for a reimbursement of Shoreline's out-of-pocket costs, and (ii) in exchange for granting Shoreline a license in and to the MARIAH BOATS trademark and reimbursing Shoreline's out-of- pocket costs. Both offers were refused. (Cmpl., pp. 3-4; Schoen Decl., pars. 2-6).

12. In response, Mr. Detournillon is alleged to have requested a payment of $25,000 in exchange for the transfer of the MARIAHBOATS.NET domain name to Mariah Boats. Mr. Detournillon allegedly stated during the parties' conversation that he had engaged in similar transactions with respect to other domain names, such as those incorporating the name "Martha Stewart" and another widely recognized name. (Schoen Decl., pars. 7-8).

13. Mariah Boats claims that the MARIAHBOATS.NET domain name is substantially identical to its MARIAH BOATS registered mark and business name used at common law. (Cmpl., p. 4). Respondent, purportedly a dealer/distributor of Mariah Boats' goods and services, is alleged to be in the business of selling boats and boat related goods, and that Shoreline's use of the MARIAHBOATS.NET domain name for this purpose would confuse consumers as to the source of Shoreline's goods and services. (Cmpl., pp. 4-5).

14. Mariah Boats claims that Shoreline's demand of $25,000 for transfer of the MARIAHBOATS.NET domain name shows that Shoreline is not making a legitimate noncommercial or fair use of the domain name. Mariah Boats also asserts that Shoreline's alleged similar conduct with respect to other domain names, such as those incorporating the name "Martha Stewart" and another widely recognized name, evinces a pattern of improper conduct. (Cmpl., pp. 5-6).

15. Mariah Boats asserts that Shoreline is not commonly known by the MARIAHBOATS.NET domain name, and that Shoreline intends to illicitly profit from the sale of the domain name to Mariah Boats for a large sum. (Cmpl., p. 5).

16. Mariah Boats requests that the MARIAHBOATS.NET domain name be transferred to it under the UDRP.

Respondent

17. Shoreline sells retail boats and boating equipment. Shoreline confirmed that it is a Mariah Boats dealer, and has been for some time. (Resp., p. 1).

18. Shoreline concedes Mariah Boats' ownership of its various MARIAH and MARIAH BOATS registered trademarks, but claims that Mariah Boats' ownership of these marks is not relevant. (Resp., p. 1).

19. Shoreline claims that a number of dealers use the names "Mariah Boats" or "Mariah", but Shoreline submitted no proof of this third-party use. Shoreline claims a legitimate interest in the MARIAHBOATS.NET domain name as a Mariah Boats dealer. (Resp., p. 2).

20. Shoreline's Mr. Detournillon essentially concedes much of the conversation he had with Mariah Boats' counsel. Specifically, Mr. Detournillon acknowledges that: (i) Mariah Boats' counsel offered to reimburse Shoreline's out-of-pocket expenses in exchange for a transfer of the MARIAHBOATS.NET domain name, which offer was rejected; (ii) $25,000 was demanded for a transfer of the domain name; and that (iii) Shoreline would transfer the domain name to Mariah Boats if they would take back all of the MARIAH boats which Shoreline had at the time, and if Shoreline would be reimbursed for its costs. (Detournillon Decl., par. 5).

21. Mr. Detournillon claims that Shoreline intended to use the MARIAHBOATS.NET domain name to assist in the sale of MARIAH boats. (Detournillon Decl., par. 6).

Complainant's Reply

22. Mariah Boats' responds that Shoreline's behavior "is a classic case of cybersquatting," and repeats most of the arguments originally made in Mariah Boats' Complaint. (Reply, pp. 1-3).

23. One important assertion in Mariah Boats' Reply is that Shoreline's web site, located at the URL http://www.mariahboats.net, advertises for sale not only the products and services of Mariah Boats, but competing products and services of other boat and boat parts manufacturers. (Reply, pp. 1-2).

24. The panel's review of the www.mariahboats.net web site bolster's Mariah Boats' contentions. For example, on Shoreline's web site, not only are Mariah Boats' products promoted for sale but so are the products of Donzi, Larson, Smokecraft, Mercury, Volvo Penta, Yamaha, and Mercruiser. Particularly troubling is Shoreline's web page located at the URL http://www.mariahboats.net/mariahintr0.htm. As this web page within Shoreline's web site is written, it leads the reader to believe not only that Shoreline is an authorized Mariah dealer, but that Shoreline is Mariah Boats itself. Within the context of Shoreline's overall web site, consumer confusion as to the ultimate source or origin of Mariah Boats' products would be likely and understandable.

25. Further, as emphasized by Mariah Boats in its Reply (p. 3), neither Mr. Detournillon nor Shoreline denied Mr. Detournillon's alleged prior conduct with respect to the arbitrage of other domain names, such as those incorporating the name "Martha Stewart" and another widely recognized name.

Conclusions

Applicable Policy Provisions

26. The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:

1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. That Respondent has no rights or legitimate interests in respect of the domain name; and

3. That the domain name has been registered and is being used in bad faith.

UDRP Policy, Section 4.a.

27. It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, WIPO Dispute No. D99- 0001; Robert Ellenbogen v. Mike Pearson, WIPO Dispute No. D00-0001.

28. However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(a) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(b) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(d) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

UDRP Policy, Sections 4(b)(ii)-(iv).

29. These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

Opinion of the Panel

30. This Panel finds that Mariah Boats is entitled to the relief sought, namely, transfer of the MARIAHBOATS.NET domain name. First, Mariah Boats has proved that it owns registered marks comprising the names MARIAH or MARIAH BOATS, rights that Shoreline has conceded. Second, Mariah Boats has rights in trademarks legally identical and/or confusingly similar to the domain name in dispute.

31. This Panel also finds that Shoreline has no rights or legitimate interests in respect of the domain name. Shoreline used the names MARIAH or MARIAH BOATS by permission and apparent license from Mariah Boats. "A licensee's use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself." 2 McCarthy, T.J., McCarthy on Trademarks and Unfair Competition, Sec. 18:52 (4th Ed. 2000).

32. Mariah Boats' actions in bringing this administrative proceeding demonstrates that whatever authority or license it may have granted to Shoreline to use the MARIAH and MARIAH BOATS marks on the Internet (if any), that authority or license has ended. "Once a license has expired, use of the formerly licensed trademark constitutes infringement. To say that the licensee has acquired rights that survive the legal termination of that license, destroys the entire concept of a license." United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 143 (3rd Cir. 1981).

33. The panel also finds that Shoreline's registration and use of the MARIAHBOATS.NET domain name is likely to cause confusion with Mariah Boats' MARIAH and MARIAH BOATS marks, under the factors stated in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).

34. The evidence reviewed by the Panel shows that Mariah Boats has rights in its registered and common law MARIAH and MARIAH BOATS marks. The panel considers Mariah Boats' various marks and the MARIAHBOATS.NET domain name to be legally identical and/or confusingly similar in appearance, sound, and commercial impression.

35. Shoreline presently is a dealer of Mariah Boats' products. To the extent that Shoreline sells competitive products of other manufacturers, the parties to this proceeding are direct competitors in the same industry, and from all appearances they promote and sell their boating products and services to the same general class of consumers, boating enthusiasts. While there has been no showing of actual confusion, the panel does not consider this decisive when the standard is "likelihood" of confusion. Shoreline's registration and use of the MARIAHBOATS.NET domain name for the purpose of selling not only Mariah Boats' products, but those of Mariah Boats' competitors as well, is disruptive to Mariah Boats' business.

36. Shoreline asserts that it registered and is using the MARIAHBOATS.NET domain name in good faith. The Panel questions these assertions, given Mr. Detournillon's demand for $25,000 and/or the return of expensive boating merchandise in exchange for Shoreline's transfer of the domain name.

37. In the face of allegations that Mr. Detournillon has engaged in similar conduct with respect to other domain names comprising the well known names or marks of others, his and Shoreline's silence evinces a pattern of improper conduct. Internal pages within Shoreline's web site give the impression that it is not just an authorized dealer of Mariah Boats, but that Shoreline is Mariah Boats itself.

38. For purposes of the Panel's decision, it presumes that the parties' products and services are of equal quality, and that the purchasers and consumers of the parties' products are sophisticated (as the purchases of power and pleasure craft boats constitute substantial monetary amounts that are not done without considerable thought and care). These facts do not detract from the Panel's ultimate finding that Shoreline has registered and used the MARIAHBOATS.NET domain name in bad faith, for the purposes of creating a likelihood of confusion as to the source of Mariah Boats' MARIAH and MARIAH BOATS marks and products.

39. Given the above facts, Shoreline cannot be said to be using the MARIAHBOATS.NET domain name for the bona fide offering for sale of goods and services; Shoreline is not commonly known by the MARIAH BOATS name; and Shoreline cannot be said to be making a legitimate noncommercial or fair use of the domain name, when Shoreline's use thereof is likely to misleadingly divert customers to its web site.

Decision

40. For the reasons set forth above, this Panel orders that the MARIAHBOATS.NET domain name be transferred to the Complainant.

Jonathan Hudis

Sole Panelist

Date: May 5, 2000