DECISION

 

Cumbres & Toltec Scenic Railroad Commission v. JLW Enterprises, Inc. aka Jay Wimer

Claim Number: FA0108000099609

 

PARTIES

The Complainant is Cumbres & Toltec Scenic Railroad Commission, Antonio, CO, USA (“Complainant”) represented by Rio Grande Railway Preservation Corp.  The Respondent is JLW Enterprises, Inc. aka Jay Wimer, Charlotte, NC, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is “Cumbresandtoltec.org” registered with Network Solutions, Inc.  

 

PANEL

The undersigned 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.

 

Honorable Anthony J. Mercorella (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”)

on August 30, 2001.

 

Network Solutions, Inc. confirmed to the Forum that the domain name  "Cumbresandtoltec.org " 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 September 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2001, 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.

 

An untimely response from Respondent was received on October 3, 2001.

 

On October 12, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Anthony J. Mercorella (Ret.) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name <cumbresandtoltec.org> be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The subject of this complaint is the domain name <cumbresandtoltec.org>.

 

The Complainant contends that the domain name at issue here, <cumbresandtoltec.org>, is confusingly similar to several “Cumbres & Toltec” registered marks and domain names including <cumbrestoltec.org>, <cumbresandtoltec.net>, <cumbrestoltec.com>, <cumbrestoltec.net>, <cumbres-toltec.com>, <cumbres-toltec.net>, and <cumbres-toltec.org>.  The domain name incorporates the distinctive portions of Complainant’s word and design marks “cumbres”and “toltec” while adding only the generic terms “and” and “.org” to the mark.  Moreover, since design marks cannot be reproduced in a domain name, it is appropriate to consider only the similarity of the dominant textual element of the marks to the disputed domain name.

 

According to the Complainant, Respondent has never operated a business or been known under the name “Cumbres & Toltec” and has never been affiliated with the Cumbres & Toltec Scenic Railroad Commission or any operator of the Cumbres & Toltec Scenic Railroad.  Complainant stated that from March 2001, through June 2001, 941 visitors looking for Complainant’s site were mistakenly directed to Respondent’s site.

 

The Complainant further contends that the Respondent in this case, JLW Enterprises, Inc., aka Jay Wimer, cannot generate any legitimate interest in the <cumbresandtoltec.org> domain name because a web site of any nature supported by paid sponsorships is not a legitimate non-commercial use of the domain name.  Moreover, it is contended that Respondent’s web-site merely reuses content identical to several other web-sites run by him.  Thus, the Respondent has no real legitimate use of the domain name.  

 

In April of 2000, Respondent requested permission to place a web cam on Complainant’s property, and was turned down.  This request was renewed in February of 2001, and rejected a second time.  In apparent retaliation, Respondent notified the Complainant that it would no longer be allowed “temporary use” of <cumbresandtoltec.org> and created a new web site at that domain name. (Complainant had been using the name from 1999 to 2001 with Respondent’s permission)

 

B. Respondent

The Respondent argues that the Complainant does not own the ‘property’, the name at issue, or the contested logos.  Rather, it is alleged that the State of Colorado and New Mexico own the ‘property’, while the Complainant is merely a bi-state commission charged with administering the property and promoting economic development in the areas served by the railroad.  The Respondent further argues that the contested name has been in the public domain for over 30 years, and thus, Complainant’s claims of ownership are unenforceable.

 

Respondent denies Complainant’s claims that it merely runs ‘symbiotic commercial sites’, arguing that having a few paid sponsors is not evidence of commercial activity.    The Respondent does admit, however, selling items such as T-shirts and hats in an attempt to defray expenses of one of his web-sites.  Moreover, the Respondent has admitted to soliciting funds for the restoration of locomotive 483, but points out that all of the money raised goes directly into a bank account held by the Complainant.

 

Finally the Respondent claims that he has not committed a fraud by registering the domain to JLW Enterprises, Inc.

 

FINDINGS

Pursuant to ICANN’s Uniform Domain Name Dispute Resolution Policy, the Respondent’s Response to the Complaint herein could have properly been disregarded, as it was untimely.  Nevertheless, the Response was considered by this Panel.

 

It is my finding that the domain name registered by the Respondent is confusingly similar to the domain names held by the Complainant, that the Respondent has no legitimate interest with respect to the domain name and that the domain name has been registered and used in bad faith.

 

Accordingly, the Complainant’s request to have the domain name, <cumbresandtoltec.org> transferred from the Respondent to the Complainant is granted.

 

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 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.

 

Identical and/or Confusingly Similar

The Complainant holds trademark registrations for “Cumbres & Toltec” and the following domain names: <cumbrestoltec.org>, <cumbresandtoltec.net>, <cumbrestoltec.com>, <cumbrestoltec.net>, <cumbres-toltec.com>, <cumbres-toltec.net>, and <cumbres-toltec.org>,while the Respondent has registered <cumbresandtoltec.org>.  The fact that the Respondent has inserted the words “and” as well as “.org” to Complainant’s marks is not sufficient to avoid a finding that the several marks are confusingly similar.  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).

 

In the matter at bar, it is beyond refute that Respondent’s domain name is virtually identical, and thus confusingly similar to Complainant’s trademarks.  Any superficial differences between the domain name and the Complainant’s trademarks are de minimis and of no legal consequence.  Here, the addition of generic words to established trademarks do not defeat Complainant’s rights in the marks. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000); Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000); Travel In a Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9, 2001); Cable News Network LP, LLLP v. Money Funding, FA 96818 (Nat. Arb. Forum Apr. 16, 2001).

 

Rights or Legitimate Interests

Respondent’s creation of the web-site <cumbresandtoltec.org> appears to be nothing more than a retaliatory tactic, whereby identical content already in existence on Respondent’s other web-sites was reproduced.  Respondent cannot claim a legitimate use of the <cumbresandtoltec.org> domain name by creating a web-site simply featuring reuse of content and links to internal pages in Respondent’s other identical sites.  See Gorstew Limited and Unique Vacations, Inc. v. SSB Trading Company, Inc., FA 96972 (Nat. Arb. Forum May 8, 2001); Wellness International Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (when respondent had not used the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use there is no right or legitimate interest in the domain name).

 

In addition, Respondent’s claims that the contested name has been in the public domain for over 30 years is rejected as Respondent has provided no proof, other than unsubstantiated allegations, in support of his position.

 

Registration and Use in Bad Faith

Although the Respondent registered the domain name <cumbresandtoltec.org> in November of 1999, the domain name was not formally used by Respondent until February of 2001.  Up until February of 2001, the Complainant had been using the domain name with Respondent’s permission.  In fact, the Respondent agreed to transfer the registration of the domain name to the Complainant in 1999.  This transfer, however,  never occurred. 

 

It is clear that Respondent created his web-site in retaliation to the Complainant’s denials of his requests to place a web cam on Complainant’s property.  It was only after these denials that Respondent notified the Complainant that “temporary use” of the domain name would no longer be granted and the Respondent’s web-site was created.  Had Respondent actually intended to use the domain name himself, he (i) never would have allowed Complainant to temporarily use the name, and (ii) would have set up his own web-site prior to Complainant’s denials of his requests to place the web cam.

See VARTEC TELECOM, INC. v. Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where the Respondent registered the domain in order to sell it “for far more than he paid for it” by sending a general email to the Complainant offering the domain name for sale); Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).  See Travel In a Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9, 2001) (demand for payment deemed evidence of bad faith where respondent has made no other use of domain name); Stussy, Inc. v. Valhalla Promotions aka VP, FA 96661 (Nat. Arb. Forum April 2, 2001) (Respondent’s attempt to sell domain name to complainant for excess of out-of-pocket expenses shows bad faith on part of Respondent).

 

In addition, Respondent has not disputed that at the time he re-registered the <cumbresandtotltec.org> domain name he had actual knowledge of Complainant’s trademarks.  Such knowledge is a clear indicia of bad faith. See Fingerhut Corporation v. Joseph Flynn, FA 96939 (Nat. Arb. Forum Apr. 18, 2001); Ambisco, Inc. v. Tradewear Corp., FA 96820 (Nat. Arb. Forum Apr. 18, 2001) (registering a domain name with actual notice of complainant’s business, which offers similar goods and services, shows bad faith).

 

Considering the totality of the aforementioned facts and circumstances, Respondent has acted in bad faith and it appears that he has no intention to use the domain name except for the purposes of retaliating against Complainant for its refusal to allow Respondent to place a web cam on its property. 

 

DECISION

It is the decision of this panel that the domain name <cumbresandtotlec.org> be transferred from the Respondent to the Complainant.

 

 

Honorable Anthony J. Mercorella (Ret.), Panelist

 

Dated: October 31, 2001