CNRV, Inc. v. Vertical Axis
Inc.
Claim Number: FA0912001300901
PARTIES
Complainant is CNRV, Inc. (“Complainant”), represented by John
W. Dozier, of Dozier Internet Law,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adventurerv.com>, registered with Nameview,
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 16, 2010. With its Complaint, Complainant also chose to
proceed entirely electronically under the new Rules for Uniform Domain Name
Dispute Resolution Policy (“Rules”) and the Forum’s new Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting
an “opt-in” form available on the Forum’s website.
On March 2, 2010, Nameview, Inc. confirmed by e-mail to the
National Arbitration Forum that the <adventurerv.com> domain name (“the Domain Name”) is registered with Nameview, Inc. and that the Respondent is the
current registrant. Nameview, Inc. has verified that Respondent is
bound by the Nameview, 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 March 8, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of March 29, 2010 by which Respondent could file
a Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to postmaster@adventurerv.com by
e-mail. Also on March 8, 2010, the Written Notice of the Complaint, notifying
Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to
all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A timely Response was received and determined to be complete on March 26, 2010.
Respondent chose to opt-in to the electronic process with its submission
and submitted its Response in electronic copy only.
Complainant’s Additional Submission was received on March 31, 2010 and
was deemed to be in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on April 5, 2010 and
was deemed to be in compliance with Supplemental Rule 7.
On April 8, 2010, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
On April 14, 2010 the Panel, by procedural order,
requested Complainant to provide a clearly legible set of the exhibits to the
Complaint by April 19, 2010 and extended the time for its decision until
further order.
On April 19, 2010, Complainant complied with the
Procedural Order and the time for the Panel’s decision was extended to May 3,
2010.
RELIEF SOUGHT
Complainant requests that the Domain
Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant says as
follows:
It was incorporated in
Respondent registered the Domain Name on or about December 14, 2006. It resolves to a website with more than 20 links to
competing sellers of Recreational Vehicles and parts.
The Domain Name is
identical or confusingly similar to Complainant’s trademark and Respondent has
no rights or legitimate interest in the Domain Name, which was registered and
is being used in bad faith.
As to legitimacy, the
Domain Name does not reflect any name by which Respondent is commonly known or
in which Respondent has any rights. At no time did Complainant authorize or
consent to Respondent’s use of the trademark or the registration of the Domain
Name. Respondent’s use of the Domain Name is not legitimate non-commercial or
fair use under Policy ¶ 4(c)(iii). See Microsoft
Corp. v. Woo Seungchul, FA 601455 (Nat. Arb. Forum Jan. 20, 2006). It is
purely a bad faith tactic to attract Internet users to Respondent’s website by
creating a likelihood of confusion with Complainant’s mark.
As to bad faith, the Domain
Name directs online users to sellers in direct competition with
Complainant. Respondent is receiving
commercial gain from this bad faith use. See Old Dublin Road, Inc. v.
Peterboro Basket FA 765695 (Nat. Arb. Forum Sept. 14, 2006). The
registration of the Domain Name makes it clear that the registration and use of
the Domain Name was done intentionally to attract Internet users to
Respondent’s website for commercial gain by creating a likelihood of confusion
with Complainant’s mark.
B. Respondent
Respondent says as follows:
The registration of the
Domain Name was entirely in good faith. Respondent registered the Disputed
Domain in December 2006 after it had expired and been deleted and became
available to be registered again. Respondent correctly believed “adventure RV”
to be a descriptive term that was not subject to exclusive trademark rights. An
“RV” is a recreational vehicle. Adventure means, among other things, an
exciting experience, and it is often associated with exciting travel
experiences. For this reason adventure is often associated with “RV,”
describing the exciting aspect of travelling in a recreational vehicle.
Consumers do not view Complainant as the exclusive, or nearly exclusive, source
associated with Adventure RV. A Google search for “adventure RV,” yielded
18,400 third party results, including at least 10 other third party companies
operating under the name “Adventure RV,” with no connection to Complainant.
Respondent had no knowledge
of Complainant or its [claimed] trademark when it registered the Domain Name.
Because Complainant does not have a registered mark, Respondent cannot be found
to have had constructive notice of Complainant’s alleged mark when it
registered the Domain Name. Accordingly, in order to prove bad faith
registration, Complainant must prove that Respondent had actual notice of
Complainant’s mark, which Respondent adamantly denies.
Respondent’s legitimate
interest is well-established both because the Domain Name is wholly descriptive
and was registered based solely on descriptiveness with no intent of targeting
Complainant’s alleged mark and because Respondent has used the Domain Name in
connection with the bona fide offering of goods and services by displaying
Yahoo auto-generated pay-per-click (PPC) advertisements related to recreational
vehicles.
Further, Respondent
registered over a hundred other similar descriptive domain names, including 75
domain names incorporating “adventure,” such as roadtripadventures.com;
adventuremaps.com; and adventurerentals.com; 63 domain names incorporating “RV”
or “recreational vehicle,” such as recreationalvehicles.com, bigrv.com, discountrvrental.com
and rvparksdirectory.com.
Other panels have expressly
recognized the bona fide nature of this Respondent’s pay-per-click use of
domain names. The Panel should reach the same conclusion here.
Considering Complainant’s
lack of any registered trademark rights; the numerous third party companies
operating under the name “Adventure RV;” and the numerous other descriptive
“RV” and “adventure” domain names registered to Respondent, there is no basis
to infer that Respondent registered the Domain Name to target Complainant, and
overwhelming evidence to the contrary.
Complainant has failed to
establish either that Respondent lacks a legitimate interest in the Domain Name
or that it registered it in bad faith. Complainant’s delay of over 3 years in taking
action raises the inference that Complainant did not truly believe it had a
meritorious case against Respondent. Accordingly, the Complaint should be
denied.
C. Additional Submissions
Complainant says “AdventureRV” has become a distinctive identifier
associated with Complainant and its goods and services in the geographic region
in which Complainant is located, namely the Eastern part of
Complainant says Respondent’s bad faith is shown by its having used a
privacy service to conceal its identity as a serial cybersquatter, and
recklessness or a conscious effort to avoid acquiring knowledge of the
trademark when it registered the Domain Name, having regard to the extensive
number of other uses of this name by other RV dealers in other parts of the
country.
Respondent says Complainant’s mark, if recognized, would be very weak based on the
substantial third party use of the term, including ten other companies
associated with this particular name. Cf. Nexmedia
Pte Ltd. v. Heavy Lifting LLC, et al., D2010-0059 (WIPO Mar. 9, 2010).
Here, because of the
substantial third party use of the descriptive term “adventureRV” Complainant
cannot prove, without direct evidence, that Respondent was “targeting
Complainant.” See Streetprices.com, Inc. v. Nett Corp., FA
280020 (Nat. Arb. Forum Nov. 10, 2009). As the Panel explained there, a
complainant must present evidence that the “Respondent knew of Complainant’s
activities that gave secondary meaning to the trademark…” No such evidence has
been presented here. Accordingly, even if the Panel finds that Complainant has
established “secondary meaning” to Adventure RV on a limited scale, the
substantial third party use of the term is fatal to Complainant on the bad
faith and legitimacy prongs of the Policy.
FINDINGS
Complainant has failed to establish all the
elements entitling it to relief.
DISCUSSION
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.”
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives
the Panel the "sole discretion" as to acceptance and consideration of
additional submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental
Rule 7 and to take into account unsolicited submissions received outside those time limits. See Darice, Inc. v.
On this occasion, because both Parties have submitted
Additional Submissions, the Panel has had regard to both parties’ Additional
Submissions.
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.
Paragraph 4(a)(i) of the Policy does not require Complainant’s trademark rights to have arisen before the Domain Name was registered. See Valve Corp. v. ValveNET, Inc., D2005‑0038 (WIPO Mar. 9, 2005) and the cases there cited.
The word “adventure” is a common dictionary word. On the material before the Panel, including Complainant’s exhibits, it is clear that the letters “RV” are commonly understood, amongst suppliers and customers in the field in which Complainant and its competitors operate, as an abbreviation of “Recreational Vehicle”. Accordingly, the term “AdventureRV” may be understood as a descriptive expression for the kind of vehicle that is used for recreational adventure.
This does not preclude its registration as a trademark, however nor the acquisition, through use, of secondary meaning, giving rise to common law trademark rights, including in a narrow geographic territory.
Based on the material
submitted by Complainant regarding its use and promotion of the mark
“AdventureRV” and on some of the customer testimonials exhibited to the
Complaint (such as those from “Jeffrey M” and “joe m”) which used that mark in
a trademark sense to refer to Complainant as the source of recreational
vehicles and parts, a majority of the Panel is prepared to accept that, by the
time the Complaint was filed with the Forum, Complainant had established
secondary meaning in the mark “AdventureRV” in the Eastern part of Tennessee
and accordingly has common law rights in that mark in that geographic area.
The Panel notes
Respondent’s argument that there appear to be various companies in the RV
market that use the name “Adventure RV.”
These various names may co-exist in the
The Domain Name is identical to Complainant’s “AdventureRV” mark, the gTLD “.com” being inconsequential. Accordingly, a majority of the Panel concludes that Complainant has established this element of its case.
Panelist Brown would find that Complainant does not have common law
trademark rights to the term ADVENTURERV.
The onus is on the Complainant to establish this element and it must be
done on the balance of probabilities. Applying that test, Panelist Brown is
unable to conclude on the balance of probabilities that Complainant has
established sufficient secondary meaning with respect to the alleged trade mark
to associate the expression with the Complainant.
That expression of the conclusion is
similar to the expression used in Family
& Children’s Ctr. Inc. v.
In the present case, the mark that is
claimed is inherently weak, as it is entirely descriptive, has the meaning
attributed to it in the popular dictionary www.urbandictionary.com
that is contended for by Respondent and is clearly used by numerous other firms
operating in the same field and in common parlance in the same descriptive
sense, as is seen from the list of firms and their services set out in
Complainant’s Exhibit H, a list of Complainant’s competitors allegedly promoted
by Respondent. There is, also, nothing
to suggest that the expression has ever been claimed by Complainant as a
trademark or applied to be registered by it as such, although the registration
of trademarks is apparently available in the State of
Given that there must be evidence of real substance to counterbalance
the inherently weak mark at issue and in effect to appropriate a commonly used
expression, Panelist Brown is not satisfied on the balance of probabilities
that that test has been met in the present case.
The question, of course, arises as to how much evidence is enough to
constitute evidence of substance and although many tests have been offered in
judicial and UDRP decisions, Panelist Brown has found helpful the formulation
in Charcoal Steak House, Inc. v. Staley,
263 N.C. 199,139 S.E.2d 185 (1964), a decision of the Supreme Court of North
Carolina, cited in Lindsay,
International Domain Law, p.196, where the Court said:
“When a particular business has used words publici juris for so long or so exclusively or when it has promoted
its product to such an extent that the words do not register their literal
meaning on the public mind but are instantly associated with one enterprise,
such words have attained a secondary meaning. That is to say, a secondary
meaning exists when in addition to their literal, or dictionary meaning, words
connote to the public a product from a
unique source.” (emphasis added)
It is true that Complainant has adduced some evidence tending to that conclusion, such as its advertising budget and testimonials, but the totality of the evidence does not establish that the expression is associated with Complainant or any other “unique source” either in the very limited area of Tennessee relied on or elsewhere, rather than connoting the dictionary or generally accepted meaning of the words.
Accordingly, Panelist Brown would find that Complainant has not established the first element required to be proved.
Once a complainant establishes a prima facie case against a respondent under this heading, the burden shifts to the respondent to provide evidence of its right or legitimate interests under ¶ 4(c) of the Policy: Cassava Enters. Ltd., v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).
Panelists Limbury and Brown would find that Complainant
has failed to establish a prima
facie case of absence of rights or legitimate interest in the Domain Name
on the part of Respondent because
Complainant has not shown that, through use, it had acquired (in Eastern
Tennessee or elsewhere) common law rights in the descriptive mark “AdventureRV”
in the relatively short period of around 2 years between the incorporation of
Complainant in 2004 and Respondent’s registration of the Domain Name in
2006. There is nothing before the Panel
from which it may conclude that Complainant’s predecessor in business had
acquired common law trademark rights which it had effectively passed on to
Complainant upon the incorporation of Complainant in 2004. Hence, since
the words “adventure” and “RV” are descriptive terms which anyone may
legitimately register on a
'first-come, first-served' basis (see, e.g., Zero Int'l Holding v.
If, contrary to this view, Complainant has
established a prima facie case, Panelists Limbury and Brown would agree
that Respondent has demonstrated a legitimate interest for the reasons give by
Panelist Bernstein.
Panelist Bernstein
would find that Complainant has established a prima facie case but that Respondent has demonstrated a legitimate
interest in the Domain Name on the basis that, although numerous panels have
noted the lack of societal benefit
offered by pay-per-click (“PPC”) landing pages of the type offered by
Respondent, see, e.g., mVisible Techs., Inc. v. Navigation Catalyst Systs., Inc., D2007-1141 (WIPO Nov. 30, 2007), panels also
have recognized that domain names that are descriptive and are used solely in
connection with PPC advertising keyed to the descriptive meaning of the domain
name can constitute a legitimate interest for purposes of the policy. Cf. Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008). Here,
regardless of whether Complainant’s mark is descriptive or inherently
distinctive for purposes of the Lanham Act, “adventure” and “RV” are dictionary
words with a common meaning, and Respondent’s PPC landing page does appear to
have advertising that is related to that dictionary meaning. Accordingly, use of the Domain Name in
connection with this PPC landing page gives rise to a legitimate interest under
the Policy. See Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004) (legitimate interest “[if] the domain
names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); see
also Nat’l Trust for Historic Pres. v.
For the foregoing reasons Complainant has
failed to establish absence of rights or legitimate interest in the Domain Name
on the part of Respondent.
Complainant has failed to establish this
element of its case.
Although the circumstances taken to
constitute evidence of both bad faith registration and bad faith use contained
in paragraph 4(b) of the Rules are not exhaustive, they all require some proof
of intent or purpose on the part of Respondent vis à
vis Complainant or its mark at the time of registration of the disputed domain
name.
Notwithstanding the majority of the Panel’s conclusion that Complainant
appears to have common law trademark rights, it is clear that those rights are
quite narrow given the very limited geographic area in which Complainant uses
its mark and that its mark coexists with extensive third party use of the same
name by others in the field.
All members of the Panel are of the opinion that Complainant has failed to establish by a preponderance of the evidence that Respondent had Complainant in mind either when registering the Domain Name or prior to notice to it of the dispute. Rather, it appears to the Panel that Respondent in this case registered this Domain Name in good faith because of its value as a descriptive reference to recreational vehicles used for adventure. This finding is fatal to Complainant’s case on bad faith. See, e.g., DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (finding “Respondent’s registration cannot have been in bad faith if, at the time, it had not heard of Complainant”); Meguiar's, Inc. v. Target Online Inc, FA 435003 (Nat. Arb. Forum Mar. 8, 2005).
Complainant has thus failed to establish this
element of its case.
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name”. See also Rule 15(e). To make such a finding, the Panel must be satisfied either that Complainant knew of Respondent’s unassailable right or legitimate interest in the Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000‑1224 (WIPO Oct. 31, 2000) and Goldline Int’l, Inc. v. Gold Line, D2000‑1151 (WIPO Jan. 4, 2001) or that the Complaint was brought in knowing disregard of the likelihood that Respondent possessed legitimate interests: Smart Design LLC v. Hughes, D2000‑0993 (WIPO Oct. 18, 2000); or that Complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Zuckerman v. Peeris, DBIZ2002‑00245 (WIPO Aug. 12, 2002); HER MAJESTY THE QUEEN v. Virtual Countries, Inc., D2002‑0754 (WIPO Nov. 27, 2002).
Applying these principles to the present case, the Panel concludes that such a finding should be made.
Panelist Brown considers that, at the time of the filing of the Complaint, the Complainant must be taken to have been aware that it was putting forward a claim for an inherently weak common law trademark confined only to one part of a State; that the name was commonly used by others elsewhere in the United States descriptively in relation to recreational vehicles; that the Domain Name was being used descriptively by Respondent for commercial gain; that the Respondent appeared to possess legitimate interests in the Domain Name; and that it would have been difficult if not impossible to prove bad faith registration, an essential ingredient in the case. Further, Complainant’s disparaging allegations against Respondent (such as that Respondent relied on affidavits of “dubious credibility”, that it conducted “reckless, perfunctory searches and that, in effect, it concealed unfavourable evidence) were made without evidence or argument to justify them. This points to an element of harassment in bringing this administrative proceeding, an element specifically aimed at by Rule 15(e).
Panelists Bernstein and Limbury consider that Complainant must have known it could not demonstrate bad faith registration and use, given the weakness of its trademark, Respondent’s descriptive use of the Domain Name, and the inherent unlikeliness that Respondent could have had Complainant in mind when registering the Domain Name, given the narrow geographic scope of Complainant’s activities and the many concurrent users of the same name.
Accordingly the Panel declares that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding.
DECISION
Complainant having failed to establish all three elements required
under the Policy, the Panel concludes that relief shall be DENIED.
Alan L.
Dated: May 3, 2010
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum