AdventureCORPS, Inc. v. James Robinson / MediaXpressions
Claim Number: FA1406001562507
Complainant is AdventureCORPS, Inc. (“Complainant”), represented by Ben Klosowski, South Carolina, USA. Respondent is James Robinson / MediaXpressions (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outdooradventurecorps.org>, registered with GoDaddy.com, LLC (R91-LROR).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2014; the National Arbitration Forum received payment on June 2, 2014.
On June 3, 2014, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <outdooradventurecorps.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2014 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@outdooradventurecorps.org. Also on June 4, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 13, 2014.
On June 18, 2014, the Forum approved a request to stay these administrative proceedings. Thereafter on July 22, 2014, said stay order was lifted and the proceedings continued.
On July 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) the disputed domain name is confusingly similar to the Complainant’s registered trademark ADVENTURE CORPS in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith by the Respondent.
B. Respondent
Respondent contends that:
(i) the disputed domain name is exclusively composed with generic terms and is not identical nor confusingly similar to Complainant’s registered trademark
(ii) Outdoor Adventure Corps was incorporated as a non-profit organization in the State of Rhode Island, Respondent registered the domain name just prior to incorporation in 2008 and the web site has been in continuous use since at least June 2008.
(iii) Outdoor Adventure Corps is known throughout the New England region and the northeast.
(iv) The fact that the Respondent’s domain name was used in commerce prior to the Complainant’s application for the US Trademark or before any notice demonstrates that there could be no intent to mislead or to tarnish.
(v) Respondent has made no attempt to create a likelihood of confusion with Complainant’s trademark.
(vi) Respondent’s web site is significantly dissimilar to Complainant’s web site. The form and style difference is obvious. There is no actual or potential likelihood of confusion.
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 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 or service mark in which Complainant has rights; and
(2) 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.
Respondent’s <outdooradventurecorps.org> domain name contains Complainant’s entire trademark preceded by the generic term “outdoor” with the top-level domain name “.org” appended thereto. Adding generic terms to a Complainant’s trademark does not eliminate the at-issue domain name’s confusing similarity to that trademark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
Further, the Panel finds that the gTLD “.org” used in the domain name at issue is a technical resource. Thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and Complainant’s trademarks. Therefore, the addition of the gTLD “.org” in the disputed domain name does not have any impact on the decision.
Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain names be identical or confusingly similar to Complainant’s trademark. This provision implies that Complainant’s rights predate the registration of Registrant’s domain name. See Expert Computers, Inc. v. Name Delegation, FA 787937 (Nat. Arb. Forum Oct. 24, 2006); see also East Side Pharmacy, Inc v. BOLDfx Corp, FA1404424 (Nat. Arb. Forum Sept. 9, 2011) (finding that identity or confusing similarity of a domain name which predates trademark cannot be found). Respondent registered the disputed domain name on February 7, 2008, which is prior to Complainant’s registration of the ADVENTURECORPS trademark, dated November 13, 2012. Therefore this condition seems not to e fulfilled.
However this condition of priority is not absolute and can be superseded. Indeed, past panels have found that prior ownership of a registered trademark is not necessary for establishing rights under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Keffer Management Co., LLC v. Domain Administrator, FA 1534568 (Nat. Arb. Forum Jan. 23, 2014). In these cases however, the complainants were able to establish prior Common law rights in their trademarks.
Complainant has not shown that any of its rights predate the registration of Registrant’s domain names. Therefore, Complainant has proven no rights, which would legitimate a finding of identity or confusing similarity under Policy ¶ 4(a)(i).
Therefore, Complainant has not satisfied paragraph 4(a)(i) of the Policy.
As the three conditions set under Policy ¶ 4(a), the Panel is in no obligation to examine the last two and may rule in favor of Respondent. However, for the sake of clarity of the decision and in order for the Parties to better understand it, the Panel decides to discuss these conditions.
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names and then the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain names. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent has not been authorized to use the trademark in the disputed domain name and that it is not affiliated with Complainant. Moreover, Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the domain name.
However as said above, the disputed domain name was registered by Respondent nearly four years before Complainant registered its trademark. Complainant has not demonstrated that at the time of registration of the domain name, Respondent could not have the knowledge of Complainant’s trademark.
On the contrary, the evidence that Complainant put forward does not prove that Respondent has no legitimate interest in the disputed domain name. The Panel finds that Complainant did not make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent claims that Outdoor Adventure Corps is a non-profit organization incorporated in the state of Rhode Island and that the disputed domain name was registered in relation to that organization. The evidence put forward by Respondent shows that the disputed domain name has indeed been used in relation with this organization from 2008. Moreover, a panel may undertake limited factual research into matters of public record (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.5). Several cases admit the use of Wayback Machine (Archive.org): Lan Airlines S.A. v. Joan F. Casas, Ks@s Intl, WIPO Case No. D2010-0008; La Francaise des Jeux v. Domain Drop S.A., WIPO Case No. D2007-1157 and G.U.C. S.A. v. Roberto Petralia, WIPO Case No. D2010-1865. The Internet Wayback Machine allows an Internet user to view the number of times the disputed domain name was crawled by the Wayback Machine, not how many times the site was actually updated. The Panel finds that snapshots from the Wayback Machine accordingly confirm Respondent’s allegations and show that the disputed domain name has been used in connection with Respondent’s organization for many years.
Respondent has provided evidence that it is known in its State of incorporation (Rhode Island) and beyond and that Respondent’s domain name was used in commerce prior to the Complainant’s registration of the US Trademark or before any notice. Therefore the Panel finds that the domain name is used in connection with a bona fide offering of goods and services, i.e. promoting services provided by a legitimate local non-profit organization.
Finally, although none of the Parties involved argued on the doctrine of laches, the Panel finds it an interesting point to discuss. One could argue that Complainant’s claims are barred by the doctrine of laches, since more than five years passed from the time he first registered the domain name to the filing of the complaint. See DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent had acquired rights and legitimate interests in the <teleconfusionremoval.com> domain name because of its continued use of the domain name three years before the Complaint was filed). Given the limited evidence, the Panel is not prepared to make a finding of laches. Nonetheless, the Panel finds that the passage of five years further tilts the balance in favor of finding that Respondent has a legitimate interest in the <outdooradventurecorps.org> domain name.
Therefore the Panel is of the opinion that not only Complainant failed to prove Respondent’s lack of right or legitimate interests in the disputed domain name, but also Respondent did in fact prove its existing rights and legitimate interests in the name. Complainant has not satisfied paragraph 4(a)(ii) of the Policy.
To succeed in an administrative proceeding, Complainant must show not only that the domain name at issue is identical or confusingly similar to its registered trademark and that Respondent has no rights or legitimate interests to the domain name, but also that Respondent registered and used the domain name in bad faith.
In its Complaint, Complainant relied primarily on what it asserted was Respondent’s attempt to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant’s trademark.
It seems obviously clear that, at the time of registration of the disputed domain name which predates the registration of Complainant’s trademark by nearly four years, Respondent did not have Complainant’s trademark in mind, nor did Respondent intend to use the domain name in order to attract and defraud Internet users. Respondent could not have registered the domain name with the intention of later selling it to Complainant, nor was the domain name registered to prevent Complainant from using it.
In fact, the Panel sees no plausible reason why Respondent would have registered the disputed domain name in bad faith at all.
With regards to the use of the disputed domain name, it has been resolving to a website dedicated to the Outdoor Adventure Corps non-profit organization since 2008, as evidenced by Respondent and snapshots from the Way Back Machine tool. Complainant has failed to provide the Panel with evidence showing otherwise.
Respondent contends it did not register the domain name with the intent to sell it to anyone. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).
See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from the Complainant or for any other purpose prohibited by UDRP Rules).
Therefore, the evidence in this case is not sufficient for this Panel to find a bad faith registration and use of the disputed domain name. Specifically, there is no evidence under Paragraph 4(b)(i) that the Respondent registered or acquired the name primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the Complainant or to a competitor of Complainant for valuable consideration in excess of documented out-of-pocket costs; that the Respondent 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; or that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant. Furthermore, the evidence does not support a finding that Respondent's use of the disputed domain name creates a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website.
The Panel finds that the disputed domain name was not registered and is not being used in bad faith.
Thus Complainant has not satisfied paragraph 4(a)(iii) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <outdooradventurecorps.org> domain name REMAINS WITH Respondent.
__________________________________________________________________
Nathalie Dreyfus, Panelist
Dated: July 31, 2014
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