National Arbitration Forum

 

DECISION

 

Calcar, Inc. v. Future Media Architects, Inc. c/o com fma

Claim Number: FA0709001080147

 

PARTIES

Complainant is Calcar, Inc. (“Complainant”), represented by Gary J. Nelson, of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Suite 500, PO Box 7068, Pasadena, CA 91109-7068.  Respondent is Future Media Architects, Inc. c/o com fma (“Respondent”), represented by Michael Kelly, of Kenyon & Kenyon LLP, One Broadway, New York, NY 10004.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <calcar.org> (“the disputed domain name”) which was registered with Moniker Online Services (“Moiniker Online”) on May 3, 2005.

 

PANEL

The undersigned, David H Tatham, 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 17, 2007; the Forum received a hard copy of the Complaint on September 19, 2007.

 

On September 25, 2007, Moniker Online confirmed by e-mail to the Forum that the <calcar.org> domain name was registered with them and that the Respondent was the current registrant of the name.  Moniker Online has verified that Respondent is bound by its 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 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of October 18, 2007 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@calcar.org by e-mail.

 

A timely Response was received on October 18, 2007.  However, the hard copy of the Response was not received by the deadline for response, and therefore the Forum does not consider this Response to be in compliance with ICANN Rule 5(a).

 

A timely Additional Submission was received from Complainant on October 23, 2007 in accordance with the Forum’s Supplemental Rule 7.

 

A timely Additional Submission was received from Respondent on October 29, 2007 in accordance with the Forum’s Supplemental Rule 7.

 

On October 24, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant was formed in 1993 to meet OEM vehicle manufacturer needs for a quick and easy system for conveying essential information about vehicle operation to consumers.  Among other things, Complainant performs complete custom publishing products and services for the automotive industry.  Complainant specializes in taking complex embedded information and changing it into quick and easy to use products, particularly printed brochures and booklets.

 

Complainant is the proprietor of a US Federal trademark registration of the word CALCAR No. 2,419,611 which was registered on January 9, 2001 for “Computer hardware and computer software for use in telecommunications, weather reporting, messaging, global positioning, database access, imaging and pre-recorded software on CD-ROM relating to automobiles, advertising, global computer networks, web sites, and telecommunications” in Class 9, claiming a date of first use from March 1997.

 

Complainant also claims common law rights in the name CALCAR in association with the automobile industry, and it is the owner of the domain name <calcar.net> which was registered on January 9, 1999.

 

Complainant contends that its trademark CALCAR is identical to the disputed domain name.

 

Complainant contends that the website at the disputed domain name presents unsolicited and inappropriate pop-up advertisements to any visitor to the site.  In addition the site offers nothing except sponsored links to other sites, some of which are adult in nature.  Complainant contends that this type of use is not a bona fide offering of goods or services, and nor is it legitimate non-commercial or fair use.

 

Complainant contends as follows and refers to a number of decided cases in support thereof –

 

·        Respondent’s only apparent connection with the name CALCAR is through the disputed domain name;

·        Respondent has made no effort to licence or acquire the CALCAR trademark;

·        The site mentions neither CALCAR, nor anything resembling it;

·        Respondent’s name has no relationship to CALCAR nor is it known as <calcar.org>;

·        Respondent is not making a legitimate non-commercial or fair use of the disputed domain name;

·        The .org gTLD was intended for use by non-profit organizations and Respondent is not a non-profit organization.  It is using the disputed domain name for commercial gain by displaying pop-up advertisements and sponsored links.  This is proof that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name;

·        The disputed domain name was registered more than 6 years after Complainant had registered its <calcar.net> domain name;

·        The website at the disputed domain name is linked to several car-related sponsored sites;

·        Respondent has a pattern of using identical domain names to present pop-up advertisements and redirect users to related sponsored links in which context, Complainant referred to the case of National Rifle Association of America v. Future Media Architects, Inc. FA 781430 (Nat. Arb. Forum Oct. 13, 2006).

·        Respondent’s behaviour constitutes evidence of bad faith;

·        Respondent intentionally uses a mark which is identical to that of Complainant in order to mislead internet users, for commercial gain by creating a likelihood of confusion with Complainant’s own domain name <calcar.net> and linking the disputed domain name to many car-related sites, which is evidence of bad faith registration and use;

·        Respondent uses the disputed domain name to link users to pornographic sites which in itself is evidence of bad faith.

 

B. Respondent

In reply, Respondent contends, firstly, that Complainant has failed to prove any of the three necessary requirements of the Policy.

 

Respondent further contends that Complainant’s trade mark CALCAR is generic and unprotectable and quoted a UDRP Decision as evidence that genericness, if established, will defeat a claim of trademark right.

 

Respondent states that the first part of Complainant’s trade mark CALCAR is the accepted and much used abbreviation for ‘California,’ a State in which Complainant is based, while the suffix CAR is the generic term for an automobile.  Therefore the name is generic, unprotectable, and not deserving of the broad protection which Complainant is seeking.

 

Respondent contends that use of Complainant’s alleged mark is rampant and cites the domain names <calcars.org>, <calcar.com>, <calcarcover.com>, <calcarcare.com>, and <norcalcars.com> as evidence therefor, all of them in active use.  Respondent concludes that it is unlikely that consumers will be confused by Complainant’s use of the disputed domain name since consumers are already accustomed to encountering many ‘calcar’ type domain names without associating them with Complainant.  Without annexing a copy, Respondent referred to a search via the Google search engine for ‘calcar’ which revealed 645,000 hits, an overwhelming number of which do not refer to Complainant.  This search also contained references to <so-calcarshows.com> for Southern California car shows (“So-Cal car shows”) and Southern California car clubs (“So-Cal car clubs”).

 

Respondent then referred to the case of Homeric Tours, Inc. v. Neon Network FA 823027 (Nat. Arb. Forum Dec. 6, 2006) in which the Panel found that <homeric.com> was not similar to the trademark HOMERIC TOURS despite the fact that this trademark was incontestable.

 

Respondent started to use the disputed domain name long before this Complaint was filed in order to provide consumers interested in cars, and particularly California cars, with links to various websites.  It is therefore using it for a legitimate purpose.

 

Respondent claims there could be no bad faith because Complainant’s trade mark is comprised of common generic terms, and cited several UDRP Decisions which it claimed supported this proposition.

 

Respondent alleges that ‘intent’ is a critical element necessary to support a bad faith claim.  The Policy requires a use and registration which was “primarily for the purpose of,” “in order to” and “intentionally attempted” to harm a Complainant’s rights.  In this case, Complainant has failed to show such intent by Respondent.

 

Respondent owns 100,000 domain names.  It has never sold any of them. Since it has no intention of selling the disputed domain name to Complainant or anyone else, there can be no bad faith.         

 

Given the number of domain names that incorporate the term ‘calcar’ belonging to others, Respondent cannot be singularly blamed for preventing Complainant from registering a domain name that includes its alleged trademark.  Thus there cannot be bad faith.

 

Respondent is an Internet developer specializing in developing its own Internet properties, portals, and technology so it is not in competition with Complainant.

 

Finally, Respondent contends that it did not register the disputed domain name to intentionally create a likelihood of confusion, but rather to capitalize on what it claims are clearly generic terms.

 

C. Additional Submissions

Both parties filed timely Additional Submissions.

A.     Complainant

In its Additional Submission, Complainant makes the following points, in many cases supported by reference to various UDRP and US Court Decisions –

·        Respondent does not dispute that the disputed domain name is identical to Complainant’s trademark.

·        Complainant’s trademark CALCAR is not generic, and where UDRP Panels have considered the question of genericness they have applied a very stringent evidentiary standard.

·        The CALCAR trademark is fanciful and arbitrary.  Filed with the Additional Submission was a Declaration by Mr. Michael Obradovich who is the President and owner of Complainant.  In this he declares that he personally selected the mark and he chose it not as a combination of the words ‘California’ and ‘Cars’ but because of its Latin meaning ‘to spur on.’  He further declares that the mark “is intended to convey the concept of a rider spurring on a willing horse, to reflect the company’s innovation and leadership.”

·        The CALCAR trademark is a strong mark that is successfully registered and, after continuous use since 1997, has become incontestable.

·        Respondent’s attempts to portray the trademark as weak are deficient.  One of the domain names mentioned by respondent is <calcars.org> of The Californian Cars Initiative, but in June 2007 Complainant filed suit against The Californian Cars Initiative and its principal Mr. Felix Kramer for, inter alia, trademark infringement.  This case is currently pending but it was referred to in Mr. Obradovich’s Declaration and a copy of the Complaint was annexed to the Additional Submission.

·        Respondent has not shown that any of the third parties it referred to are engaged in any business activity related to Complainant’s business or that they market activities to the same customers as those of Complainant.

·        The Homeric decision is not relevant, as in it the Respondent’s domain name included only a portion of the Complainant’s trademark.  In the present case the trademark and the disputed domain name are identical.

·        Respondent has effectively conceded that it has no legitimate interest in the disputed domain name, by not refuting any of Complainant’s facts on this point. Respondent has admitted that the only purpose of its website is to provide links to other websites, but it has been held that this is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use.

·        Respondent’s blatant infringement of Complainant’s registered trademark is sufficient evidence of bad faith.

 

B.     Respondent

In its Additional Submission, Respondent makes the following points, in many cases supported by reference to ICANN’s Rules, the Forum’s Supplemental Rules, and various UDRP and US Court Decisions –

·        Complainant failed to serve the Respondent with a copy of its Additional Submission which it should have done according to ICANN Rule 5(b)(iii).  They were sent to the wrong address. Therefore Complainant’s Additional Submission should not be considered.

·        The Policy requires that a complainant must first prove that it has rights to a mark before proving that the disputed domain name is identical or confusingly similar to it.  However in this case, Complainant has failed to show that it has rights in the generic term ‘calcar.’  As for Complainant’s eleventh hour assertion that ‘Calcar’ means ‘to spur on’ in Latin, firstly as it has only been raised in an Additional Submission it should not be considered, and secondly Respondent notes that Complainant’s Federal registration of this word does not include an English Translation of the foreign wording as required by the USPTO where the foreign wording is sufficiently familiar to the consuming public.

·        Another finding in the Homeric case was that where the result of a search through a search engine returns an overwhelming number of hits that have nothing to do with a Complainant’s business, the term is not confusingly similar with the alleged mark.

·        It is a well-settled precedent that a Respondent has rights and legitimate interests in a disputed domain name where it is comprised of generic and/or common terms.

·        The alleged trademark CALCAR is not exclusively associated with Complainant’s business and thus the first to register a domain name containing a descriptive mark should prevail in a UDRP proceeding.

·        The provision of advertising links on Respondent’s website is evidence of Respondent’s legitimate interests in the disputed domain name.

·        The Policy requires a Complainant to prove “both bad faith registration and bad faith use,” but in this case Complainant has failed to establish that Respondent had actual or constructive knowledge of the alleged mark when it registered the disputed domain name.  Furthermore, the provision of generic advertising links does not relieve Complainant from this considerable burden imposed by the Policy.

 

FINDINGS

1.       Complainant provides a complete custom publishing service of products and services for the automotive industry.  It specializes in taking complex embedded information and changing it into quick and easy to use products, particularly printed brochures and booklets.

 

2.        Complainant owns a US Federal trademark registration of the word CALCAR, No. 2,419,611, registered on January 9, 2001 for “Computer hardware and computer software for use in telecommunications, weather reporting, messaging, global positioning, database access, imaging and pre-recorded software on CD-ROM relating to automobiles, advertising, global computer networks, web sites, and telecommunications.”  This registration is in Class 9 and claimed a date of first use from March 1997. Complainant is also the owner of the domain name <calcar.net> which was registered on January 9, 1999.

 

3.        Respondent is an Internet developer specializing in developing its own Internet properties, portals, and technology and it is not in competition with Complainant.  It owns 100,000 domain names and it has not sold any of them.

 

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.

 

But before proceeding to a discussion on these, there is a preliminary issue to be decided.

 

Preliminary Issue

As a preliminary issue, the Panel must decide whether or not to accept Complainant’s Additional Submission.  According to the Forum it was timely filed, but Respondent alleges that it went to an incorrect address, and that the Certificate of Service that was submitted with it by Complainant is proof that Complainant has violated ICANN  Rule 2(b) and the Forum’s Supplemental Rule 7(b)(iii).  The former requires, inter alia, that “… any written communication to Complainant or Respondent … shall be made by the preferred means stated by the Complainant or Respondent, respectively ….”  The latter requires only that an Additional Submission must be accompanied by proof of service.

 

In this case, Respondent’s preferred method of communication, as set out in its Response, was by e-mail or fax to its authorised representative Mr. Michael Kelly of Kenyon & Kenyon LLP in New York.

 

Respondent does not specify to what address the Submission was actually sent, and of course Complainant has not had an opportunity to respond to Respondent’s allegation.  However the fact is Respondent would never have had the opportunity to file its own Additional Submission if it had not, at some stage, received a copy of Complainant’s Additional Submission, so no harm seems to have been done.

 

Respondent’s allegation also seems to be a case of the pot calling the kettle black because, according to the Forum, Respondent failed to submit a timely hard copy of its Response.  Thus the Panel has two breaches of the Rules to consider.

 

There are numerous UDRP Decisions which confirm that a Panel has sole discretion as to the amount of weight given to untimely submissions.  See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (NAF July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”). 

 

The Panel is reluctant to deny either party the right to have its case heard on account of what it considers to be fairly trivial breaches of the Rules and, bearing in mind the finding in Gaiam above, will therefore take both the Response and Complainant’s Additional Submission into account in its Decision.

 

Identical and/or Confusingly Similar [paragraph 4(a)(i)]

 

Complainant has a trademark registration of CALCAR which was registered in 2001.  There can be no doubt that the disputed domain name <calcar.org> is identical to this trademark, it being well established that when comparing a trademark with a domain name one should ignore prefixes and suffixes such as ‘www.’ or ‘.org.’  Respondent makes no attempt to deny that the two names are identical, but attacks the trademark alleging that it is generic because it is composed of two generic terms – ‘cal’ which is a frequently used abbreviation for the State of California, and ‘car’ which is another way of saying automobile.  This is almost certainly irrelevant because, under paragraph 4(a)(i) of the Policy it is only necessary to establish whether a Complainant has rights in a trademark or service mark and whether the disputed domain name is identical or confusingly similar to it.  Furthermore, the trademark registration, being more than five years old it has become incontestable.  According to information published by USPTO, an “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services.  The Panel will not therefore delve further into the origins of the trademark, but will accept the registration as established fact.

 

Respondent also throws some cold water on Complainant’s claim that the CALCAR trademark was derived from the Latin word meaning “to spur on,” and the Panel is inclined to side with it on this. It seems that a rather more likely explanation for the origin of the trademark is that CAL was taken from the name of Complainant’s home State (California) and CAR from its principal activity (automobiles).  Respondent’s claim that the trademark registration should have included a translation is fanciful, given the apparent desire of the USPTO to insist on translations only when the foreign wording is sufficiently familiar to the consuming public. Latin hardly falls into that category in the US.

 

Respondent has relied heavily on a ‘generic’ defense, and the Panel is familiar with this having been involved in two fairly recent cases where it was raised.  See SkateboardDirectory.com v. 360 Broadsports, FA 771229 (Nat. Arb. Forum Sept. 29, 2006); see also Diners Club Int’l ltd. v. MForce Commcn’s, FA708908 (Nat. Arb. Forum July 27, 2006).  In the latter it was pointed out that the ‘generic’ question had been extensively reviewed in Sony Corporation v. Times Vision, Ltd, FA95686 (Nat. Arb. Forum Mar. 9, 2001) in which the Panel found that the facts were more like the factual situations presented in cases such as, for example, Robus v. Suard, D2000-0941 (WIPO Dec. 6, 2000); Welltec ApS v. Gardner, D2000-1145 (WIPO Oct. 31, 2000); Mariof Corp. Oy v. Untra Fog AB, D2000-0521 (WIPO Aug. 24, 2000); and Interactive Television Corp. v. Noname.com, D2000-0521 (WIPO July 26, 2000).

           

The Diners Club case then went on to analyze three of these cases in the following way:

 

In Welltec, the registered mark was "Well Tractors." Respondent registered the domain name "welltractor.com."  Respondent contended that "welltractor" is a generic term widely used in the business sector.  The Panel found that in order for genericness to be taken into account in an administrative proceeding it would be necessary to present convincing evidence showing that the words "well tractor" were obviously generic at the time of registration or that they had thereafter become generic through degeneration.  Because of the registration of the mark and the lack of convincing evidence, Complainant prevailed.  In Welltec, both Complainant and Respondent were in the tractor business.  Complainant made tractors and Respondent used tractors to drill holes.  Respondent was a prior customer of Complainant.  The Panel was reluctant to permit a challenge to a registered mark on the ground that it had become generic except under obvious circumstances and with convincing evidence.  The Panel considered submissions from Respondent consisting of publications that Respondent believed clearly showed that the term "well tractor" was widely used in the business sector and the oil and gas industry.  Notwithstanding such evidence, the Panel in Welltec did not find that it was sufficient to constitute the powerful showing required to make the case for an obvious generic term sufficient to prevail against a registered mark.

 

In the Robus case the registered mark was "WORKKAMPER."  Respondent registered the domain names <workkamper.com> and <workcampers.com> among other variations.  "Workkamper" was found to be a coined term, the registration of which had become incontestable.  Respondent contended that "workkamper" and "workcamper" were generic terms.  Respondent presented search engine printouts and RV industry web sites as providing evidence of usage of "workcampers" in a generic sense.  The Panel found some of the results to support Respondent and some of the results otherwise, but concluded that the evidence failed to show that the trademarks had become generic.

 

In the Marioff case, Complainant had registered the trademark "Hi-fog" in at least sixteen countries.  Respondent registered the domain name <hifog.com>.  Respondent contended that the word "hifog" was a generic term for high-pressure water fog sprinkler systems and in support of the claim enclosed several examples that showed the generic use of the word by different professional entities among its customers.  The Panel looked through the enclosures provided by Respondent and determined that the term "Hi-fog" was written by using both upper and lower case, and in some cases reference could actually be construed as a reference to Complainant’s product.  The Panel, in Marioff, considered the enclosures filed by Respondent and was of the opinion that they did not necessarily show that the term was used in a generic sense.  Under those circumstances the Panel found that it must base its decision on the assumption that the Complainant enjoyed full and unlimited rights in the trademark Hi-fog.

 

In the present case, as in Diner’s Club, the Panel’s reasoning in Welltec seems to be the correct approach in these types of cases and the Panel is reluctant to find a generic use of a registered mark except under obvious and convincing circumstances.  The evidence and arguments presented by Respondent do not, in the opinion of the Panel, reach that level of proof.  Like Complainant, the Panel believes that the UDRP is not the proper forum for deciding whether or not an incontestable trademark registration is generic.  This is something which should be left to the USPTO or the courts.

 

The Panel therefore concludes that the disputed domain name is identical to a trademark in which Complainant has rights.

 

Rights or Legitimate Interests [paragraph 4(a)(ii)]

 

The Panel believes that Complainant has made out a prima facie case in support of its allegations so, as is well established, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.  It was found, for example, in Clerical Medical Investment Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist.

 

Complainant makes several contentions relating to paragraph 4(a)(ii) of the Policy. Firstly that Respondent is using the disputed domain name to operate a website connecting Internet users to third-party commercial websites and inappropriate adult-oriented content; secondly that Respondent is not commonly known by the disputed domain name or licensed to register names featuring Complainant’s CALCAR trademark; and thirdly that the gTLD .org was intended for use by non-profit organizations, and Respondent does not fall into that category.   

 

As for the first contention, it was held in WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy; also in Bank of America Corporation v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) it was said that “Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy and it is not a legitimate noncommercial or fair use under paragraph 4(c)(iii)of the Policy.” while in Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) it was found that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use.

 

Thus, in the opinion of the Panel, there is clear indication from these previous Decisions that Complainant’s first contention is proved.

 

It is clear that the second contention is also proved. See, for example, IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) in which it was found that there were no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name.

 

With regard to the third contention, it is true that .org, which was one of the original seven ‘generic’ top level domain names, was intended for the sole use of  miscellaneous organizations which did not fit into any of the other 6 categories and that these were usually non-commercial.  However it is sometimes now used by commercial entities, so Respondent’s use of it does not constitute bad faith.

 

Respondent, on the other hand contends that the disputed domain name was registered for the purpose of providing consumers who are interested in goods and services relating to cars, and especially California cars, with links to relevant websites.  However this is not entirely true.  Complainant has annexed a copy of a pop-up game that appears on the site.  Also, of the fifteen links on the site, four have no connection with cars (‘Airline Tickets’, ‘Work from Home’, ‘Foreclosure’, and ‘Older Women’) and none of the eleven car-related sites appear, on the surface, to have anything to do with California.  Complainant’s allegation that the site contains much adult content is hardly borne out by the single reference to ‘Older Women’, but one is enough.

 

Respondent further contends that the disputed domain name is comprised entirely of descriptive and common terms and therefore Respondent has rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.  However the Panel has already found this to be not relevant to a UDRP proceeding.

 

The Panel has therefore concluded that Respondent has no rights or legitimate interest in the disputed domain name.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the disputed domain name to operate a website connecting Internet users to third-party commercial websites and inappropriate adult-oriented content.  The inference is that Respondent is commercially benefiting from the provision of such click-through links.  Given the fact that Complainant’s name and business have been established for ten years, it is certainly possible that Internet users could be confused into thinking that Complainant is sponsoring the disputed domain name or at the very least is affiliated with it in some way.  This could be evidence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy, but Respondent’s evidence is that the name ‘Calcar’ is used by several other entities and appears in several other domain names.  Complainant has taken action against one of the other entities for infringement of the name ‘Calcar,’ but the mere filing of a suit is no proof that it will succeed.  Furthermore, as Complainant points out, there is no evidence that any of the other ‘Calcar’; owners is in the same line of business as itself.

 

It was held in American University v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) that “Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.” it was also found in G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); while in Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) it was found that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith.

 

Complainant has also drawn attention to the National Rifle case in which the present Respondent had registered <nra.net>.  The Panel in that case felt “there is a strong reason to believe that respondent’s conduct falls within the cybersquatting activity for which the ICANN policy was designed to discourage.” There is no evidence of any such activity in this case, but under paragraph 4(b)(ii) of the Policy it is evidence of bad faith if a respondent has registered a domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name “provided that you have engaged in a pattern of such conduct.”  One single earlier Decision does not constitute a ‘pattern’ and the circumstances of the present case are very different from those in National Rifle.  The Panel therefore declines to find bad faith for this reason alone.  However it is a straw in the wind.

 

The fact that Respondent claims (without any evidence) never to have sold any of its alleged 100,000 domain names does not disprove bad faith on its part.

 

It is true that Complainant has not supplied any evidence of intent on the part of Respondent to register the disputed do main name in bad faith, as Respondent argues is a necessary ingredient, but in the opinion of the Panel there is sufficient other evidence to make a finding of bad faith in this case.

 

The Panel has therefore concluded that the disputed domain name was registered and is being used in bad faith. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <calcar.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

David H Tatham, Panelist
Dated: November 6, 2007

 

 

 

 

 

 

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