DECISION
The Mark
Travel Corporation v. ATHS d/b/a Snug Harbor Travel
Claim Number:
FA0304000154644
PARTIES
Complainant is The Mark Travel Corporation, Milwaukee, WI (“Complainant”)
represented by Brian G. Gilpin, of Godfrey & Kahn.
Respondent is ATHS,
Amityville, NY (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <funjetvacations.net>, registered
with Melbourne It, Ltd. d/b/a Internet
Names Worldwide.
PANEL
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.
Houston Putnam Lowry, Chartered
Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint
to the National Arbitration Forum (the “Forum”) electronically on April 16,
2003; the Forum received a hard copy of the Complaint on April 17, 2003.
On April 17, 2003, Melbourne It, Ltd. d/b/a Internet Names
Worldwide confirmed by e-mail to the Forum that the domain name <funjetvacations.net> is
registered with Melbourne It, Ltd.
d/b/a Internet Names Worldwide and that the Respondent is the current
registrant of the name. Melbourne It, Ltd. d/b/a Internet Names
Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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 April 17, 2003, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 7, 2003 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@funjetvacations.net by e-mail.
A timely Response was received and
determined to be complete on May 7, 2003.
Complainant submitted a timely
Additional Submission on May 12, 2003.
On
May 20, 2003, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed
Houston Putnam Lowry, Charted Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant requests that the
domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
provides individuals, companies, and families outstanding travel services and
low prices in connection with airfare, hotels, and travel packages. Currently, Complainant offers air, hotel and
travel packages to some of the most popular destinations, including several
destinations in Mexico, Europe, Florida, California, Aruba, Jamaica, and Las
Vegas. Complainant has built an
extensive travel network, partnering with airlines such as Air Jamaica, Alaska
Airlines, Aloha Airlines, American Airlines, ATA, Continental Airlines, Delta,
Hawaiian Airlines, Ryan International Airlines, US Airways, and United and
hotels such as Buena Vista Suites, Marriott, Days Inn, Embassy Suites,
Econolodge, Hilton, Holiday Inn, La Quinta, and Sheraton to name a few. In addition, Complainant operates charter
flights to select locations. (Schaefer
Aff. ¶ 2.)
Complainant owns many trademarks
and registrations, including the following (the “FUNJET Family of Trademarks”):
Since at least as early as 1994, Complainant
has been using the mark FUNJET VACATIONS in connection with certain
travel-related services. In 1994,
Complainant filed an application in the United States Patent and Trademark
Office to register the mark FUNJET VACATIONS.
In 1995, Complainant’s U.S. Reg. No. 1,936,065 issued for the mark
FUNJET VACATIONS in connection with “wholesale and retail travel services,
namely, arranging air transportation and ground accommodation travel packages
for marketing by retail travel agents.”
(Schaefer Aff. ¶ 4.)
Since at least as early as 1994,
Complainant has been using the following mark in connection with certain
travel-related services: 
. In 1995, Complainant filed an application in
the United States Patent and Trademark Office to register the mark. In 1997, Complainant’s U.S. Reg. No.
2,031,874 issued for the mark for use in connection with “wholesale and retail
travel services, namely, arranging air transportation and ground accommodation
travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since at least as early as 1994,
Complainant has been using the following mark in connection with certain
travel-related services: 
. In 1995, Complainant filed an application in
the United States Patent and Trademark Office to register the mark. In 1997, Complainant’s U.S. Reg. No.
2,040,036 issued for the mark for use in connection with “wholesale and retail
travel services, namely, arranging air transportation and ground accommodation
travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since at least as early as 1994,
Complainant has been using the following mark in connection with certain
travel-related services: 
. In 2002, Complainant filed an application in
the United States Patent and Trademark Office to register the mark in
connection with “wholesale and retail travel services, namely, arranging air
transportation and ground accommodation travel packages for marketing by retail
travel agents.” (Schaefer Aff. ¶ 5.)
Since at least as early as 1975,
Complainant has been using the mark FUNJET in connection with certain
travel-related services. In 1982,
Complainant filed an application in the United States Patent and Trademark
Office to register the mark FUNJET. In
1983, Complainant’s U.S. Reg. No. 1,258,871 issued for the mark FUNJET in
connection with “wholesale travel services-namely, arranging air transportation
and ground accommodation travel packages for marketing by retail travel
agents.” (Schaefer Aff. ¶ 4.)
Since at least as early as 1975,
Complainant has been using the mark LAS VEGAS FUNJET in connection with certain
travel-related services. In 1978,
Complainant filed an application in the United States Patent and Trademark
Office to register the mark LAS VEGAS FUNJET.
In 1980, Complainant’s U.S. Reg. No. 1,137,030 issued for the mark LAS
VEGAS FUNJET in connection with “wholesale travel services-namely, arranging
air transportation and ground accommodation travel packages for marketing by
retail travel agents.” (Schaefer Aff. ¶
4.)
Since at
least as early as 1977, Complainant has been using the mark FLORIDA FUNJET in
connection with certain travel-related services. In 1978, Complainant filed an application in the United States
Patent and Trademark Office to register the mark FLORIDA FUNJET. In 1978, Complainant’s U.S. Reg. No.
1,104,487 issued for the mark FLORIDA FUNJET in connection with “wholesale
travel services-namely, arranging air transportation and ground accommodation
travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since at least as early as 1986,
Complainant has been using the mark FUNWAY HOLIDAYS FUNJET in connection with
certain travel-related services. In
1986, Complainant filed an application in the United States Patent and
Trademark Office to register the mark FUNWAY HOLIDAYS FUNJET. In 1997, Complainant’s U.S. Reg. No.
1,455,774 issued for the mark FUNWAY HOLIDAYS FUNJET in connection with
“wholesale travel services, namely, arranging air transportation and ground
accommodation travel packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since at
least as early as 1987, Complainant has been using the mark FUNJET … THE FUNWAY
TO GET AWAY! in connection with certain travel-related services. In 1993, Complainant filed an application in
the United States Patent and Trademark Office to register the mark FUNJET … THE
FUNWAY TO GET AWAY!. In 1993,
Complainant’s U.S. Reg. No. 1,804,816 issued for the mark FUNJET … THE FUNWAY
TO GET AWAY! in connection with “wholesale travel services, namely, arranging
air transportation and ground accommodation travel packages for marketing by
retail travel agents.” (Schaefer Aff. ¶
4.)
Since at least as early as 1995,
Complainant has been using the following mark in connection with certain
travel-related services: 
. In 1996, Complainant filed an application in
the United States Patent and Trademark Office to register. In 1997, Complainant’s U.S. Reg. No.
2,115,459 issued for the mark in connection with “wholesale and retail travel
services, namely, arranging air transportation and ground accommodation travel
packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
Since at
least as early as 1995, Complainant has been using the following mark in connection
with certain travel-related services: 
. In 1996, Complainant filed an application in
the United States Patent and Trademark Office to register the mark. In 1997, Complainant’s U.S. Reg. No.
2,106,617 issued for the mark in connection with “wholesale and retail travel
services, namely, arranging air transportation and ground accommodation travel
packages for marketing by retail travel agents.” (Schaefer Aff. ¶ 4.)
In 1995,
Complainant began using certain of its FUNJET Family of Trademarks on the
internet in connection with travel services.
(Schaefer Aff. ¶ 6.) Complainant
has registered and is using the following domain names in connection with its
internet-based sales and marketing efforts:
Domain
Name Registration
Date
funjetvacations.com June
17, 1998
funjet.com April
24, 1995
lasvegasfunjet.com December
8, 1998
funjetlasvegas.com December
8, 1998
funjetjamaica.com December
8, 1998
jamaicafunjet.com December
8, 1998
cancunfunjet.com December
8, 1998
funjetcancun.com December
8, 1998
(Schaefer Aff. ¶ 6.)
Through widespread use of its FUNJET Family of Trademarks and domain
names throughout the United States and the world, Complainant has acquired a
valuable reputation and developed goodwill.
First, Respondent registered the
domain name funjetvacations.net on July 2, 2002 (Schaefer Aff. ¶ 13.) Complainant owned nine federal trademark
registrations for the FUNJET Family of Trademarks at that time. (Schaefer Aff. ¶ 4.) The fact that Respondent registered the
funjetvacations.net domain name, despite the existence of Complainant’s
registration for an identical mark and many similar marks, is indicative that
registration of the domain name was designed to trade on the goodwill of
Complainant’s mark and was registered in bad faith. Cellular One Group v. Paul
Brien, Case No. D2000-28 (WIPO March 10, 2000). “Respondent’s use of exactly the same name as Complainant’s
trademark evidences an intent to attract Internet users to its website by
creating a likelihood of confusion with the Complainant’s mark. Such intent is manifest from the name
itself.” Infinity2, Inc. v. Total Health & Wellness, FA 94867 (Nat. Arb.
Forum Jul. 5, 2000).
Second,
Respondent had constructive and actual knowledge of Complainant’s rights in the
FUNJET Family of Trademarks, thus supporting a finding of bad faith. See
Expedia, Inc. v. European travel Network, D2000-0137 (WIPO Apr. 19, 2000); Document Technologies v. International
Electronic Communications, Inc., D2000-0270 (WIPO Jun. 6, 2000)
(Respondent’s knowledge of Complainant’s mark at the time of registration of
the domain name suggests bad faith).
Respondent had constructive notice of Complainant’s FUNJET Family of
Trademarks marks due to Complainant’s numerous registrations prior to the
registration of funjetvacations.net. See Toyota Motor Sales USA v. Rafi Hamid
d/b/a ABC Automobile Buyer, D20001-0032 (WIPO March 28, 2001). Further,
Respondent is a distributor of certain of Complainant’s travel packages. (Schaefer Aff. ¶ 8.) These travel packages are provided under the
FUNJET Family of Trademarks. As
Respondent distributes travel packages compiled by Complainant, there can be no
doubt that Respondent was aware of Complainant’s trademarks when it registered
the funjetvacations.net domain name. In
addition, Respondent refers to itself on its website connected to
funjetvacations.net as “Your Funjet Vacations Experts.” (Ex. 2).
By doing so, Respondent refers to Complainant by one of its FUNJET
Family of Trademarks. Such reference is
tantamount to admitting to the existence of Complainant’s rights in the marks.
Third, Respondent registered a
domain name containing at least two of Complainant’s trademarks in their
entireties. (Schaefer Aff. ¶ 13). Such registration alone is evidence of bad
faith. See Toyota Motor Sales USA v. Rafi Hamid d/b/a ABC Automobile Buyer,
D20001-0032 (WIPO March 28, 2001).
Specifically, “No plausible explanation exists as to why Respondent
selected the name … [FUNJET VACATIONS] as part of the Domain Name[s] other than
to trade on the goodwill of … [Complainant].”
Id.
Lastly, Respondent’s offering to
sell the disputed domain name to Complainant for an amount in excess of its out
of pocket expenses is evidence of bad faith.
See Wellness International
Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001)
(finding that an offer to sell domain name for $60,000 is evidence of bad
faith); Dollar Rent A Car Systems Inc. v.
Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent
demonstrates bad faith by registering the domain name for the purpose of
transferring the domain name in the amount of $3,000); Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000)
(finding bad faith where Respondent offered to sell the domain name to
Complainant for $10,000). Here,
Respondent has offered to sell Complainant the domain name funjetvacations.net
for $50,000. (Schaefer Aff. ¶ 12.) Such an amount is clearly in excess of
Respondent’s expenses associated with the domain name funjetvacations.net.
B.
Respondent
As
noted in the Complaint, Respondent is an authorized distributor of
Complainant. Complainant admits in the
Complaint that:
Respondent has certainly been using the domain name in dispute in
connection with the offering of goods or services [and]
. . .
may have limited rights to use and display
Complainant’s trademarks for promotional purposes relating to its resale of the
travel products offered by Complainant.
Respondent is a
licensed travel agent and has been an authorized reseller of Complainant’s
travel products and services since 2001.
Declaration of Besnik Vathi at ¶ 1.
(“Vathi Dec.”). Complainant has
consented to Respondent’s sale of Complainant’s products and services through
its web site. Annexed as Exhibit 2 of
the Response are various documents sent by Complainant to Respondent evidencing
this relationship as well as copies of checks paid by Complainant to Respondent
for commission earned in connection with booked vacations. In fact, Complainant has even paid
commissions to Respondent as late as April 22, 2003 – following the filing of
this Complaint. Id.
In 2002, Respondent
sold Complainant vacation packages to approximately 450 passengers, which
generated revenues for Complainant in excess of $200,000. Beznik Dec. at ¶ 2. This year, Respondent has already sold
Complainant vacation packages to approximately 550 passengers, with estimated
revenues to Complainant of $300,000. Id.
at 3. Respondent spends approximately
$4,000 per month advertising Complainant’s vacation packages. Id. at ¶ 4.
In early April 2003,
counsel for Complainant, Peter Schaefer, verbally contacted Respondent and
advised him to remove certain links from the bottom of Respondent’s web site
that were associated with travel products deemed competitive by
Complainant. Id. at ¶ 5. This was the first complaint made by
Complainant at any time. Id. Respondent removed those links on the same
day of Mr. Schaefer’s call. Id. During the phone call, Mr. Schaefer also
stated, for the first time, that the Complainant objected to Respondent’s use
and registration of the Disputed Domain.
Id. at ¶ 6. He offered Respondent $50.00 to cease and
desist its use of the domain name. Id. Respondent was infuriated with what he was
as heavy-handed tactics from the lawyer of a company for whom Respondent had
been working with in good faith to generate substantial travel business, and
had invested substantial money in operating and advertising the business. Respondent indicated he had no intention of
giving the name away, and that Complainant would have to pay him $50,000 to get
the name. Id. This number certainly was not made as
an offer to Complainant, as characterized by Respondent. Id.
Respondent was simply expressing his outrage to Complainant’s counsel
with a response to Complainant’s unreasonable demands and bulling tactics. Id.
Nothing governing Respondent’s distributor relationship with Complainant limits Respondent’s use of Complainant’s mark in a domain name, and Complainant even admits that Respondent has limited rights to use the mark to promote its vacation packages. Respondent clearly states on the web site that is operated by Snug Harbor Travel, and that it is “one of the largest Seller[s] of Funjet vacations.” Respondent did not register the Disputed Domain to sell to Complainant, to disrupt its business, to prevent Complainant from registering a domain name reflecting its trademark, or to confuse users. Vathi Dec. at ¶ 7.
C. Additional Submission by
Complainant
“The
majority view rejects any claim by a licensee to the right to register a domain
name consisting of, or containing, the licensor’s trademark.” Nikon,
Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001); Hunter Fan Company v. MSS,
FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (citing and agreeing with Nikon). Similarly, an authorized distributor or even
an entity actually licensed to sell products has no claim to the right to
register a domain name consisting of the manufacturer’s trademarks. Toyota
Jidosha Kabushiki Kaisha t/a Toyota Motor Corp. v. Double Time Jazz a/k/a Jamey
Aerbersold, FA 113316 (Nat. Arb.
Forum July 10, 2002); Motorola
Inc. v. NewGate Internet Inc.,
D2000-0113 (WIPO Apr. 14, 2000) (stating that “the right to resell products
does not create a right to use a mark more extensively than required to
advertise and sell the product. The use
of a mark as a domain name clearly goes further than what is required merely to
resell products.”); Stanley Works
and Stanley Logistics, Inc. v. Camp Creek Co., D2000-0113 (WIPO Apr. 13, 2000) (reasoning that “even if Respondent
is a retail seller of Complainant’s products, the collateral trademark use
necessary to allow resell [sic] of Complainant’s product is not enough to give
Respondent proprietary rights in Complainant’s trademarks, and certainly not
enough to confer the right to use these trademarks as domain names.”); Ullfrotte AB v. Bollnas Imports, D2000-1176 (WIPO Oct. 23, 2000) (finding
that the fact that Respondent legitimately sold goods originating from the
Complainant does not give Respondent the right to register and use the mark as
a domain name without the consent of the trademark owner); Gorstew Ltd. v. Caribbean Tours &
Cruises, FA 94927 (Nat. Arb. Forum
July 28, 2000) (reasoning that use of the trademark in a domain name is
“classic trademark infringement, even if the ultimate result of the same is
that some revenue flows to the owner of the marks”). In this case, Respondent’s assertion that it has legitimate
interests in the disputed domain name is similar to the assertion made by the
respondent in Infinity2, Inc. v.
Total Health & Wellness:
Respondent
also asserts that it has a legitimate, fair use of the name, without intent to misleadingly
divert consumers or to tarnish the . . . mark.
Contrary to Respondent’s assertion in this regard, its intent appears to
be just the opposite, that is to attract consumers to Respondent’s website by
using Complainant’s trademark as the sole
component of its domain name except only for the domain level designation. The intent to divert consumers is manifest
from the name itself, which suggests clearly and compellingly that that the
website belongs not to an entity that simply distributes [Complainant’s]
products but to one that is
[Complainant] itself.
Infinity2, Inc.
v. Total Health & Wellness, FA
94867 (Nat. Arb. Forum July 5, 2000) (emphasis in original).
A
distributor cannot use a manufacturer’s trademark in a domain name when the
distributor, even though selling the manufacturer’s goods, has no permission to
use the trademark as the domain name. Avon Products, Inc. v. Lee, D2001-0272 (WIPO Apr. 12, 2001).
“Respondent in this case would only have a right to register the domain name .
. . if Complainant had specifically granted that right.” Nokia
Corp. v. Nokia Ringtones & Logos Hotline, D2001-1101 (WIPO Oct. 18, 2001).
See also Nokia Corp. v.
Nick Holmes t/a Etype Media,
D2002-0001 (March 6, 2002) (finding that respondent did not have the right to
incorporate a trademark into a domain name without the authority of the
trademark owner). “That is especially
true if the domain name suggests a broader relationship than in fact is the
case.” R.T. Quaife Engineering, Ltd. v. Luton, D2000-1201 (WIPO Nov. 14, 2000).
The use of the domain under such circumstances is not in connection with
a bona fide offering of goods or services.
Caterpillar Inc. v. off
Road Equipment Parts, FA 95497
(Nat. Arb. Forum Oct. 10, 2000).
FINDINGS
The operative acts
of this case are very simple.
Complainant provides travel packages under the mark “FunJet
Vacations.” Some of these packages are
sold through travel agents, one of which is Respondent (who has been selling
these packages since 2001 and apparently continues to sell them after this
proceeding was commenced). Respondent
earns a commission for each travel package sold. Respondent is specifically authorized to
sell these packages electronically.
Respondent
registered the domain name FunJetVacations.net on July 2, 2002. While this web site originally contained
links to travel offerings that competed with FunJet offerings, such links were
removed at Complainant’s request. The
only offerings on the FunJetVacations.net are Complainant’s travel products. The site contains the phrase “Your Funjet
Vacations Experts” and contains Respondent’s contact information.
Complainant markets
its products under eight domain names and Respondent uses one domain name in
addition to the one at issue in this proceeding. Complainant notified Respondent by telephone on April 3, 2003 that
it was not authorized to use the “FunJet Vacations” trademark in a domain name.
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
Complainant has trademark rights in
the following family of FUNJET marks:
FUNJET VACATIONS, FUNJET, LAS VEGAS FUNJET, FLORIDA FUNJET, FUNWAY
HOLIDAYS FUNJET, and FUNJET…THE FUNWAY TO GET AWAY! Complainant has used the FUNJET mark since at least as early as
1975, and has used the FUNJET VACATIONS mark since at least as early as
1994.
The <funjetvacations.net>
domain name is identical to Complainant’s FUNJET VACATIONS trademark
because the generic top-level domain “.net” is irrelevant in a Policy ¶ 4(a)(i)
analysis. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Blue Sky
Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"). Furthermore, the absence of a space between the words of the mark
in the <funjetvacations.net> domain name is also inconsequential
because spaces are not permitted in second level domains. Therefore, the Panel finds the <funjetvacations.net> domain name identical to Complainant’s
FUNJET VACATIONS mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9,
2000) (finding that the domain name <radioshack.net> is identical to
Complainant’s mark, RADIO SHACK).
The
Respondent also concedes this point.
Rights or Legitimate Interests
Under ICANN Dispute Resolution
Policy §4(c), the following is a partial list of how one might prove rights to
a domain name:
(i) before any
notice to you of the dispute, your use of, or demonstrable preparations to use,
the domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or
(ii) you (as an
individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are
making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
Respondent has rights and legitimate interests in the domain name because it is an authorized distributor of Complainant. As a distributor, Respondent argues it uses the domain name in connection with a bona fide offering of goods and services. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001). An authorized dealer of Complainant’s goods may use Complainant’s trademark in its domain name if Respondent is
1) actually selling the goods or services at issue;
2) selling only Complainant’s products on the web site in question;
3) accurately disclosing the relationship between Complainant and Respondent (meaning Respondent is not causing confusion by suggesting Respondent is the owner of the trademark); and
4) not attempting to corner the market in all domain names incorporating Complainant’s mark and thereby prevent Complainant from reflecting its mark in its own domain name); see also Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (finding that Respondent, as an authorized dealer of Complainant’s WEBER GRILL products, had rights and legitimate interests in <webergrills.com>, <webergrill.com>, <weber-grills.com>, <webergrillsource.com>, <webergrillstore.com>, <webergrillshowroom.com>, <webergrills-ah.com> and <webgrills.com> because it was using the domain names in order to make a bona fide offering of Complainant’s goods and services).
In this case, Respondent is actually selling Complainant’s travel services.
Respondent is selling only Complainant’s travel products on the disputed domain name, although it is possible to eventually click through to Respondent’s other site where competing products are sold. When Complainant objected to certain hyperlinks because they connected to competing products, Respondent removed the hyperlinks. Complainant neither disputes or admits this. The Panel has not independently reviewed the site because this proceeding only considers the parties’ submission.
The web site bears a logo that says: “Funjetvacations.net – Your Funjet Vacation Experts.” It clearly discloses Respondent’s name (which allows a click through to Respondent’s full contact information). Based upon this Panel’s knowledge of the travel business as a consumer, this means Respondent re-sells Complainant’s products. The page also disclosures “Snug Harbor Travel is one of the largest Seller [sic] of Funjet Vacations.” Respondent is not claiming the trademark as their own.
Respondent has registered only one domain name, while Complainant has registered eight domain names (including funjetvacations.com).
Other cases cited by Respondent, K&N Engineering, Inc. v. Kinnor Services aka Phenomena Ltd., No. D2000-1077 (WIPO Jan. 19, 2001), Draw-Tite, Inc. v. Plattsburgh Spring Inc., No. D2000-0017 (WIPO March 14, 2000), ABIT Computer Corporation v. Motherboard Super Store, Inc., No. D2000-0399 (WIPO Aug. 8, 2000), Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, Case No. D2000-0819 (WIPO Oct. 16, 2000), Hewlett Packard Company, v. Napier, No. FA 94368 (NAF April 28, 2000), The Kittinger Company, Inc. v. Fisgus, No. AF-108A-B and The New Piper Aircraft, Inc. v. Piper.com, Case No. FA0094367 (NAF May 2, 2000), are more persuasive than the cases Complainant cites.
Most of the cases cited by Complainant can be distinguished as follows:
|
Case
name |
Aggravating factor |
Date |
|
Stanley Works v. Camp Creek, Case D2000-0113 |
registered multiple names (10) |
13-Apr-00 |
|
RT Quaife v. Bill Luton, Case D2000-1201 |
failed to respond honestly to customer inquiries |
14-May-00 |
|
Infinity2 v. Total Health & Wellness, Case FA0005000094867 |
violated distributorship agreement |
5-Jul-00 |
|
Gorstew v. Twinsburg Travel, Case FA0005000094944 |
registered multiple names (9) |
7-Jul-00 |
|
Ullfrotte AB v. Bollnas Imports, Case D2000-1176 |
confusion over who owns site/trademark |
23-Oct-00 |
|
Nikon et al v. Technilab, Case D2000-1774 |
sold competing goods using the trademark |
26-Feb-01 |
|
UVA Solar GmbH v. Mads Kragh, Case D2001-0373 |
distributor terminated |
7-May-01 |
|
Avon Products v. Lee, Case D2001-0272 |
confusion over who owns site/trademark |
22-May-01 |
|
Nokia v. Nokia Ringtones, Case D2001-1101 |
sold competing goods using the trademark |
18-Oct-01 |
There is no doubt an authorized distributor of a trademarked service may use the trademark in connection with the sale of the trademarked service. Without a specific demarcation of how far the trademark is used (and nothing specific was introduced into evidence here), it is clear the trademark may be used in advertisements for the trademarked service. The trademark may also be used on stationary and in brochures (once again in connection with the trademarked service). Although it is less common, distributors sometime construct words to represent telephone numbers that incorporate a trademark.
Respondent’s
web site was operational for about 8 months before Complainant contacted
Respondent.
Under these circumstances it can be
said Respondent meets the following safe harbors of the Uniform Dispute
Resolution Policy to acquire an interest in the disputed domain name:
4 (c)(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
4 (c)(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Registration and Use in Bad Faith
Under ICANN Uniform Domain Name
Dispute Resolution Policy Paragraph 4(b), the following non-exclusive factors
indicate registration and use of a domain name in bad faith:
(i) circumstances indicating that respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has 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 respondent engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has
intentionally attempted to attract, for commercial gain, Internet users to
respondent’s 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 respondent’s web site or location or of a
product or service on respondent’s web site or location.
"Bad faith" is defined in
Black's Law Dictionary 7th edition at page 134 as: "1. Dishonesty of
belief or purpose..". In Halsey v. Brotherhood (1881), 19 Ch. D. 386 Lord
Coleridge L.C.J. in determining whether there was evidence of mala fides stated
that the task of the Court was to consider "whether there is anything to
show that what the defendant stated was stated without reasonable and probable
cause".
Neither party provided the Panel
with a copy of the agreement between the parties establishing Respondent as a
reseller of Complainant’s services. The
Panel assumes this was not provided because it was silent on the issue at hand.
Complainant claims Respondent is
violating the “eLN agreement” it has with Snug Harbor Travel. First of all, the eLN agreement supplied is
between Respondent and Trisept Technology, LLC. For the purposes of this discussion, it is assumed Complainant
does business under the Trisept tradename (if not, it would have been helpful
to know the relationship between the entities). It is not even clear if (and if it does, how) the disputed
domain name hooks up to the web interface discussed in the eLN agreement. For the purposes of this decision, the Panel
assumes the hyperlinks somehow connect to the disputed domain name to the web
interface discussed in the eLN agreement.
Nothing in the eLN agreement explicitly says the “FunJet Vacations” mark
may (or may not) be used in a domain name.
Complainant claims Respondent
violated eLN agreement §3(b), which says in relevant portion, Respondent
"must comply with all rules, procedures and requirements from time to time
communicated by [Complainant] in connection with the installation, training,
maintenance and use of eLN." No
copies of any rules, procedures or requirements were provided. In addition, the use of a domain name
doesn’t really involve “the installation, training, maintenance and use of
eLN.” If Complainant didn’t want
Respondent to use its trademark in a domain name, it could have clearly imposed
this requirement in the eLN agreement.
Complainant next claims eLN
agreement §3(f) provides Respondent’s
“[s]ite may not contain or advertise any content, or link to a site that
contains or advertises any content, that is . . . inappropriate in
[Complainant’s] sole judgment.” This
provision regulates content of a web site and not the use of domain
names.
Respondent is using the domain name to generate hundreds of
thousands of dollars of revenue for Complainant. Respondent was not diluting Complainant’s mark.
Respondent raised the $50,000 offer to sell registration
rights to “express outrage” because Complainant contacted Respondent to request
use of the domain name cease and Complainant offered to purchase the
registration rights for $50. Respondent
spends $4,000 per month to advertise Complainant’s vacation packages and thus
was offended by Complainant’s actions.
While this is not the best way to conduct business, nothing in the
record as a whole indicates Respondent obtained the domain name primarily
for the purposes of reselling it, See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15,
2000) (finding that considering or offering to sell a domain name is
insufficient to amount to bad faith under the Policy; the domain name must be
registered primarily for the purpose
of selling it to the owner of trademark for an amount in excess of
out-of-pocket expenses); see also LifePlan
v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that “the
mere offering [of the domain name for sale], without more, does not indicate
circumstances suggesting that Respondent registered the domain name primarily
for the purpose of selling . . . the domain name to the Complainant”); see
also Sumner v. Urvan, WIPO
D2000-0596 (WIPO July 24, 2000) (finding no bad faith where Respondent did not
contact Complainant first, but rather, Complainant first contacted Respondent
about purchasing the domain name); see also General Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum
Mar. 16, 2000) (finding it significant that the Complainant, and not Respondent,
had initiated contact, inquiring about purchasing the domain name
<craftwork.com>, and that this fact tended to weigh against a finding of
bad faith).
It should be noted Complainant is not being blocked from
using its trademarks as a domain name because it has eight domain names
incorporating its marks, including funjetvacations.com (the .com
equivalent of the .net domain name in dispute in this case). No pattern of domain name registration abuse
is claimed here.
Respondent’s use of the disputed domain name does not
disrupt Complainant’s business because Respondent is actually selling
Complainant’s product. Likewise, there
is no evidence of actual confusion even though the domain name is the same as
one of Complainant’s registered marks.
The bad faith must exist both at the time of registration AND at the time of the complaint, Parker Hannifin Corporation v. East Bay Website Company, Case Number: AF-0587. Simply
terminating Respondent’s distributorship agreement would not allow this
particular case to fall under the ICANN Uniform Dispute Resolution Policy at a
future time.
DECISION
Having failed to establish all
three elements required under ICANN Policy, the Panel concludes that relief
shall be DENIED.
___________________________________________________
Houston Putnam Lowry,
Panelist and Chartered Arbitrator
Dated: May 29, 2003