WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Rockport Company, LLC v. Gerard A. Powell

Case No. D2000-64

 

1. The Parties

The Complainant is The Rockport Company, LLC, a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 220 Donald J. Lynch Boulevard, Marlborough, Massachusetts 01752. According to Register.com=s WHOIS database, the Respondent is Gerard A. Powell, an individual doing business as The Gerard Group.com and/or Marquise Management, each having a principal place of business at 210 West Fourth Street, East Stroudsburg, PA 18301.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is {1800ROCKPORT.com} (the "Domain Name"), which Domain Name is registered with Register.com, Inc. (the "Registrar").

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 15, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated February 19, 2000.

On February 22, 2000, a Request for Registrar Verification was transmitted to the Registrar. On February 25, 2000, the Registrar confirmed by reply e-mail that the Domain Name is registered with the Registrar that the Respondent was the current registrant of the name and that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy") is in effect. The reply also contained contact information for the Respondent.

The Panel finds that the Policy is applicable to this dispute.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on February 19, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in material formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on February 19, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of March 9, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail address specified in the Registrarí Whois confirmation, as well as to {postmaster@1800rockport.com}; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by facsimile to the listed fax numbers and express courier to all available postal addresses. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

In view of the Complainantís designation of single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Thomas D. Halket to serve as a panelist in Case No. D2000-0064, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

On March 9, 2000, Respondent submitted his response by e-mail .On March 15, 2000, the WIPO Center notified Respondent of its receipt of his response and certain deficiencies in it. Notwithstanding such deficiencies, the Panel has reviewed the response and given it appropriate weight in its findings.

Having received Thomas D. Halketís Statement of Acceptance and Declaration of Impartiality and Independence, on March 24, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date was April 6, 2000. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

 

4. Factual Background

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by the Respondent. Complainant owns the following U.S. trademarks:

(1) U.S. Trademark Registration No. 2105689 for AROCKPORT@ in connection with retail store services in the field of footwear, clothing, headgear, namely, hats, caps and visors, and bags, namely, fanny packs, knapsacks, tote bags, duffel bags, and athletic bags.

(2) U.S. Trademark Registration No. 2081955 for AROCKPORT@ in connection with educational services, namely conducting classes and distributing course material in connection therewith, in the field of physical fitness.

(3) U.S. Trademark Registration No. 1706924 for AROCKPORT@ in connection with clothing; namely, coats, headwear, jackets, pants, rainwear, shorts, socks, sweatpants and sweatshirts.

(4) U.S. Trademark Registration No. 1263015 for AROCKPORT@ in connection with Shirts, Handbags and Tote Bags.

(5) U.S. Trademark Registration No. 1075072 for AROCKPORT@ in connection with Footwear, namely shoes and moccasins.

Additionally, Complainant has over 200 International trademark registrations for the mark AROCKPORT,@ including trademark registrations worldwide in International Class 25, Aclothing, footwear and headgear,@ as well as trademark registrations with select international registrars in International Class 18, Aleather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery,@ and International Class 35, Aadvertising; business management; business administration; and office functions.@

Finally, the Domain Name corresponds exactly to Complainantís "800" telephone number.

The Complainantís use of its trademarks predate any use or registration of the Domain Name; its trademark registrations are in full force and effect, and have not been abandoned. Other than to register the Domain Name, Respondent has made no use of it and, in particular, no web site exists for the Domain Name. The URL for the Domain Name only brings up the Registrarís page.

On January 11, 2000, Respondent contacted Complainant by mail and notified Complainant of the domain registration. In particular, Respondent contacted Complainant and offered to sell the Complainant the Domain Name for the sum of $12,000.00, noting: "This domain corresponds exactly with your companyís existing television program."

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the trademarks registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint, but instead responded:

"I had purchased the domain name 1800rockport.com for my own use. I own in excess of a hundred domain names. The domain was purchased in the name of Marquise Management Company. In the past, I have sold similar names to cities that bear a like name to the name of which I had acquired. Such is the case with 1800rockport. Rockport.com had been taken when I researched the name. I have a friend who has various websites that promote cities across the country. Any name of a city that has more than three like cities we had been purchasing.

"As you may or may not be aware, there are three major cities in the United States by the name of Rockport (Rockport, Texas; Rockport, Indiana; Rockport, Massachusetts). Since the time of my ownership of this domain, I have not marketed the domain, I have not advertised the domain and I have not built a web page for the domain. I was simply housing the domain under my company name, which is Marquise Management, which has since been changed to thegerardgroup.com. I received an offer from my friend who was going to set up a domain featuring two of the above mentioned Rockport cities.

"Before I sold the domain to him, I contacted the Rockport Company and offered the domain for sale to them. They in turn demanded that I hand the domain over for no compensation whatsoever. I find this an unusual tactic. I especially find it strange insomuch as it is the name of three major cities in this country. I do not wish to give away or sell them this domain name. I would like to continue with the sale of this domain to a third party. Had I not been so kind as to let them know that in fact I was selling the domain name they would have never even known that it existed.

"I could absolutely see their case if they had an extremely unique name that did not correspond with major cities in the country or if the domain matched identically their trade name. In both cases it does not. I therefore ask your organization to do what seems to me to be quite reasonable and let me keep the domain and sell it to parties whom I wish to. In no way is this domain going to be used to compete with a company that sells shoes."

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no legitimate interests in respect of the domain name; and, (iii) the domain name has been registered and used in bad faith."

The Domain Name violates Paragraph 4(a)(i) of the Policy in that it is identical or confusingly similar to trademarks marks in which the Complainant has prior rights. The registration of the Domain Name is subsequent to the dates for the United States registrations of Complainantís trademarks. Accordingly Respondent had actual or constructive knowledge of Complainantís trademarks.

The Domain Name also violates Paragraph 4(a)(ii) of the Policy in that (i) Respondent is not a licensee of Complainant, and has not received any permission or consent to use the trademark ROCKPORT; (ii) Complainant has prior rights in that trademark which precede Respondentís registration of the Domain Name; and (iii) Respondent is not (either as an individual, business or other organization) commonly known by the name ROCKPORT.

Finally, the Domain Name violates Paragraph 4(a)(iii) of the Policy. To violate Paragraph 4(a)(iii) of the Policy the Respondent must both register and use the domain name in question in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001 (January 14, 2000). Paragraph 4(b) of the Policy provides some guidance on Paragraph 4(a)(iii) of the Policy. It provides:

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."

Subparagraph (i) is applicable. There is no question that an offer to sell the Domain Name to the Complainant was made for a price substantially in excess of the documented out-of-pocket costs directly related to the Domain Name, no such costs being alleged by Respondent. The only question is whether circumstances exist that indicate that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant. Respondent claims that he registered the Domain Name either for his own use or in order to sell it to a city with the name "Rockport". Yet the Domain Name is exactly the same as Complainantís "800" number and Respondent himself stated in his demand letter that the Domain Name corresponded "exactly with your companyís existing television program." The Panel notes that Respondent has made no use of the Domain Name and there does not appear to be any connection between the Respondent (or any of his businesses) and the Domain Name. The Panel also finds it hard to understand why a city with the name Rockport would be interested in a domain name with, what would be for that city, an irrelevant number, but a number which made the whole domain name correspond to anotherís "800" telephone number. Finally, the Respondent himself offers no explanation for his choice of the number "1800" as part of the Domain Name. Under these circumstances, the Panel feels that on balance the circumstances support the conclusion that subparagraph (i) is applicable.

Accordingly, the Panel finds that the Domain Name violates paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the trademark and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondentís Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name {1800ROCKPORT.com} be transferred to the Complainant.

 


 

Thomas D. Halket
Presiding Panelist

Dated: April 6, 2000