WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Surfdog, Inc. v. Dr. Charles Cooper
Case No. D2000-0065
1. The Parties
Complainant Surfdog, Inc. is a California corporation, with its principal place of business located at 1126 South Coast Highway 101, Encinitas, California 92024 USA.
Respondent Dr. Charles Cooper dba Triple C Enterprises ("Cooper") is an individual with his principal residence located at 370 Coleraine Place, Roswell, Georgia 30075 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <surfdog.com>. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on February 15, 2000 by email and on February 16, 2000 in hardcopy. The Complainant paid the required fee.
On February 15, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant. On the same date, the Center sent to the Registrar a request for verification of registration data. The Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <surfdog.com> is registered in the Respondent's name.
On February 18, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On February 18, 2000, the Center also sent to the Respondent, with a copy to the Complainant, a notification of the administrative proceeding together with copies of the Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is February 18, 2000.
On February 29, 2000, the Center received an email request from Respondent for an extension of time to respond. The same day, the Center granted the requested extension. On March 6, 2000, the Center received the request in hardcopy.
On March 13, 2000, the Center received an email Response explaining that Respondentís business was to surf the net which has nothing to do with Complainantís business. Respondent said that as for the Centerís guidelines he was not prepared to respond. No further information was provided. On March 15, 2000, the Center acknowledged receipt of the Response.
After receiving a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center notified the parties of the appointment of a single-arbitrator panel consisting of Richard W. Page, Esq. (the "Presiding Panelist").
On April 3, 2000, Respondent sent his Answers to Complainant Claims and a letter addressed to the Presiding Panelist. Each of these submissions was beyond the date established by the Center for submissions by Respondent. The Presiding Panelist concludes that these submissions are not prejudicial to Complainant and approves the late-filed Answers to Complainant Claims and the letter addressed to the Presiding Panelist.
4. Factual Background
In or about 1992, the principal of Surfdog, Inc., David B. Kaplan ("Kaplan"), began doing business as "Surfdog Productions" which created, produced and sold a variety of goods and services using the mark SURFDOG. In or about 1997, Kaplan incorporated Surfdog, Inc. and assigned to it the goodwill associated with Surfdog Productions and the mark SURFDOG together with all related marks.
Complainant is a well-known, worldwide vendor and provider of goods and services including musical sound recordings such as prerecorded audiotapes and compact discs featuring the music of individual artists or compilations of music by various artists; live entertainment services; surfing information such as reports, forecasts and surf related music; merchandise such as an extensive clothing and accessories line including hats, t-shirts, sweatshirts, shorts, coffee mugs and stickers; marketing, consulting and music supervision services in the action and extreme sports market; and related products and services.
Complainantís products and services include compact discs released by the record label "Surfdog Records" under the titles "MOM: Music for Our Mother Ocean," "MOM II: Music for Our Mother Ocean," "MOM III: Music for Our Mother Ocean," and albums by the musical artists Butthole Surfers, Gary Hoey, Pato Banton, Dan Hicks & His Hot Licks, Jeremy Kay, Jesse Dayton, Alien Fashion Show, Sunchild, Harry Perry and Sprung Monkey. Complainant also provides marketing, promotion and consulting services under the name "Surfdog Marketing" in the field of active and extreme sports and lifestyles, including music listening and supervisory services, and consulting services with respect to corporate sponsorships and product placements for events, films and videos.
In connection with these goods and services, Surdog Inc. owns, among other trademarks, the world famous mark SURFDOG. Surfdog, Inc. has spent substantial time, effort and money prosecuting and registering the mark SURFDOG with the United States Patent and Trademarks Office. Surdog, Inc. has been granted trademark registration numbers 1,913398; 1,966,377 and 2,063,056 for SURFDOG in numerous classes of goods and services. Surfdog, Inc. is the registered owner of the trademark registration number 1,931,398. Kaplan dba Surfdog Productions is in the process of assigning trademark registration numbers 1,966,377 and 2,063,056 to Surfdog, Inc.
Surfdog, Inc. has established websites located at the domain names <sdog.com>, <surfdog.net>, <surfdogrecords.com> and <surfdogrecords.net>.
Respondent has no connection or affiliation with Surfdog, Inc. and has not received any license or consent, express or implied, to use the SURFDOG mark. Respondent registered the domain name <surfdog.com> on May 14, 1995. Since then the content which Respondent has loaded onto the website at issue in this dispute www.surfdog.com includes low quality, under-construction graphics, poor layout and lack of substance provided by its provider Mindspring. Respondent has not used the domain name <surfdog.com> or the website www.surfdog.com for the bona fide offering of goods and services.
Since registering the SURFDOG mark on October 31, 1995, Kaplan has offered to purchase the domain name <surfdog.com> from Respondent, who demanded significant payment. As recently as February 9 and October 12, 1999, Kaplan offered to purchase the domain name for US$1,000 representing the amount of Respondentís costs to register the domain name. Respondent demanded US$100,000. In his April 3, 2000 Answers to Complainant Claims, the Respondent explained, "Dr. Cooper asked Mr. Kaplan to stop calling him and hoped that by telling him that it would cost him $100,000 would merely put an end to his harassing phone calls."
5. Partiesí Contentions
A.Complainant contends that the domain name <surfdog.com> is identical with and confusingly similar to its mark SURFDOG pursuant to the Policy paragraph 4(a)(i).
B. Complainant contends that Respondent has no rights or legitimate interest in the domain name <surfdog.com> pursuant to the Policy paragraph 4(a)(ii).
C. Complainant contends that Respondent registered and is using the domain name <surfdog.com> in bad faith in violation of the Policy paragraph 4(a)(iii).
D. Respondent presented no evidence challenging the contention that the domain name <surfdog.com> is identical with or confusingly similar to the mark SURFDOG.
E. Respondentís only evidence that it possessed rights or legitimate interest in the domain name <surfdog.com> was a statement that Respondent surfs the net.
F. Respondent presented no evidence that its registration and use of the domain name <surfdog.com> is in good faith.
6. Discussion and Findings
Even though Respondent has filed a Response essentially containing no evidence attacking the contentions of Complainant, the Presiding Panelist hereby reviews the evidence before him to determine whether the Complainant has supported each of the required elements in its contentions within the existing record.
Identity or Confusing Similarity.
The domain name <surfdog.com> contains the identical phrase as the mark SURFDOG. Therefore, the Presiding Panelist finds that the domain name <surfdog.com> is identical with and confusingly similar to the mark SURFDOG.
Rights or Legitimate Interest.
Complainant asserts, and Respondent fails to contest, that there has been no activity conducted under the domain name <surfdog.com> and no content posted of the website www.surfdog.com. Other than registration of the domain name, Respondent appears to have incurred no expenses and made no use of the <surfdog.com> domain name. Therefore, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the domain name <surfdog.com>.
Complainant began using the SURFDOG mark in 1992. Respondent registered the domain name <surfdog.com> on May 14, 1995. When requested by Complainant to transfer the domain name, Respondent has demanded the payment of sums many times in excess of his cost in registering the domain name. The most recent demands have been for US$100,000. In his April 3, 2000 Answers to Complainant Claims, the Respondent explained, "Dr. Cooper asked Mr. Kaplan to stop calling him and hoped that by telling him that it would cost him $100,000 would merely put an end to his harassing phone calls." The Presiding Panelist does not find this explanation of the demand for payment of US$100,000 credible.
From these circumstances, the Presiding Panelist infers that Respondent knew about the commercial activities of Complainant when the domain name was registered. In addition, the Respondentís primary purpose in the registration and use of the domain name appears to be to profit from its sale to the legitimate owner. Therefore, the Presiding Panelist concludes that the registration and use of the domain name <surfdog.com> by Respondent is and has been in bad faith.
The Presiding Panelist concludes (a) that the domain name <surfdog.com> is identical with and confusingly similar to the SURFDOG mark registered by Complainant, (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel grants the request that the domain name <surfdog.com> be transferred to Complainant Surfdog, Inc.
Richard W. Page
April 3, 2000