WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bandon Dunes L.P. v. DefaultData.com
Case No. D 2000-0431
1. The Parties
Complainant is Bandon Dunes, L.P. (hereinafter "Bandon Dunes"), a Delaware limited partnership composed of Cascade Ranch, an Oregon Corp., having a principal place of business at 57744 Round Lake Road, Bandon, Oregon 97411, U.S.A.
According to the Registrar of the domain name at issue, Respondent is currently listed with the Registrar as Brian Wick of DefaultData.com. Respondentís Post Office address is P.O. Box 481002, Denver CO 80248, U.S.A. and the email address is email@example.com.
Complainant notes that previous searches it made of the Whois records in December, 1999, showed that the registrant was previously listed as NameIsForSale.com and Ban, Don & Dunes, both of the same Post Office and email addresses as the current registrant. The contact person according to the present listing is "Contact, Billing, Telephone: 303-893-0888", with the same email address of firstname.lastname@example.org. Complainant asserts, on information and belief, that Brian G. Wick is the administrative contact listed as Brian Wick in the Whois results of a December 10, 1999, Whois search and is the registered user of the account at the above email address. It further asserts that Mr. Wick maintains a residence at the following address: Brian G. Wick, 2230 S. Monroe Street, Denver CO 80210, U.S.A. Respondent does not deny these assertions, but Mr. Wick filed a declaration where he stated:
"1. I, Brian Wick, am the owner and president of American Distribution Systems, Inc., and in that capacity I registered the Internet domain <bandondunes.com> on October 10, 1999."
2. The Domain Name and Registrar
The domain name at issue is bandondunes.com registered with Register.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Bandon Dunes on May 12, 2000, by e-mail and on May 16, 2000, in hard copy. The Complainant made the required fee payment. On May 19, 2000, the Center acknowledged the receipt of the Complaint to Complainantís authorized representative, and assigned this matter Case No. D 2000-0431.
On May 17, 2000, the Center requested Register.com, Inc. to verify the registration data. On May 18, 2000, Register.com, Inc. confirmed that it is the Registrar of the domain name registration and, inter alia, that Brian Wick of DefaultData.com is the current registrant.
Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on May 19, 2000, sent to Respondent, with a copy to the Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint. The formal date of the commencement of this administrative proceeding is May 19, 2000.
On June 14, 2000, the Center acknowledged to the parties that it had received the Response from the Respondent on June 9, 2000. This response indicates it was filed by "Respondent, Brian Wick, through counsel."
On June 22, 2000, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Presiding Panelist").
On June 23, 2000, the Center received a reply from the Complainant to the response filed by the respondent.
4. Factual Background
The Complainant is the owner of the federally registered United States service mark "Bandon Dunes" for "golf courses, golf club services, providing facilities for golf tournaments, entertainment in the nature of golf tournaments." This registration was filed on June 3, 1999, and issued on March 14, 2000.
The Bandon Dunes Golf Course only officially opened on May 2, 1999. Nevertheless, GOLFWEEK newspaper ranked the course 10th in the United States among all courses built in the last 40 years. In the March 13, 1999, issue of GOLFWEEK (as cited by the Complainant), it was reported that the developer, Mike Keiser, first saw the land where the course is located in 1993. The earliest dated publication submitted by the Complainant which mentions Bandon Dunes is from late 1998. Between that time and the date of Respondentís registration, Complainant has submitted several other publications attesting to the publicity this course has received and its recognition in the golfing community as one of the best golf courses in the United States.
On October 10, 1999, the Respondent registered the domain name bandondunes.com. Respondentís registration information with Register.com listed the Registrant of bandondunes.com initially as "NameIsForSale.com, PO Box 481002, Denver, CO 80248" and the Administrative Contact as "Wick, Brian email@example.com 303-893-0888." On December 19, 1999, after receiving a demand letter from Complainant, Respondent changed the registration information to list the Registrant as "Ban, Don, & Dunes," under the same address as before. The Administrative Contact was also changed to "Contact, Billing," under the same e-mail address and telephone number as before. After receiving another demand letter from Complainant, Respondent again changed the registration information, this time listing the Registrant as "DefaultData.com." The address and Administrative Contact information remained the same.
5. Partiesí Contentions
Complainant has requested that the domain name be transferred to Complainant because:
(1) domain name bandondunes.com is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name;
(3) the domain name was registered and is being used in bad faith.
Respondent has filed a response stating that:
(1) Complainant failed to prove that its Mark is either famous or distinct;
(2) Complainant failed to prove that Respondentís use of the Mark is likely to cause confusion;
(3) Respondentís use of the Mark was non-commercial and thus fair use;
(4) Respondentís use was not in bad faith; and
(5) the Anticybersquatting Consumer Protection Act of 1999 provides a "safe harbor" that precludes finding bad faith.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration.
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.
I. Jurisdiction and Procedure
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules). No objection has been made that the necessary parties are not before this tribunal, nor that this tribunal lacks any authority to rule upon the requested relief.
The latest Whois search conducted by Complainant showed the registrant to be DefaultData.com. The legal status of this entity is unknown. Both Complainant and WIPO served the Complaint on this entity.
Register.com subsequently advised that the registrant was "Brian Wick of DefaultData.com." The response was filed by "Respondent Brian Wick, through counsel." Mr. Wick filed a declaration where he affirmed he registered this domain name in the capacity as owner and president of American Distribution Systems, Inc.
In this case, the Presiding Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. Despite some imprecision as to the correct name of the Respondent, the Presiding Panelist is likewise satisfied that all necessary parties having possible rights in this dispute have been given notice and, indeed, have appeared. This Tribunal has jurisdiction to decide this dispute as presented.
The Rules only provide for a Complaint and Response. Para. 12 of the Rules provide that the Panel may request, in its sole discretion, further statements from either of the parties. Complainantís Reply was not requested. It has not been considered in making this decision.
II. The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark
Complainant claims to have been using the mark, "Bandon Dunes," in commerce since "at least as early as 1991," but offers no evidence of use dating back that far. Its service mark registration claims use in interstate commerce since June 1998. Based on the numerous golf-related publications provided by Complainant, it is clear that the Complainant built up a name and reputation in the golf industry at least as early as late 1998, prior to Respondentís registering the domain name.
Respondent raises several arguments as to why its domain name should not be found to be identical to or confusingly similar to Complainant's service mark for Bandon Dunes. It contends that the public would be more likely to recognize the generic word stream "Band On Dunes" or "Ban Don Dunes." As purported evidence of this, Mr. Wick said he did his own a survey of 58 people. He said none of them associated the domain name with the name Bandon Dunes. These survey results, however, were not provided. Rather two "typical responses" were provided. The "typical" question was: "What words or phrase does the following Web Site translate to? bandondunes.com". One response said band on dunes and the other Band On Dunes. The survey respondents were identified only as Sandra and Julie.
This purported survey is not persuasive on this point. Respondent does not supply the survey questions and answers, methodology or execution. It also does not identify how the survey participants were selected. To be relevant, the survey must be of the relevant universe of persons whose attitudes and states of mine are at issue.
As discussed hereafter, Respondent also asserts that it adopted this domain name to exhibit parody. A parody, of course and by definition, is an imitation of something else. The claim of a parody is inconsistent with the claim that no one would identify bandondunes.com with Complainant Bandon Dunes. As stated in Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987):
"In one sense, a parody is an attempt Ďto derive benefit from the reputationí of the owner of the mark, Sicilia, 732 F.2d at 431, if only because no parody could be made without the initial mark."
Nowhere in Mr. Wick's declaration does he offer any reason for adopting the bandondunes.com domain name which is in anyway inconsistent with the fact that this domain name is associated with Bandon Dunes, the Complainant. Also, as discussed hereafter, the original registrant was NameIsForSale.com. The name bandondunes.com would have little value for sale unless it was identical or confusingly similar to the service mark Bandon Dunes.
Based on all of the facts, I find that Respondentís domain name "bandondunes.com" is identical or confusingly similar to Complainants registered service mark "Bandon Dunes." Therefore, the requirement of Paragraph 4(a)(i) is met.
III. Rights or Legitimate Interests in Respect of the Domain Name
Paragraph 4(c) of the Policy enumerates how a respondent may establish rights to and legitimate interests in a domain name. The evidence presented shows that Respondent never attempted to use bandondunes.com in connection with offering any goods or services, nor any business of any kind. Respondent admits this. Therefore, subparagraphs (i) and (ii) of Para. 4(c) are inapplicable. Paragraph 4(c)(iii) does describe a circumstance under which the Respondent can demonstrate such rights and interests even without a commercial use. This is where "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." (emphasis added).
Respondent claims that his use of bandondunes.com was as a public not-for-profit comedy forum and parody, and thus fair use. Simply stating that the domain name was registered as a parody is not enough. There must be actual use by this time since the domain name was registered in October 1999. Respondent included with his response a purported screen shot of the alleged parody website. This is not posted at bandondunes.com. This is confirmed by Complainantís search using the domain name on April 19, 2000, and the presiding Panelistís search on July 6, 2000. There is nothing posted.
Respondent cites Campbell v Acuff-Rose Music, Inc. in support of the proposition that, "[F]irst Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed." 510 U.S. 569, 583 (1994). In that case, Justice Souter made it clear that it is not for the court to determine the worth of a work, "outside the narrowest and most obvious limits." Id. at 582. But it is these "narrowest and most obvious limits" that are at issue in this case. Justice Souter stated that, "[t]he threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived." Id. While the Campbell Court did find that a parody existed, the facts are quite different in this case. Respondent in this case, by registering a domain name and providing a simple un-posted web page, does not even meet the threshold requirement for a parody.
Respondent has also not shown that the registration was without intent for commercial gain or to tarnish the service mark at issue. Facts tending to show there was such intent include the fact that the initial registrant was NameIsForSale.com, registration by respondent of a large number of domain names associated with trademarks of third parties in which it has no legitimate interest and the fact that Complainant alleges (without dispute) that Respondent established a disparaging web page using the name of Complainant's attorneys to retaliate against Complainantís attorneys for seeking to enforce the rights asserted in this matter.
The evidence presented demonstrates that Respondent had no rights or legitimate interests in respect to the domain name at issue. Respondent is not undertaking a legitimate fair use. Therefore, the requirement of Paragraph 4(a)(ii) of the Policy has been proved by the Complainant.
IV. Bad Faith
The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."
Respondent claims that it intends to engaged in social and political satire, perhaps criticizing the Complainantís business. Even if true, which it is not, this does not allow appropriation of this domain name. As the arbitrator said in Compagnie de Saint Gobain v. Com-Union Corp., ICANN Case No. D2000-0020,
"[i]t goes without saying that shareholders or other interested parties have the right to voice opinions, concerns and criticism with respect to a listed company and that the Internet constitutes an ideal vehicle for such activities. The issue at hand is however not as Respondent seems to contend, the freedom of speech and expression but the mere choice of the domain name used to exercise this inalienable freedom of speech and expression. When registering the Domain Name, Respondent knowingly chose a name which is identical and limited to the trademark of Complainant. ... Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names. By failing to do so, and by knowingly choosing a domain name which solely consists of Complainantís trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties."
As to the original registration, Complainant has shown that the registration was made in bad faith. The evidence indicates that, at the time Respondent registered the domain name, Respondent was aware that that Complainant had an interest in the domain name. The initial registrant was listed as "NameIsForSale.com." Mr. Wick claims that this name was erroneously inserted automatically by the Registrar. However, he provides no evidence about what he submitted or why the Registrar would have done this "automatically." He provides no evidence from the Registrar.
He also states he changed the registrant from NameIsForSale.com when he learned of the error in January. The evidence shows otherwise. It shows that Complainantís counsel wrote to Mr. Wick at NameIsForSale.com on December 17, 1999, demanding immediate abandonment of the domain name. There was no response to this letter, but by December 23, 1999, the registrant had been changed to Ban, Don & Dunes, at the same Post Office and email addresses. Moreover, Mr. Wick deleted his name as the "administrative contact" in the registration information and substituted the name "Contact, Billing." It was only after complainantís follow-up letter of December 23, 1999, again demanding abandonment, that the registrant was changed from Ban, Don & Dunes to DefaultData.com.
Additional evidence indicates that the Respondent has registered a large number of domain names associated with the marks or trade names of third parties in which it has no legitimate interest and that following further communication from the Complainantís attorney by the letter on December 23, 1999, Applicant is alleged to have established a disparaging web page at the domain name danconapflaum.com (the Complainantís attorneys are the law firm of DíAncona & Pflaum LLC). This was said to retaliate against the Complainantís attorneys for seeking to enforce the rights of the Complainant. The Response does not address nor dispute these allegations.
Considering all of the evidence presented by the parties, I find that the Respondent did both register and use the domain name in bad faith. Therefore, the requirement of Paragraph 4(a)(iii) of the Policy has been proved by the Complainant.
V. Safe Harbor Under the Anticybersquatting Consumer Protection Act of 1999
Respondent asserts that Congress provided that the Anticybersquatting Consumer Protection Act ("ACPA") provides a safe harbor for conduct that the defendant subjectively believed was not unlawful. It specifically cites 15 U.S.C. ß 1125(d)(1)(B)(ii), which provides:
"bad faith intent described under subparagraph (A) shall not be found in any case which the court determines that the person believed or had reasonable grounds to believe that use of the domain name was fair use or otherwise lawful."
Based on all of the evidence in this case as set forth above, I do not find Respondent believed that it was engaging in fair use or in otherwise lawful conduct.
Additionally, I do not believe this section protects any and all subjective beliefs, no matter how unreasonable or bizarre. Indeed, the case cited by Respondent imports the notion of reasonableness when assessing subjective belief.
"ACPA specifically precludes a finding of bad faith where a domain name holder reasonably believes that the registration of the domain name was fair use or otherwise lawful." Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936 (S.D.N.Y. 2000). (Emphasis added)
Finally, I note that this United States statute provides a remedy in a civil action in the United States Courts for certain activities. The statute does not apply to these proceedings.
For all of the above reasons, I find that this statute does not immunize or otherwise provide a safe harbor to Respondentís activities in this arbitration.
Claimant has proved the necessary elements that the names are identical or confusingly similar, that Respondent has no rights or legitimate interests in the domain name and that Respondent registered the domain name in bad faith and is using it in bad faith. Therefore, the remedy requested by Complainant is granted. Respondent is required to transfer the domain name bandondunes.com to Complainant.
Thomas L. Creel
Dated: July 13, 2000