WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SunFest of Palm Beach County, Inc. v. Electronic System Technologies, Inc. et al.
Case No. D2000-0631
1. The Parties
Complainant is SunFest of Palm Beach County, Inc., a Florida non-profit corporation, with offices at 525 Clematis Street, West Palm Beach, Florida 33401 USA.
Respondents are Electronic System Technologies, Inc. and Sunfest.net (collectively referred to as "Respondents") with mailing addresses of P.O. Box 1625 Lake Worth, Florida 33460-1625 USA. Respondents each list their administrative contact as John Becker of John C. Becker, Inc., a Florida corporation, with a principal place of business at 3540 Forest Hill Boulevard, #209, West Palm Beach, Florida 33406 USA, and a mailing address of P.O. Box 1666, Lake Worth Florida 33460 USA.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are "sunfest.com" and "sunfest.net" (the "Domain Names"). The registrar is Network Solutions, Inc. (the "Registrar"), 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant in hardcopy on June 19, 2000.
On June 22, 2000, the Center sent a Request for Verification to Network Solutions, Inc. requesting verification of registration data. On July 3, 2000, Network Solutions, Inc. confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondentsí names.
On July 4, 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 July 4, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
Between June 22 and September 5, 2000, the Center exchanged messages with the Complainant and Respondents regarding the case.
On July 14, 2000, the Center received a hardcopy of a Response from Respondent. On August 14, 2000 the Center acknowledged receipt of the Response.
After the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Sole Panelist"), the Center notified the parties of the appointment of a sole-arbitrator panel.
4. Factual Background
Complainant operates the SUNFEST® music, art and waterfront festival. The SUNFEST® festival has been held annually for the last eighteen years during the first week of May in Palm Beach County, Florida. In 2000, SUNFEST® drew over 325,000 attendees from throughout the United States, making it one of Palm Beach Countyís largest tourism attractions. Complainantís SUNFEST® festival was named (i) one of the top 100 festivals in the country by the American Bus Association in 2000; (ii) the "Top Event in Florida" by members of the International Festivals and Events Association in 1999; and (iii) the "Music Event of the Year" by Event Business News in 1998. In addition, Complainantís SUNFEST® festival has been honored for ten consecutive years as one of the top twenty events in the Southeastern United States by the Southeast Tourism Society. Nationally and internationally-known performers, such as Crosby, Stills and Nash, Ray Charles, Bonnie Raitt, Hootie & the Blowfish, Lenny Kravitz, Jackson Browne, Patti Labelle, Hall & Oates and Al Jarreau have performed at Complainantís SUNFEST® festival. Complainantís SUNFEST® festival also attracts large corporate sponsors, such as Bank of America, BellSouth, Budget Rent-A-Car, Coca-Cola, Florida Crystals, Ericcson and U.S. Airways. In 2000, Complainantís SUNFEST® festival generated over $3.3 million in revenue.
Complainant owns U.S. federal registrations for the SUNFEST mark (Reg. No. 1,847,930) and SUNFEST and DESIGN mark (Reg. No. 1,850,091). In addition, Complainant owns a Florida State registration for the SUNFEST and DESIGN mark (Reg. No. T16369).
Complainant has been using the mark SUNFEST® to promote its annual festival since May 6, 1983. Complainant registered the Internet domain name "sunfest.org" on June 22, 1996, and has operated a website to promote its SUNFEST® festival at this domain name since that date.
Complainant has invested a substantial amount of time and resources to promote and advertise its SUNFEST® festival and the www.sunfest.org" website. For example, Complainant spent approximately $175,000 on marketing and research for the 2000 SUNFEST® festival. In 2000, Complainantís SUNFEST® festival generated nearly $3 million in advertising value, promotional value and editorial coverage in local and national media outlets. Over the last five years, television station WPBT has produced yearly one-hour television specials about the SUNFEST® festival, which have been telecast in over 100 markets throughout the United States. Complainant also markets merchandise bearing the SUNFEST® mark, such as shirts, hats, compact discs and commemorative prints. Sales of such merchandise generated over $230,000 in revenues in 2000. Since the "www.sunfest.org" website was launched, Complainant has devoted approximately $12 million to advertise and promote the SUNFEST® festival, and Complainantís "www.sunfest.org" website has been fully integrated into Complainantís marketing strategy.
Traffic to Complainantís website has continued to increase since the websiteís launch. In 2000, the website generated over 500,000 page views between January and mid-May.
As a result of the foregoing, Complainant has developed valuable goodwill in the SUNFEST® mark, and consumers associate the mark exclusively with Complainantís SUNFEST® festival and its "www.sunfest.org" website.
On October 30, 1998, without Complainantís knowledge or consent, Respondent Electronic System Technologies, Inc registered the "sunfest.com" domain name. On March 1, 2000, after Complainant became aware of Respondentís registration of the "sunfest.com" domain name and had notified Respondent of its objections to Respondentís use and registration of the "sunfest.com" domain name, Respondents (without Complainantís knowledge or consent) registered the "sunfest.net" domain name. Respondents are not licensees of Complainant nor are they authorized to use Complainantís SUNFEST® mark. On March 27, 1999, Respondents registered the fictitious name "SunFest" with the State of Floridaís Division of Corporations to allow Respondents to conduct business under that name. On March 16, 2000, Respondents notified Complainant that Respondents would cancel this registration. Respondents canceled registration of the fictitious name "SunFest" on April 10, 2000. On March 2, 2000, John C. Becker, Jr., filed to incorporate a company with the State of Floridaís Division of Corporations under the name Solutions Using Networks For Electronic System Technologies.
Respondentsí business is located in Lake Worth, Florida, nine miles from West Palm Beach, Florida, the location of Complainantís SUNFEST® festival.
On February 1, 2000, shortly before Complainant first contacted Respondent, the home page of Respondentsí website at "www.sunfest.com"claimed that the site was "The Official Site of SUNFEST Interactive Media." Complainant alleges that Respondents have never offered any services under the SUNFEST INTERACTIVE MEDIA mark. The home page contained links to other websites associated with Respondents, including: (1) web hosting services at JCBnet.com and (2) LakeWorthCity.com. The home page of the site also contained references to Respondentsí other businesses, such as "BECKER SYSTEMS Ė Business PCís," "ProFax Ė Professional Faxing" and "BCF Computer Forms." The home page also contained links to activities advertised on Respondentsí www.lakeworthcity.com" website, including a "Street Painting Festival" and the "Maryanne Webber Gallery."
In February, 2000, Complainant contacted Respondents by phone and conveyed Complainantís objections to Respondentsí registration of the "sunfest.com" domain name and use of the SUNFEST® mark. Respondents proposed inserting a link on the "www.sunfest.com" website that would direct visitors to Complainantís "www.sunfest.org" website. Complainant rejected this proposal.
On or about March 1, 2000, Complainant contacted Respondents again to express Complainantís objection to Respondentís filing to operate in Florida under the "SunFest" name. Complainant offered to pay Respondentsí costs to develop a new name and website. Respondent refused this offer.
On March 2, 2000, the day after the second telephone conversation between Complainant and Respondents concerning Respondentsí use and registration of the "sunfest.com" domain name, John C. Becker, Jr., filed for incorporation with the State of Floridaís Division of Corporations under the name Solutions Using Networks For Electronic System Technologies. This corporate name corresponds to the acronym S.U.N.F.E.S.T. Respondents began to use the S.U.N.F.E.S.T. acronym on the "www.sunfest.com" website.
On March 8, 2000, Complainant again contacted Respondents. During this discussion, Respondents offered to sell the "sunfest.com" domain name to Complainant but the parties could not agree on a price. Later that day, Respondents sent Complainant an email asserting that, despite their discussions about sale of the "sunfest.com" domain name, the domain name was not for sale. On the same day, Respondents posted a page on their website criticizing Complainantís concerns about the Respondentsí use and registration of the "sunfest.com" domain name. Respondents subsequently removed this page from the website.
Respondents are currently using the "sunfest.com" domain name to display links to business ventures of Respondents, as well as to list information about various "Sunfest" festivals. Respondents do not currently operate an active website at "www.sunfest.net". On the "www.sunfest.com" website, Respondents state their intention to have a website to link visitors to festivals around the U.S. and North America.
Respondents assert that John C. Becker, Inc. was established as a Florida corporation in 1988 and offered computer support services such as custom database design work, installation and training of computer systems, local and wide area networks, hardware, software, computer forms, website hosting and design, and Internet access services. Respondents further assert that they put a website into use in November 1988.
John C. Becker, Inc. created Sunfest Interactive Media as one of its divisions and service marks to handle its website services and to offer its full line of services. Respondents contend that Solutions Using Networks for Electronic System Technologies, Inc. was created as a successor entity to Sunfest Interactive Media pursuant to the mutual agreement of the parties.
For three years (since 1997), Sunfest Interactive Media has sponsored, done website design and provided website hosting for street painting festivals in Palm Beach County, Florida. Respondents registered "sunfest.com" on October 30, 1998 and "sunfest.net" on March 1, 2000.
5. Partiesí Contentions
A. Complainant contends that it has registered trademarks in SUNFEST®. Complainant further contends that the Domain Names are identical with and confusingly similar to the SUNFEST® trademarks pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondents do not contest Complainantís assertion that it has registered trademarks SUNFEST® or that the Domain Names are identical with the registered trademarks.
Respondents contend they have rights or legitimate interests in the Domain Names.
Respondents deny that their registration and use of the Domain Names are in bad faith.
Respondents contend that Complainant is engaged in reverse domain name hijacking.
6. Discussion and Findings
Identity or Confusing Similarity.
The second-level domain name of each of the Domain Names, "sunfest", is identical to Complainantís SUNFEST® mark. Therefore, the Panel finds that the Domain Names are identical with to the SUNFEST® trademarks owned by Complainant pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
Complainant contends that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii). Complainant asserts that Respondents have never been authorized by Complainant to use the SUNFEST® trademarks in any way. Respondents assert that the creation of Solutions Using Networks for Electronic System Technologies, Inc. was by mutual agreement between the parties. However, the Panel finds that the evidence of such mutual agreement is lacking and that Respondents have never been authorized by Complainant to use the Domain Names for any of Respondents divisions or purported service marks.
The Policy paragraph 4(c) allows three non-exclusive methods for Respondents to demonstrate that they have rights or a legitimate interest in the Domain Names:
(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.
For purposes of the Policy, Section 4(c)(i), Respondents assert that John C. Becker, Inc. has provided Internet and computer related services, including a website, since 1988. The evidence indicates that the Domain Names were registered after Respondents undertook the sponsorship and rendition of website services for street fairs in Palm Beach County, Florida. The Domain Names were registered in October 1998 and March 2000 after Respondents had begun to represent another street fair or festival. The Panel finds that Respondents registered the Domain Names with actual knowledge of the existence of the rights of Complainant and with constructive knowledge of its registered trademarks. The offering of information regarding street fairs together with computer services is not a bona fide offering of goods and services.
In addition, Respondentsí links from the "www.sunfest.com" website to other businesses owned by Respondents are not serious preparations to use the "sufnest.com" domain name in a bona fide offering of goods and services. See Easy Jet Airline Co. v. Steggles, Case No. D2000-0024 (WIPO March 17, 2000) (links from the disputed domain name to another website unrelated to the purported bona fide business do not establish any serious preparations to use the domain name in a bona fide offering of goods and services). Therefore, Respondents have not met their burden under the Policy, Section 4(c)(i).
The only attempts by Respondents to establish business entities with names similar to the Domain Names occurred after the this dispute arose. Therefore, Respondents have not met their burden under the Policy, Section 4(c)(ii).
The Panel finds that, given the timing and circumstances surrounding the registration of the Domain Names, Respondents are attempting to misleadingly divert customers to their website. The services offered by Respondents on their website include computer services intended for commercial gain. Therefore, Respondents have not met their burden under the Policy, Section 4(c)(iii).
The Panel concludes that Respondents have not proven that they have rights to or a legitimate interest in the Domain Names under the Policy paragraph 4(a)(iii).
Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:
(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.
The discussions regarding sale of the Domain Names are not sufficient to conclude that Respondentsí primary purpose was selling, renting or transferring the Domain Names to Complainant. Therefore, Complainant has failed to demonstrate bad faith under the Policy, Section 4(b)(i).
In the analysis above of rights or legitimate interests, the Panel concluded that Respondents have misleadingly attracted consumers, creating the impression that the websites "www.sunfest.com" and "www.sunfest.net" are related to Complainant. Respondents have then offered their commercial services to the customers so attracted. See CSA International v. Shannon, Case No. D2000-0071 WIPO March 24, 2000), "use of an Internet address Ö identical Ö to that of the name, Internet address and trademarks of the Complainant must inevitably and misleadingly divert consumers to that address." Coupled with the commercial gain sought by Respondents for its businesses, the requisite bad faith under Policy has been shown. Id. See also Easy Jet Airline Co. v. Steggles, supra; Home Interiors & Gifts, Inc., v. Home Interiors, Case No. D2000-0010 (WIPO March 7, 2000) (bad faith found where, inter alia, Respondent used website for links to businesses of others). Therefore, the elements of paragraph 4(b)(iv) have been met.
The Panel finds that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Panel concludes (a) that the Domain Names "sunfest.com" and "sunfest.net" are identical with Complainantís registered trademarks in SUNFEST®; (b) that Respondents have no rights or legitimate interest in the Domain Names; and (c) that Respondents have registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to SunFest of Palm Beach County, Inc.
Richard W. Page
October 3, 2000