WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Quinault Indian Nation v. RDA Management Inc.
Case No. D2001-1406
1. The Parties
Complainant is The Quinault Indian Nation, a federally recognized Indian Tribe, with a Reservation located near Taholah, Washington, USA.
Respondent is RDA Management Inc., an entity located in Ocean Shores, Washington, USA. The administrative and billing contact for the domain name is Mr. Dick Alm, of the same location.
2. The Domain Names and Registrar
The domain names at issue are: <quinaultbeachresort.com>, <quinaultbeachresort.org>, <quinaultbeachresort.net> (collectively, the "Domain Names").
The registrar is Network Solutions, Inc. ("NSI").
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy of the WIPO Arbitration and Mediation Center ("the Supplemental Rules", "the Center").
The Complaint was submitted on November 28, 2001, naming Dick Alm as the Respondent. On December 4, 2001, Network Solutions, Inc. confirmed the registration for the Domain Names at issue, including that the registrant of the Domain Names is RDA Management, Inc. On December 4, 2001, the Center notified the Complainant that the Complaint did not correctly identify the registrant of the Domain Names as the Respondent. On December 7, 2001, (by email) and December 11, 2001, (in hard copy) the Complainant filed an Amended Complaint, identifying RDA Management Inc. as the Respondent. On December 7, 2001, the Center formally notified the Respondent of the Complaint (as amended) and the Commencement of this Administrative Proceeding. The Notification set December 27, 2001, as the due date for response. On December 28, 2001, the Respondent was notified that it was in default for failing to file a Response.
On January 24, 2002, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as Sole Panelist.
4. Factual Background
The Complainant is a federally recognized Indian Tribe owning a Reservation located on the Southwest corner of the Olympic Peninsula in the State of Washington. In 1853, Washington Territory was created, and in a Treaty of July 1, 1855, the Quinaults ceded much of the western half of the Olympic Peninsula to the U. S. Government in exchange for their Reservation, education, medical care, and the right to fish in their usual and accustomed areas.
In the mid-1990's Complainant began planning for the development of a hotel and gaming resort in the Ocean Shores/Tahloah area. Complainant selected the name "Quinault Beach Resort" for its resort hotel and casino, although there is no "Quinault Beach" in the Ocean Shores/Taholah, Washington area. By 1996, Complainant had publicly announced plans for the resort, which was reported in the local media. In 1997, pre-construction work on the Resort began.
Between 1996, and the time the Resort was opened, Complainant engaged in various advertising campaigns for its Resort. Because the Resort is a significant source of employment and tourism activity for the Ocean Shores/Taholah region, both the Complainantís and the local community's economic development agencies were involved in efforts to market the Resort. Complainant also retained private tourism consultants to prepare its marketing, public relations and advertising materials in an attempt to establish the Resort as a unique tourist destination on the Washington coast.
On May 22, 2000, Complainant's "Quinault Beach Resort" opened for business. The Resort includes 159 guest accommodations, a cabaret for live entertainment, and a 16,000 square foot casino floor.
On October 12, 2001, Complainant filed an application to register the mark QUINAULT BEACH RESORT with the United States Patent and Trademark Office.
Respondent is a company known as RDA Management, Inc. On February 18, 1999, Respondent registered all three Domain Names at issue: <quinaultbeachresort.com>; <quinaultbeachresort.org>; <quinaultbeachresort.net>. The domain name <quinaultbeachresort.com> has been used for a commercial site providing links to various businesses unrelated to Complainant.
5. Parties' Contentions
Complainant contends that the Domain Names are identical to Complainant's unregistered trademark and trade name. Complainant also contends that Respondent has no rights or legitimate interest in the Domain Names because it is not commonly known by the Domain Names, has not used in the Domain Names in connection with a noncommercial or fair use, and is not using the Domain Names in connection with a bona fide offering of goods and services. Specifically, Complainant contends that Respondent is using one of the Domain Names, <quinaultbeachresort.com> to link to an Internet site that advertises the goods and services of parties not affiliated with Complainant.
Finally, Complainant contends that Respondent registered and is using the Domain Names in bad faith. Specifically, Complainant contends that the Respondent, as a condominium manager in the area, knew of Complainant's rights in the mark QUINAULT BEACH RESORT when it registered the Domain Names. As further evidence of bad faith, Complainant contends that Respondent registered the Domain Names in an attempt to disrupt Complainant's business, and attract Internet uses to Respondent's web site by creating a likelihood of confusion with the Complainant's mark.
Respondent failed to file a Response to the Complaint.
Our inquiry focuses on three issues: (1) are the Domain Names confusingly similar to a trademark or service mark in which Complainant has rights; (2) does Respondent have right or legitimate interest in the Domain Names; and (3) have the Domain Names been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
A. Confusing Similarity
According to Complainant, the mark QUINAULT BEACH RESORT was "coined" by Complainant at some point in the mid-1990ís as a name for the Quinault Indian Nationís proposed resort and casino. There is no geographic designation "Quinault Beach" in the Ocean Shores/Taholah, Washington area.
By 1996 Complainant had publicly announced plans for the resort, which was reported in the local media, and in 1997, pre-construction work on the Resort began. Respondent registered the Domain Names in February of 1999, more than a year before Complainant opened the Resort for business in May of 2000. However, between the public announcement of the Resort in 1996, and its opening in May of 2000, Complainant spent "considerable resources" marketing the Resort.
Panelists have found common law rights in the name of a resort area as a result of significant advertisement concentrated in the area where the respondent resided, and prior to the respondentís registration of the domain name. See Trendwest Resorts, Inc. v. Kevin Tisdel, WIPO Case No. D2001-0987.
Given the uncontested evidence of publicity and marketing of Complainant's name QUINAULT BEACH RESORT, combined with the fact that the Quinault Indian Nation has existed on the Olympic Peninsula since at least 1855, I find that Complainant had protectable rights in the mark when Responded registered the Domain Names.
Respondentís Domain Names incorporate Complainantís entire mark. The only difference between the Domain Names and Complainantís mark is the addition of the suffixes ".com" ".net" and ".org". Therefore, the Domain Names are all confusingly similar to Complainantís mark.
B. Legitimate Interest
There is no evidence in the record that Respondent has ever been commonly known by any of the Domain Names. Respondent is not using the Domain Names in connection with any noncommercial or fair use. Instead Respondent is using <quinaultbeachresort.com> to link to a web site that advertises the goods and services of parties not affiliated with Complainant.
The mere use of a domain name in connection with the sale of goods or services prior to notice of Complainantís objections does not necessarily establish a legitimate interest. Not all such use qualifies as bona fide use. "To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." Ciccone v. Parisi, WIPO Case No. D2000-0847. Here, the Respondent's use appears to be a deliberate attempt to trade on Complainant's mark and to confuse the public. Therefore, it does not create a legitimate interest in the domain name.
Furthermore, there is no evidence in the record that Respondent is using either of the other two Domain Names, <quinaultbeachresort.net> and <quinaultbeachresort.org>, and there is no evidence that Respondent has a demonstrable plan to use either of these Domain Names in connection with a bona fide offering of goods and services. Therefore, Respondent lacks a legitimate interest in any of the Domain Names.
C. Bad Faith
Complainant offers un-rebutted evidence that Respondent was engaged in the condominium management business in the Ocean Shores/Taholah area at the time Complainant was advertising and constructing its Resort. It is reasonable to conclude that Respondent knew of Complainantís rights in the mark QUINAULT BEACH RESORT when it registered the Domain Names. There is no other plausible explanation since "Quinault Beach" is an arbitrary designation invented by Complainant that does not identify any preexisting geographic location.
The record indicates that Respondent is using one of the Domain Names <quinaultbeachresort.com> to advertise third party goods and services not affiliated with Complainant. Such use is intentionally designed to attract, for commercial gain, Internet users to Respondentís web site by creating a likelihood of confusion with the Complainantís mark. Such use is also indicative of an attempt by Respondent to disrupt Complainant's business. Both of these represent bad faith use of <quinaultbeachresort.com>.
Respondent is not using the other two Domain Names. Panelists have frequently held that passive holding of a domain name can be considered bad faith use under the Policy if other indications of bad faith are present.
Although non-use alone does not necessarily indicate bad faith, here the fact that Respondent has held these Domain Names for over two years without using them or providing evidence of a demonstrable plan to use them in good faith, combined with Respondent's failure to file a Response in this matter and its use of the remaining domain name in bad faith all indicate that the Domain Names were registered and used in bad faith.
The Domain Names are confusingly similar to Complainant's mark, the Respondent lacks any legitimate right or interest in the Domain Names, and the Domain Names were registered and used in bad faith. Accordingly, the Domain Names <quinaultbeachresort.com>, <quinaultbeachresort.org>, and <quinaultbeachresort.net> should be transferred to Complainant.
Mark V. B. Partridge
Dated: February 11, 2002