WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Media West-DSP, Inc., The Desert Sun Publishing Company v. HostWebUSA

Case No. D2002-1084

 

1. The Parties

The Complainant is Media West-DSP, Inc., The Desert Sun Publishing Company, Brooks Johnson, Reno, Nevada 89501, United States of America; Palm Springs, California 92262, United States of America, represented by Dow, Lohnes & Albertson, PLLC of United States of America.

The Respondent is HostWebUSA, Gerald Youngman, San Francisco, CA 94103, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <dessertsun.com> and <thedessertsun.com> are registered with Intercosmos Media Group d/b/a directNIC.com

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2002. On November 28, 2002, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 29, 2002, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2002. The Response was filed with the Center on December 19, 2002.

The Center appointed Gaynell Methvin as the sole panelist in this matter on December 30, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

It is uncontested that:

a. Complainant is the owner and publisher of THE DESERT SUN™ newspaper and THE DESERT SUN™ website, located at "www.thedesertsun.com". Complainant and its predecessors in interest have published THE DESERT SUN™ newspaper under THE DESERT SUN™ mark since August 5, 1927. The newspaper is widely read throughout Californiaís Palm Springs and Coachella Valley area. In addition, Complainant operates an online version of its newspaper at "www.thedesertsun.com". Complainant registered the domain name <thedesertsun.com> on or about March 27, 2000.

b. Complainant also owns a California state registration for the mark, which was granted on June 26, 2002.

 

5. Partiesí Contentions

A. Summary of Complainantís Factual Contentions:

1. "The mark THE DESERT SUN™ is owned by Complainant and is protected at common law based on Complainantís exclusive and continuous use of THE DESERT SUN™ mark for over seventy-five years. In support, Complainant cites: Cox Holdings, Inc. v. Private, WIPO Case No. D2001-1446, (March 11, 2002); American Home Products Corp. v. Ben Malgioglio, WIPO Case No. D2000-1602, (February 19, 2001). (Complaint paragraphs 12, 13).

2. Complainant has developed extremely valuable goodwill and an outstanding reputation in THE DESERT SUN™ mark. THE DESERT SUN™ mark is well-known and is an indication of high quality and of origin exclusively with Complainant. (Complaint paragraph 15). Complainant actively polices its rights in THE DESERT SUN™ mark. Complainant has taken steps to prevent potentially infringing uses of similar marks that have come to Complainantís attention. (Complaint paragraph 16). On or about March 3, 2002, Respondent registered the Domain Names without the authorization, knowledge or consent of Complainant. (Complaint paragraph 17). Respondent is not a licensee of Complainant, nor is it authorized to use Complainantís THE DESERT SUN™ mark. (Complaint paragragh 18).

3. The second level of Respondentís <thedessertsun.com> and <dessertsun.com> domain names are confusingly similar to Complainantís THE DESERT SUN™ mark and Complainantís <thedesertsun.com> domain name. (Complaint paragraph 19). When a visitor mistypes Complainantís thedesertsun.com domain name as one of the Domain Names, the visitor is transported to Respondentís website. The subject matter of Respondentís website is primarily gay male sexual activities, and not the desert, the sun, or anything having to do with Complainantís mark or newspaper. (Complaint paragraph 20). Respondentís home page also displays "pop up" advertisements for products such as Viagra and "DesertRx.com," an online pharmacy.

4. There is a "Like a Native" link in the navigation bar on Respondentís home page, which transports the visitor to a website located at "www.likeanative.com", a commercial website owned by Respondent. (Complaint paragraph 22). Upon information and belief, Respondent derives significant income from its use and registration of the Domain Names. Respondentís website contains a large number of third-party advertisements, as well as the pop up windows for Viagra and "DesertRx.com." In addition, Respondent uses its website to draw visitors to Respondentís other website, "www.likeanative.com", thereby generating additional web traffic for Respondentís other commercial venture. (Complaint paragraph 23).

5. On April 11, 2002, counsel for Complainant sent a letter via Federal Express and email to Respondentís address in Palm Springs, California, demanding that Respondent cease use of the Domain Name thedessertsun.com, and transfer the registration for the Domain Name to Complainant. (Complaint paragraph 24). On April 11, 2002, Gerald Youngman, on behalf of Respondent, sent an email to counsel for Complainant, in which he denied that Respondentís website could be confused with Complainantís mark. (Complaint paragraph 25). On April 19, 2002, counsel for Complainant spoke with Mr. Youngman via telephone. Counsel for Complainant explained The Desert Sunís interest in protecting its mark, and its concern that visitors to Complainantís "thedesertsun.com" website would inadvertently be transported to Respondentís website by misspelling or mistyping the work "desert" with an extra "s". During the phone conversation, Mr. Youngman admitted that Respondent was aware of Complainantís mark at the time he registered the Domain Names, but refused to alter the URLís for Respondentís site. (Complaint paragraph 26). On April 20, 2002, Mr. Youngman sent another email to counsel for Complainant, stating that Respondent had changed to logo of its website to "Dessert Sun" from "The Dessert Sun") and questioning Complainantís rights in THE DESERT SUN™ mark. On April 23, 2002, Mr. Youngman sent a letter to counsel for Complainant, in which he claimed, without basis, that Complainant does not own a valid trademark. (Complaint paragraph 27). On April 29, 2002, counsel for Complainant sent a second demand letter to Respondent. This second letter clarified Respondentís mistakes about trademark law, and identified a number of non-infringing domain names available for registration that would be suitable for Respondentís website. Counsel for Complainant also requested, again, that Respondent cease its use of the Domain Names and transfer the Domain Names to Complainant. (Complaint paragraph 28). On May 29, 2002, Respondent sent a letter to counsel for Complainant, stating that Respondent would consider the matter closed if it did not hear back from Complainant within five days. Counsel for Complainant responded by letter dated June 7, 2002, informing Respondent that Complainant did not consider the matter closed nor did it concede the arguments made in Respondentís letter. (Complaint paragraph 29).

B. Summary of Complainantís Legal Contentions

1. The Domain Names Are Confusingly Similar to THE DESERT SUN™ Mark

a. The Domain Names are confusingly similar to THE DESERT SUN™ mark. The only difference between Complainantís mark and the Domain Names, other than the word "the", is the addition of a single letter, "s." This difference is inconsequential because the word "dessert" is a common misspelling of the word Ďdesert,í and users seeking Complainantís website may mistype the word "desert" as "dessert." See, e.g., CimCities, LLC v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2001-0491, (May 31, 2001); Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, (July 21, 2000); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578, (August 28, 2000). The removal of the word "the" is also inconsequential. See Bayerische Motoren Werke AG v. JMSTRADE.com Selling Premiun Domain, WIPO Case No. D2000-1693, (January 26, 2001). (Complaint paragraph 32).

2. Respondent Has No Rights or Legitimate Interests in the Domain Names

a. Respondent cannot establish that it has rights or any legitimate interest in the Domain Names. Under Paragraph 4(c) of the Policy, Respondentís rights or legitimate interests to the domain name could be established by demonstrating any of the following three conditions: "(i) before any notice to [Respondent] of the dispute, [Respondentís] 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) [Respondent] (as an individual, business or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or (iii) [Respondent is] making a legitimate non-commercial 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." Respondent has admitted to Complainant that Respondent knew of Complainantís prior use of the trademark THE DESERT SUN™ at the time Respondent registered the Domain Names. Indeed, Respondent can hardly claim otherwise, as Respondent was located at the time the domain names were registered within the area of Palm Springs in which THE DESERT SUN™ newspaper has been published for over seventy-five years and is widely circulated. (Complaint paragraph 34).

b. Before receiving notice of this dispute, Respondent did not use the Domain Names in connection with a bona fide offering of goods or services. Respondent claims that it registered the Domain Names and began using the phrases "The Dessert Sun" and "Dessert Sun" on its website because these phrases communicate that its website is Ďdedicated to desserts in Palm Springs.í However, in reality, Respondentís site is devoted to promoting sexual, adult-only activities and merchandise directed at the gay community. By far, the most prominent graphics and text on Respondentís site are photographs of naked to scantily-clad men and advertisements for X-rated male movies. Therefore, Respondentís trivial references to desserts on its site are an attempt to manufacture a pretext to use domain names that are confusingly similar to Complainantís THE DESERT SUN™ mark. (Complaint paragraph 35).

c. Respondentís use of a misspelling of Complainantís THE DESERT SUN™ mark to provide services cannot establish legitimate rights in the Domain Names and cannot qualify as bona fide use under Paragraph 4(c)(i) of the Policy. See Amphenol Corp. v. Applied Interconnect, Inc., WIPO Case No. D2001-0296, (May 8, 2001); Ciccone v. Parisi, WIPO Case No. D2000-0847, (October 12, 2000). (Complaint paragraph 36).

d. Under facts similar to this case, the respondent in the <madonna.com> case, cited above, claimed that his use of the disputed domain name in connection with commercial services, prior to notice of the dispute, established legitimate rights in the Madonna.com domain name pursuant to section 4(c)(i) of the Policy. The three-member panel, however, flatly rejected this argument because the respondent knew of the Complainantís rights in the MADONNA mark at the time he registered the disputed domain name, and failed to show any prior connection with the domain name or any clear link between the domain name and the adult entertainment services respondent offered through Madonna.com. Under these circumstances, the panelists concluded that the respondent chose the <Madonna.com> domain name in order to profit off of the value of the complainantís mark, and that such "use" did not constitute a bona fide offering of goods or services, no establish any legitimate rights in the domain name. "To conclude otherwise," the panelists held, "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, (October 12, 2000). See also Carfax, inc. d/b/a Carfax v. Charlie Keller, WIPO Case No. D2001-0922, (September 14, 2001) (carfaxtoday.com). (Complaint paragraph 37).

e. Additionally, Respondent cannot establish rights in the Domain Names under Paragraph 4(c)(ii) of the Policy because Respondent has never been commonly known by the Domain Names and has not acquired trademark or service mark rights in the Domain Names. Respondentís only association with the phrases "The Dessert Sun" and "Dessert Sun" is through its website, which, as described above, uses these phrases solely as a pretext to use Domain Names that are confusingly similar to Complainantís THE DESERT SUN™ mark. (Complaint paragraph 38). Moreover, Respondent admits he did not actively promote its "thedessertsun.com" and "dessertsun.com" website until after Respondent received Complainantís first demand letter. (Complaint paragraph 39).

f. Moreover, there is no noncommercial or fair use where Respondent is taking advantage of consumersí known disposition to misspell domain names to divert Internet traffic to a website that earns revenue from advertisers, as is the case here. See, e.g., CEC Entertainment, Inc. v. Anthony Peppler aka RealTimeInternet.com, Inc., Claim No. FA0202000104208 NAF, (March 21, 2002); Williams-Sonoma, Inc. v. Williams Onoma, WIPO Case No. D2001-0462, June 5, 2001. (Complaint paragraph 40).

g. Respondentís use of the Domain Names in a manner that is likely to cause confusion among consumers as to the affiliation, sponsorship, or endorsement between Respondentís website and Complainantís mark precludes a finding that Respondent has any legitimate interest in the domain name. See The Open University v. Netschool Limited, WIPO Case No. D2001-0459, (June 20, 2001). (Complaint paragraph 41).

3. The Domain Names Have Been Registered and Used in Bad Faith

a. The Domain Names have been registered and used in bad faith. Under Paragraph 4(b)(iv) of the Policy, the use and registration of a domain name is in bad faith if:

by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrantís website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

(Complaint paragraph 42.).

b. Respondentís registration of the Domain Names, which are confusingly similar misspellings of Complainantís THE DESERT SUN™ mark, and its use of the Domain Names to attract Internet users to Respondentís website, establishes that Respondent has used and registered the Domain Names in bad faith under Section 4(b)(iv) of the Policy. (Complaint paragraph 43.).

c. Registration of a domain name that exploits the misspelling or mistyping of a trademark establishes bad faith under Section 4(b)(iv) of the Policy. See, e.g., The Vanguard Group, Inc. v. RealTimeInternet.com, Inc. WIPO Case No. D2001-0873, (September 4, 2001); Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236, (April 5, 2001); AltaVista Company v. Stoneybrook aka Stonybrook Investments, WIPO Case No. D2000-0886, (October 26, 2000). (Complaint paragraph 44).

d. Respondent uses the confusingly similar Domain Name to attract visitors to Respondentís website, which features banner and pop up advertising and an online store that sells Respondentís merchandise. Moreover, Respondentís website contains links to drive traffic to Respondentís other website, located at www.likeanative.com. Respondentís use of the Domain Names in this manner demonstrates bad faith. See, e.g., NASCAR, Inc. v. RMG Inc Ė BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387, (January 23, 2002); Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, (April 18, 2000); TalkCity, Inc. v. Michael Robertson, WIPO Case NO. D2000-0009, (February 29, 2000). (Complaint paragraph 45).

e. Even if one believes Respondentís purported goal of creating a website about "desserts" in the Palm Springs are, then Respondentís registration and use of domain names confusingly similar to Complainantís mark, rather than a non-infringing alternative, is further evidence of Respondentís bad faith. There are at least seventeen (17) alternative non-infringing domain names that are available for registration that would be suitable for Respondentís purported service of providing information about desserts in Palm Springs. See Annex S (true copies of WHOIS listings showing the availability of domain names such as <sundessert.com>, <sunnydessert.com>, <palmspringsdessert.com>, <palmspringsvalleysweets.com> and <palmspringsvalleydessert.com>). The availability of non-infringing domain names that are appropriate for Respondentís business demonstrates that Respondent registered the Domain Names in bad faith. See Awesome Kids LLC v. Selavy Communications, WIPO Case No. D2001-0210, (April 16, 2001; see also Virtual Works, Inc. v. Volkswager of America, Inc., 238 F.3d 264 (4th Cir. 2001). (Complaint paragraph 46).

f. Moreover, as discussed above, Respondentís claim that it registered the Domain Names because its website is "dedicated to desserts" is a hollow pretext to create the appearance that Respondent has a legitimate interest in the Domain Names. Panelists have routinely found bad faith where the justification for registering and using a particular domain name is pretextual. See, e.g., National Hockey League v. Daniel Krusz, WIPO Case No. D2001-0234, (April 4, 2001). Here, where the bulk of Respondentís website pertains to adult-only content and other material unrelated to "desserts," Respondentís stated reason for registering and using the Domain Names is pretextual and in bad faith.

C. Summary of Respondentís Factual and Legal Contentions

1. Whether the domain names are identical or confusingly similar to a trademark of service mark in which the Complainant has rights: (Policy, para.4(a)(i))

a. The complainant is claiming rights to the mark "The Desert Sun" as it refers to a Newspaper in the Palm Springs area. They are not claiming famous universal rights to the mark nor are they claiming exclusive rights to the mark as it applies to all areas of commerce. Further, the Complainantís common law claim on the mark is tenuous at best. In fact, there are many examples of business using the term "Desert Sun" in both their businesses name and URL. (Examples provided). Please note that many of these businesses have been operating much longer than their domains have been registered. The vast numbers of business using the term "Desert Sun" in their businesses names demonstrates that a lack of claim on the common law use that the complainant is asserting.

b. Additionally, Many businesses in the Palm Springs area use the word "Sun" in their names. There are businesses in the Palm Springs area named: "Aqua Sun", "Place in the Sun", "Golden Sun Realtors" to mention but a few. Note the syntax used in these business names as "____ Sun".

It is imperative to understand that the complainant is in no manner claiming rights to the singular portion of the mark "Sun" but rather to the unique combination of words "The Desert Sun" and even that claim is in question.

c. The complainant only obtained a California state registration for the mark in June of 2002, four months after registration of the disputed domains. This California registration clearly is for a "general circulation newspaper" and does not grant any universal rights to the mark in all areas of commerce. The California Registration does not grant rights to any individual components of the mark such as "Sun" or "Desert".

d. The complainant only applied for a U.S. Registered Trade mark in October, 2002, Ė six months after registration of the disputed domains, and that application is still pending. At best, the complainant will hope to be granted exclusive rights to use the mark "The Desert Sun" as it applies exclusively to a general circulation newspaper published in the Palm Springs area. Further, they cannot hope to gain exclusive rights to the individual components of the mark Ė "Desert" and "Sun". Even if the complainant is granted their application by the USPTO, the complainant will not gain exclusive use of the mark in all areas of commerce.

e. The United States Patent and TradeMark office recommends that anyone seriously claiming a mark should use the ™ to give notice of their claim. Being in the publishing business, the complainant should be well versed in the use of symbols such as ™ ® and ©. Even so, the complainantís newspaper and website have failed to use the ™ to lay claim to the mark. Since the complainant has been using the title of the newspaper for 75 years, a reasonable person would assume they would have started using a ™ and perhaps even registered the mark long before.

f. Most likely the lack of use of the symbol ™ on the part of the complainant and failure to apply with the USPTO before now was based on the complainantís lack of conviction in exclusive universal rights to the mark in all areas of commerce. In fact, the complainant does not have any such universal famous claim to the mark.

g. The words DESERT and DESSERT and not confusingly similar; they are two different words with different meanings and pronunciations. According to Websterís New World Dictionary (© New World Publishing Co.) the following definitions apply:

DESERT: "A dry barren region largely treeless and sandy"

DESSERT: "A course of fruits, puddings, pies, ice cream, etc. served as the end of a meal"

The words DESERT and DESSERT are not homonyms, homophones, homographs nor heteronyms. To aid in the understanding of these terms respondent offers this chart:

 

Sounds the Same

Spelled the Same

Different in Meaning

Homonyms

YES

YES

YES

Homophones

YES

YES or NO

YES

Homographs

YES or NO

YES

YES

Heteronyms

NO

YES

YES

DESERT and DESSERT are distinctly different words pronounced differently, spelled differently and with completely different meanings.

h. To claim that there could be a possible confusion between the words is dubious. Further, during the period between registration of the domains and the time when active promotion of the site began, the only traceable traffic to the disputed domains came from the respondent and the complainant (Approximately 3 to 5 unique visitors per day). Virtually no traffic resulted from the supposed typographical errors as claimed by the complainant. As proof of this fact respondent offers the handwritten fax already submitted by the complainant dated 10:00am April 25, 2002. The purpose of this fax was to demonstrate that all traffic to the website from that point forward would be a result of promotion and not typographical errors.

It is important to note that during the time period between registration and April 25th active work on content and web design was taking place with full intent of promoting the site to the local inbound gay and lesbian tourist market. Respondent has a three-year history of providing online tourist information to the gay and lesbian market.

i. It is completely reasonable for a website dedicated to inbound gay and lesbian tourist market to center itís promotion and content on places to eat, things to do and places to get a good "Dessert". In keeping with the tradition of naming business with the "_____ Sun" name, it is perfectly proper, logical and acceptable for the respondent to use "DessertSun". It is not confusing. It correctly indicates a website dedicated to desserts in the Palm Springs Area.

j. The content and purpose of the disputed domain is to allow the inbound gay and lesbian tourist market to find information about the Palm Springs area. As such, much of the advertisement on the site is aimed at the gay and lesbian marketís consumer habits with an emphasis on the types of resort wear likely to be needed when arriving in Palm Springs.

k. In the complaint, the complainant mentions several cases as examples of "typo squatting" and offers these as examples similar to this case. The complainant claims that the case involving "Williams Onoma" WIPO Case No. D2001-0462, and other cases of actual misspelled domains are similar in scope to this case. This is not factual. In each of those cases sited is different because each example involved an actual misspelled word in the domain name.

The disputed domain in this case is a correct spelling of the intended work "Dessert" and not a misspelling of the complainantís domain.

2. Whether the Respondent has rights or legitimate interests in respect of the domain names: (Policy, para. 4(a)(ii))

a. On December 13, 1999, respondent registered and began operating a website using the URL "LikeANative.com" This website focuses on the gay and lesbian tourist market into both the San Francisco, CA and the Palm Springs, CA area. On March 3, 2002, in an expansion of the efforts and content of "LikeANative.com" the respondent registered two additional domain names: "TheDessertSun.com" and "DessertSun.com" with the intention of providing more focused attention to just the Palm Springs aspects of the "LikeANative.com" site.

b.. During the preparation stages of the site (and well before completion of content) the respondent received a demand letter from the lawyers for the complainant. This demand letter dated April 11, 2002, questioned the respondentís rights to use the disputed domains. The website contained upon receipt of the complainants notification robust areas of content on gay restaurants gay night clubs and bars, gay friendly places to get a great dessert and gay and lesbian resorts and hotels Ė all in the Palm Springs area.

c. In an effort to improve the respondentís website promotion, respondent has additionally registered (before receiving the complainantís demand letter) the following domain: <PalmSpringsDirectories.com>.

d. The registration and promotion of "LikeANative.com", "PalmSpringsDirectories.com", "DessertSun.com", and "The DessertSun.com", is consistent with an on going effort to provide online content about inbound tourist information to the gay and lesbian market. This online content is a bona fide service offering tourist information to the gay and lesbian market. This online content is a bona fide service offering tourist information to the gay and lesbian community that has a three-year history.

e. Respondent has made every effort to lay claim to the trademark "Dessert Sun ™" as a unique mark known to the gay and lesbian community. The distinct logo on the site is in the rainbow flag colors using a bold Arial Font and prominently displays the ™ symbol. It in no way is confusing with the logo of the complainant, which uses a gothic script old-fashioned newspaper font. The logo on disputed site with the ™ was in place before receiving the complainantís demand letter.

f. The respondent has in no way tarnished the name of the complainant. The complainant seems to be rather concerned with three areas: the gay and lesbian content of the site, the use of pop-up windows and the fact that the advertising on the site markets to the purchasing habits of gays and lesbians. The fact the respondentís websites markets to gays and lesbians in no way tarnishes the complainantís reputation. To imply that marketing to gays and lesbians could even conceivably do so is outdated bigotry that simply cannot be tolerated in a modern society.

g. Regarding pop-up windows: there was one pop-up window in the disputed site. One pop-up window is neither outrageous nor inconsistent with other websites. Gannett, Co owns the Desert Sun. In fact, many of Gannett newspaperís website use some pop-up windows. A list of Gannett Co owned newspapers (with their pop-up windows) might be seen at "www.gannett.com".

h. The advertising on the disputed domainís website is consistent with the purchasing habits of the intended audience of the site. All the graphics, pictures and content are no more explicit than might be seen at a Victoria Secretís fashion show. The amount of space the advertising takes up on the disputed website, as a ratio to content is comparable to most other advertising supported websites. The fact that advertising supports the free service of information about Palm Springs is also consistent with other "free information" websites. The types of advertising that support the free content do include some "adult" themes. Considering the adult gay and lesbian market to which the disputed website is marketed this is perfectly logical and appropriate. The complainant is not in a position to dictate moral standards of conduct neither to the respondent nor to visitors to the respondentís websites.

3. Whether the domain names have been registered and are being used in bad faith: (Policy, para. 4(a)(iii))

a. The disputed domains were registered for use as an information source for the inbound gay and lesbian tourist market to the Palm Springs area. Palm Springs is one of the most popular tourist sites for gays and lesbians in the United States.

b. Immediately upon registration the respondent began to publish information and content on the disputed websites. The respondentís only reason for registering the domains was to use them for the benefit and support of the respondentís efforts to provide online content. This is consistent with the respondentís three-year history of providing online gay and lesbian tourist information.

c. The respondent has never attempted to sell, barter or exchange the domain names to any individuals. The respondentís intentions are to keep the domain names and to operate them by continuing to publish content.

d. The registration of the disputed domains has in no way stopped the complainant from registering the actual domain for which they claim a mark. In fact, they currently are the owners of such domains.

e. The respondent is not a competitor with the complainant. In fact the complainantís newspaper has a conservative reputation inconsistent with the intended market of the disputed domains.

f. The registration of the disputed domains has not disrupted the complainantís business and the complaint filed makes no such allegations.

g. The purpose of registering the disputed domains by the respondent was solely to promote online content about gay and lesbian tourist information to the gay and lesbian inbound tourist market in Palm Springs. The disputed website, like many others (including the complainants), is supported by advertising. The primary purpose of the disputed website is itís content, not itís advertising. In no way is the content of the site a mere pretext for the websiteís advertising.

h. The content of the disputed domain contains sections on:

Places to get a good dessert that are gay friendly in the Palm Springs area Restaurants to eat in that are gay friendly in the Palm Springs area Gay nightclubs and bars in the Palm Springs area Gay resorts and hotels in the Palm Springs area.

i. Further, the disputed website is so very different in its "look and feel" from the complainantís that it would be impossible to confuse the two sites. One is a conservative Gannett owned newspaper and the other a gay and lesbian tourist site.

j. The complainantís suggested alternative domain names lacks credibility. As stated above many businesses (examples of which have been sited) use the syntax "____Sun" in their names. None of the alternative recommended by the complainant uses this preferred syntax and the complainant has no claim, and has made no such claim, on the "____Sun" syntax as a mark.

k. The respondent registered the disputed domains for the intended use of providing online content to the gay and lesbian tourist market. The disputed domains were not registered in bad faith.

4. Respondent request that the Panel make a finding of reverse domain name hijacking: (Rules, para. 15(e))

a. There is no excuse for the obvious bigotry and homophobia on the part of the complainant. The complainant has clearly demonstrated in their complaint that the complainantís main, if not the complainantís only objection to the content of the disputed domains is the disputed domainís gay and lesbian content.

b. The Complainant operates and publishes a general circulation newspaper well known in the Palm Springs area for itís conservative views and editorials. The purpose of this complaint is to shut down a website promoting tourism and local activities in the Palm Springs Areas to gay and lesbian tourist.

c. The complainantís stated concern is that someone might "accidentally" type an extra "s" in their domain name and be "transported" to "gay male sexual actives". Hopefully the tolerances of the complainantís readers are greater than the complainantís Ė but even so, the complainant is attempting to dictate moral standards to the respondent in a way that is not acceptable. Namely, the complainant is attempting to seize the respondentís domain name simply because the complainant objects to the disputed domainís content.

d. The complainant is attempting to hijack a legitimately registered domain which provides valued content. The disputed domain in no way infringes on any mark to which they have a claim in this are of commerce. The complainantís actions are appallingly oppressive on the gay and lesbian community of Palm Springs and should be immediately blocked.

 

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, a domain name registration may be cancelled or transferred upon a showing that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

The threshold issue in relation to the issue of whether the accused domain names are identical or confusingly similar to Complainant's mark, is a determination of whether Complainant has protectable rights in the mark "THE DESERT SUN". Complainantís position in this regard is set forth in detail above (4, 5A1-4; and in Annex J&N to Complaint). Respondent's position is also detailed above (5C1a-k and in Respondent's correspondence seen in Annex L & M to Complaint).

In short, it is the Panelís conclusion that Complainant has stated the correct view of the law and its rights in its mark "THE DESERT SUN". Accordingly, Respondent's position must be rejected. As a consequence, Complainant has trademark rights in its mark that are entitled to protection against anyone using an identical or confusingly similar name, especially as those right pertain to activities in the Palm Springs, California area. Whether Respondentís domain names infringe upon Complainantís rights, by being identical or confusingly similar to Complainantís mark is one of the controlling issues in this case and this issue will now be addressed.

Although the domain names and the Complainantís mark are not identical, Complainant takes the position the domain names are nevertheless confusingly similar to its mark because Respondent has deliberately and intentionally misspelled Complainantís mark (See above 4, 5A, 5B1). Respondent, on the other hand, argues that the domain names are not merely misspelling of Complainantís mark because "dessert" is a stand alone word with a completely different meaning from "desert" (5B1g-j). Further, according to Respondent, the website associated with the domain names, offers legitimate information relating to desserts and places to obtain desserts in Palm Springs. In particular, Respondent states:

"In keeping with the tradition of naming business with the Ď____ Suní name, it is perfectly proper, logical and acceptable for the respondent to use ĎDessert Suní. It is not confusing. It correctly indicates a website dedicated to desserts in the Palm Springs Area." (5C1i)

First, the "tradition" referenced by Respondent relates to a few names of businesses in the Palm Springs area (cited by Respondent, 5C1b) where the businesses have associated a word with "Sun" which makes perfectly good sense. In stark contrast, however, Respondentís domain name "Dessert Sun" makes no sense. Indeed, it is pure nonsense as no one would ever logically associate sun and dessert for a business name. Respondentís argument that "Dessert Sun" indicates a website dedicated to desserts in the Palm Springs Area, it likewise without merit. Palm Springs has no monopoly on the use of the word "Sun" to indicate a mostly sunny climate. Indeed, the only way, in this context, in which Sun gets associated with Palm Springs is through Complainantís use of its mark in newspaper business in Palm Springs since 1927! Thus, Respondentís own arguments support Complainantís position and demonstrate Respondentís wrongdoing.

In light of the foregoing analysis, it becomes clear that the only reason Respondent selected a nonsensical name for its domain name was to trade on Complainantís mark and goodwill. Persons intending to visit Palm Springs area would have the option of visiting Complainantís website to review the typical newspaper offerings related to restaurants, hotels, entertainment, etc. Further, since it is well known that "desert" gets consistently misspelled as "dessert", Respondentís domain name, "Dessert Sun", is positioned to trade on that misspelling. It is the opinion of the Panel that Respondent designed and implemented the domain name to deliberately and intentionally take economic advantage of and trade on this potential misspelling.

It follows that based on the facts and applicable law, Respondentís domain names are confusingly similar to Complainantís protected mark.

With respect to Respondentís arguments that it operates a legitimate website offering dessert information, the Panel agrees with Complainant -- the websiteís meager offerings relating to desserts in comparison to the entire website content, is a mere pretext, a side line, placed on the site for the sole purpose of trying to support the use of a name that is confusingly similar to Complainantís mark. No one could possible view Respondentís website associated with its domain names without concluding that the real purpose of the site was to offer goods and services, not dessert information. The exact nature of the goods and services offered on the site is irrelevant to any issue in this proceeding and plays no role in the Panel's decision.

Further, Respondent cannot be allowed to trade on Complainantís mark by adding an "s" to the mark, even though the misspelling results in a real word. This real word, however, loses it legitimacy when Respondent associates it with "Sun". Respondent could have selected numerous other words to associate with "dessert" and derive a legitimate name for its site. Respondent rejected these alternatives from the outset and also rejected Complainantís numerous suggested alternatives. Instead, Respondent elected to stay with its nonsensical name, thereby taking the wrong path and wrong turn. The wrong path ends here.

B. Rights or Legitimate Interests

Complainantís position on this issue is set forth above (5A3-5; 5B2a-g). Respondentís position is likewise found above (5C2a-h). Complainant has stated the correct and controlling position on the facts and law and this position is adopted by the Panel. Respondentís position is without merit and is rejected. In sum, in light of these conclusions and the analysis set forth in 6A above, it is the conclusion of the Panel that Respondent has no rights or legitimate interest in the domain names.

C. Registered and Used in Bad Faith

1. Complainantís position on this issue is found above (5A, 5B3a-f). Respondentís position is also found above (5C3a-k ). Again, the Arbitrator finds that Complainant has the correct position on the facts and law and that position is adopted. Respondentís position is without merit and rejected. The Panel concludes, based on this finding and the analysis and findings in 6A above, the Respondent registered and used the domain names in bad faith.

 

7. Decision

For all of the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the sole panelist orders that the domain names <thedessertsun.com> and <dessertsun.com> be transferred to the Complainant.

 


 

Gaynell Methvin
Sole Panelist

Date: Janaury 14, 2003