WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lion Country Supply, Inc. v. J. Katz

Case No. D2003-0106

 

1. The Parties

The Complainant is Lion Country Supply, Inc. of Port Matilda, Pennsylvania, United States of America.

The Respondent is J. Katz of Philadelphia, Pennsylvania, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lioncountrysupply.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2003. On February 12, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. After a further exchange with the Center, on February 21, 2003, Register.com transmitted by email to the Center its verification response. The letter from Register.com confirmed that the Respondent is listed as the registrant of <lioncountrysupply.com> and that the Uniform Domain Name Dispute Resolution Policy is applicable to <lioncountrysupply.com>. Register.com also verified the contact details for the administrative, billing, and technical contacts relevant to the domain name. Finally, 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 February 25, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on March 18, 2003.

The Center appointed Justin Hughes as the Sole Panelist in this matter on March 25, 2003. 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

Because the Respondent has defaulted in these proceedings, the Panel accepts the assertions in the Complaint as true, at least as to factual matters necessarily to resolution of the dispute.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions, as they bear on resolution of this dispute, are discussed individually under 6. A-C below.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

To prevail in a UDRP action, Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

(i) The domain name in issue is identical or confusingly similar to the Trademark; and

(ii) The Respondent has no right or legitimate interest in respect of the domain name; and

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

The Complainant has properly made its case under each of requirements.

A. Identical or Confusingly Similar

This dispute concerns a claimed trademark, LION COUNTRY SUPPLY, for the provision of equipment and supplies related to hunting dogs and "upland hunting" (Complaint, section V at 4 [page numbers supplied by Panel to unnumbered Complaint document]). The claimed trademark has not been registered with the United States Patent and Trademark Office. The Complaint states that "[t]he service mark and trade name Lion Country Supply has been registered with the Commonwealth of Pennsylvania" (Complaint, section V at 4) and has attached an Articles of Incorporation form filed with the Pennsylvania Department of State on January 8, 1999, establishing the name of the Complainantís business as "Lion Country Supply, Inc." It is not clear to the Panel whether this constitutes registration of a trademark under the State of Pennsylvaniaís state registry, if any (see "http://www.dos.state.pa.us/DOS/site/default.asp"), but the Panel accepts that the state documentation shows some rights to the trademark LION COUNTRY SUPPLY as of January 1999. The establishment of these rights preceded registration and use of <lioncountrysupply.com> by the Respondent and/or his predecessor-in-interest.

Based on the evidence presented, the Panel believes that Lion Country Supply, Inc. has also independently established that it has common law trademark rights to LION COUNTRY SUPPLY that substantially preceded registration and use of <lioncountrysupply.com> by the Respondent and/or his predecessor-in-interest. It appears that the Complainant has used LION COUNTRY SUPPLY since 1974, and the evidence provided by Complainant included direct evidence of use since at least 1998. While a company that adopts a descriptive name must establish secondary meaning in order to have trademark rights under American law, PlasmaNet v. John Zuccarini, WIPO Case No. D2002-1101 (no evidence that descriptive name had acquired secondary meaning by the time domain name was registered), LION COUNTRY SUPPLY is not a descriptive name for a purveyor of hunting dog equipment in North America. LION COUNTRY SUPPLY appears to be an arbitrary or fanciful name for the Complainantís business. Lions are not native to the country where the Complainant is located. See "http://aginfo.psu.edu/News/august01/lion.html." While mountain lions are sometimes hunted with dogs and Rhodesian Ridgeback dogs were bred for lion hunting in Africa, for most hunting dogs, if your master asks you to hunt lions, my advice is Ďrun away.í In short, LION COUNTRY SUPPLY appears to be an arbitrary or fanciful name for the Complainantís business. Testimonials from customers of the Complainant, available at "http://lcsupply.com/store/flashcart.cfm", further establish that the Complainant has built up substantial goodwill in the trademark LION COUNTRY SUPPLY.

B. Rights or Legitimate Interests

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name. There is no evidence that the Respondent has ever used LION COUNTRY SUPPLY or any similar trademark or trade name in the offering of goods or services; there is no evidence that the Respondent has ever used <lioncountrysupply.com> in connection with either bona fide commercial activities or expressive activities that would be constitute legitimate fair use of anotherís trademark. The sole communication from the Respondent in the materials before the Panel is an email directed toward Mr. Korito which states only that the domain name was "purchased for future use." Even if the Panel were to accept the assertions in Mr. Katzí email communication, that would be insufficient to establish intellectual property rights or other legitimate interests in the domain name. Whatever Mr. Katzí "future use(s)" may be, he can, at some future date, establish his Internet presence with a domain name that is not confusingly similar to the Complainantís trademark.

C. Registered and Used in Bad Faith

The record before the Panel indicates that <lioncountrysupply.com> was registered on June 15, 2000, by Mr. Fred Cohen d/b/a "Trail Blaziní Innovations" of Houston, Texas (WHOIS printout from Register.com at Complaint, Annex #5). The evidence before the Panel further indicates that Trail Blaziní Innovations is an entity that, at least as of 1999, was offering "Gun Dog Training Equipment and Supplies" in direct competition with the Complainant (Trail Blaziní Innovations catalog at Complaint, Annex #7). At some point prior to January 15, 2003, Mr. Cohen formally transferred the domain name to Mr. Katz (WHOIS printout from Domains.com at Complaint, Annex #1). There is no evidence of the relationship between Mr. Cohen and Mr. Katz; the Complaint reports only Mr. Cohení statement that he transferred the domain name to Mr. Katz for the sum of $3,000.00. The email address for Mr. Katz listed in the WHOIS database appears correct and the physical address is a legitimate one, but Mr. Katz declined to provide WHOIS with telephone and telefax information.

There is no question that Mr. Cohen/Trail Blaziní Innovations registered the domain name in bad faith. There is no other reasonable inference from one commercial entity registering a domain name that is the name and trademark of a direct commercial competitor.

The question then arises whether Mr. Cohen and/or Mr. Katzí holding of the domain name constitute "use[] in bad faith" under Rule 4(a)(iii) of the Policy. The Panel concludes that warehousing of a domain name by a direct competitor and/or a party acting in cooperation with that direct competitor constitutes sufficient "use" under the Policy. Paragraph 4(b)(iii) of the Policy provides that one indicia of bad faith is where the Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor." This is evidence of bad faith distinct from situations in which the Respondent has "intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark" (Paragraph 4(b)(iv)). The separate recognition of Paragraphs 4(b)(iii) and (iv) indicates that the Policy was intended to cover situations in which one competitor intentionally warehouses the domain name which directly reflects the trademark of another competitor. Such warehousing disrupts the competitorís business by creating the impression among some potential customers that the competitor is either out of business or so primitive in its business operations as to lack an Internet presence.

The fact pattern in this dispute is surprisingly similar to an early cybersquatting case in the United States, Sportyís Farm v. Sportsmanís Market, 202 F.3d 489, 2000 U.S. App. LEXIS 1246 (2d Cir. 2000), available at "http://legal.web.aol.com/decisions/dlip/sporty.html." Like the Complainant in this dispute, Sportsmanís Market was a catalog seller of sports and hobby equipment (aviation equipment). Sportsmanís Market found that the domain name reflecting its trade name ("Sportyís") had been registered by a competitor in the aviation catalog business, Omega. As in this dispute, the competitor in Sportyís Farm formally transferred the domain name to a third party. As in this dispute, up until the time of litigation, the domain name holder in Sportyís Farm had not used the domain name. In the Sportyís Farm decision, the transfer to a formally separate third party for substantial consideration did not undermine the courtís conclusion that the domain name holder acted in bad faith. Given the Respondentís failure to participate in these proceedings, the Panel can only infer the same kind of collusive activity between Mr. Katz and Trail Blaziní Innovations as occurred between Omega and "Sportyís Farm."

It should also be noted that Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy provides that the Panel may apply "any rules and principles of law that it deems applicable." Because this is a dispute between two parties located in the United States of America, the Panel points out that the Respondentís failure to provide a telephone number to the WHOIS database might constitute "intentional failure to maintain accurate contact information" under the Anticybersquatting Consumer Protection Act (15 U.S.C. ß 1125(d)(1)(B)(i)(VII)). While this is a minor point, the Panel considers this another indication of the Respondentís bad faith holding of the domain name in question.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lionscountrysupply.com> be transferred to the Complainant.

 


 

Justin Hughes
Sole Panelist

Dated: April 8, 2003