WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Coryn Group, Inc., Apple Vacations West, Inc. v. John A. Meara aka Pat Cavanaugh
Case No. D2003-0690
1. The Parties
The Complainant is The Coryn Group, Inc., Wilmington, Delaware, and Apple Vacations West, Inc., Elk Grove Village, Illinois, both of United States of America, represented by Holland & Knight LLC, United States of America.
The Respondent is John A. Meara (also known as Pat Cavanaugh), Meara Travel Group, of United States of America, represented by David C. Jones, United States of America.
2. The Domain Names and Registrar
The disputed domain names <bookapple.com>, <bookapplecamp.com> and <bookapplegrant.com> are registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 2, 2003. On September 3, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain names at issue. On September 12, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 September 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2003. The Response was filed with the Center on October 6, 2003.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 15, 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.
By email and telefax dated October 13-14, 2003, Complainant transmitted to the Center and Respondent a Request for Leave to File a Reply and Supplemental Exhibits . At the Panelís request, the Center forwarded the request and reply to it for consideration as to admissibility.
By email dated November 4, 2003, the Center notified the parties that the Panel had extended the projected date of decision, based on exceptional circumstances, until November 10, 2003.
4. Factual Background
Complainant "The Coryn Group, Inc." is the holder of the service marks involved in this proceeding. Complainant "Apple Vacations West, Inc." is a wholly-owned subsidiary of The Coryn Group, Inc. and is licensed to use the service marks involved in this proceeding (Complaint, para. 2). The two enterprises are hereinafter jointly referred to as "Complainant".
Complainant has registered the word service mark "APPLE VACATIONS" on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. no. 1,462,268, dated October 20, 1987, in International Class (IC) 39, covering "travel agency services" (disclaiming "VACATIONS" apart from the mark as shown), asserting date of first use and first use in commerce of August 1979. Complainant has registered the word service mark "APPLE" on the Principal Register of the USPTO, reg. no. 1,812,427, dated December 21, 1993, in IC 39, covering "arranging travel tours", asserting date of first use and first use in commerce of September 1988. Complainant has registered on the Principal Register of the USPTO a number of word and design marks, and design marks, incorporating a stylized "apple", each in IC 39. The foregoing are collectively hereinafter referred to as the "Apple Marks". (Complaint, para. 12 and Exhibits 9-13)
Complainant has used the Apple Marks in connection with the promotion of travel services, including the booking of reservations and the sale of tour and vacation packages. Complainant has extensively advertised its travel services in print, radio and television media. (Id., para. 12 and Exhibits 6 & 7)
Complainant operates commercial Internet web sites at URLs "www.applevacations.com" and "www.applevac.com". At these websites, Complainant prominently displays the Apple Marks. (Id.)
According to the Registrarís Verification, "Pat Cavanaugh" is the registrant of the disputed domain names. John Meara responded to the Complaint, asserting that "Pat Cavanaugh" is his father-in-law, who acquired the registrations from the Meara Travel Agency business owned by John Meara. According to Network Solutions WHOIS database reports submitted by Complainant, Meara Travel Group, Inc. was the registrant of the disputed domain name <bookapple.com> as of July 2, 2003, with record creation date of August 2, 2002. According to a WHOIS database report of July 30, 2003, "Pat Cavanaugh" is the registrant, with the same record creation date of August 2, 2002. Meara Travel was sent a cease and desist demand from Complainant on July 2, 2003. WHOIS database reports show the record creation dates of the disputed domain names <bookapplecamp.com> and <boolapplegrant.com> as July 18, 2003. (Complaint, para. 12 and Exhibits 1-2 & 14, 19-20)
Respondent has not made active use of any of the disputed domain names. Subsequent to the initiation of this proceeding, Respondent posted content on a website addressed by the URL "www.bookapple.org" (not one of the disputed domain names), under the banner "Book Apple.com", showing a food nutrition pyramid and stating that Book Apple is "dedicated to the idea that todayís youth needs to be both informed and healthy". On July 29, 2003, Respondent submitted an application for registration of the trademark "BOOKAPPLE" to the USPTO. For International Class, Respondent states "Toshiba Computer Want to distribute books throughout our country to improve education for our youth." (Response)
Respondent operates a commercial website located at URL "www.24hourtravelrep.com" and has there offered for sale and sold travel packages offered by Complainant. Respondentís website includes a link to Complainantís <applevacations.com> website. Respondentís website prominently displays the telephone number "1(866) MY1-APPLE" under the "Meara Travel Group".
Respondent has also registered the domain names <appletrips.com> (record created May 30, 2003), <appleresorts.com> (record created April 17, 2003) and <my1apple.com> (record created August 11, 2003) (Complainantís Reply and Exhibits 21-23). Respondent has used the URL "www.appleresorts.com" to address a website with the banner "APPLERESORTS" which uses text from Complainantís "www.applevacations.com" website to sell Complainantís travel packages through Respondentís travel agency, Meara Travel Group.
Complainantís "Policy and Guidelines for Use of Marks in Advertising, Promotion and Display" that is distributed to travel agents authorizes the use of the Apple Marks in a "truthful, informational way", including on Internet websites, to promote "Apple Vacations". The Policy and Guidelines specifically prohibit travel agents from referring to themselves as "Apple Vacations travel agents" or "official Apple Vacations travel agencies", and provide that "No one may use the name ĎApple Vacationsí or any Apple Vacations mark (or anything confusingly similar) as part of an Internet domain name".
Complainant has sent cease and desist and transfer demands to Respondent, and has contacted Respondent by telephone demanding that he cease using the disputed domain name <bookapple.com>. According to Complainant, in a telephone conversation Respondent offered to sell that disputed domain name to it for a substantial sum. Respondent asserts that he indicated he did not wish to sell the domain name, although some price may have been discussed at Complainantís prodding. (Complaint and Response)
The Registration Agreement in effect between Respondent and Network Solutions, Inc., subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Partiesí Contentions
Complainant asserts rights in the Apple Marks based on use in commerce in the United States (and elsewhere) and as evidenced by registration at the USPTO (see Factual Background, supra). Complainant asserts that the disputed domain names are confusingly similar to the Apple Marks.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant indicates that Respondent has not been commonly known by the disputed domain names and did not prior to notice of a dispute use (or make preparations to use) them in connection with a good faith offering of services. Complainant denies that Respondent has any fair use rights in its marks.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith. Complainant states that Respondentís conduct indicates that he registered the domain names for the purpose of selling them to Complainant for a price in excess of out of pocket costs. Complainant indicates that Respondent has engaged in a pattern of registering its marks in domain names to prevent it from doing so. Complainant asserts that Respondent intends to use the disputed domain names to divert Internet traffic to its website by creating confusion as to Complainantís sponsorship or endorsement of the website for commercial gain. Complainant indicates that Respondentís provision of false or misleading contact information regarding the registrant of the disputed domain names is further evidence of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to it.
Respondent contends that the disputed domain names are not confusingly similar to the Apple Marks because Complainant does not have a right in the term "apple" standing alone, and because the combination of terms in the disputed domain names may be understood to refer to matters other than travel services.
Respondent asserts rights and legitimate interests in the disputed domain names because of good faith preparations to use them in connection with a long held plan to establish a non-profit venture to support childrenís education. This plan has been temporarily frustrated by initiation of this proceeding, forcing Respondent to post his web content on a website not identified by one of the disputed domain names. Respondent denies any intent or interest in using the disputed domain names in any way connected with offering travel services.
Respondent claims that he has not acted in bad faith. He did not plan or offer to sell the disputed domain names to Complainant. Respondent denies any intent or interest in using the disputed domain names in any way connected with the travel industry. Respondent states that the Policy does not prevent the transfer of domain names to relatives.
Respondent requests the Panel to deny Complainantís request to direct the Registrar to transfer the disputed domain names.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Respondent has filed a timely Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.
Complainant has submitted a request to file a supplemental submission in reply to Respondentís Response. The request and submission contain factual information concerning additional domain names registered by Respondent, and use of them in connection with commercial websites using Complainantís marks. At least one of those names was registered following Complainantís cease and desist demands were initiated, and shortly prior to the commencement of this proceeding. Information concerning use of these domain names is relevant to Respondentís asserted intentions with respect to the domain names at issue in this proceeding. The Panel accepts Complainantís supplemental submission.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondentís 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.
A. Identical or Confusingly Similar
Complainant has registered the word service marks "APPLE" and "APPLE VACATIONS" on the Principal Register at the USPTO in connection with the provision of travel services. Complainant has also registered various "APPLE" word and design service marks, and purely stylized "apple" service marks. Such registration establishes a presumption of validity in U.S. trademark law, and Respondent has not submitted evidence sufficient to rebut that presumption of validity. Complainant has used the "Apple Marks" in commerce for a substantial period of time. The Panel determines that Complainant has rights in the "Apple Marks" for use in connection with travel services.
The disputed domain names each add the word "book" before the term "APPLE". The word "Book" is commonly used in connection with travel to refer to the act or process of making reservations. Complainant has rights in the mark "APPLE" for use in connection with providing travel services. The term "bookapple" would be commonly understood by persons interested in making travel plans to refer to the act or process of making reservations for "APPLE" tours or vacations.
Respondent is the owner of a travel business which books reservations for APPLE tour and vacation packages. He is in the same line of commerce. Although a person without knowledge of Complainant and its marks might plausibly and justifiably make a claim that it had adopted Complainantís marks for use in an alternative and distinct line of commerce, and that a domain name incorporating such marks is not confusingly similar to Complainantís marks for such alternative uses, Respondent has not plausibly or justifiably made such a claim. The Panel finds that the disputed domain name <bookapple.com> is confusingly similar to Complainantís "APPLE" mark.
Subsequent to receiving notice of Complainantís objection to his registration of the <bookapple.com> domain name, Respondent proceeded to register <bookapplecamp.com> and <bookapplegrant.com>. The intention of a party adopting a mark is relevant to whether domain names adopting the mark are confusingly similar. Here Respondent has added largely irrelevant terms to Complainantís mark ("camp" and "grant") to create domain names confusingly similar to Complainantís marks. The Panel finds that, in the particular circumstances of this proceeding, addition of the terms "camp" and "grant" to the already confusingly similar "bookapple" does not relieve that term of its confusing similarity to the "APPLE" mark for use in connection with travel services. The domain names <bookapplecamp.com> and <bookapplegrant.com> are confusingly similar in Complainantís line of commerce to the "APPLE" mark.
The Panel has determined that the Complainant has rights in service marks, and that the disputed domain names are confusingly similar to those marks. Complainant has established the first element necessary for a finding of abusive domain name registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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." (Policy, paragraph 4(c)).
Respondent has not demonstrated that he has been commonly known by the disputed domain name <bookapple.com>, or its two more extended variations. He incorporated "BOOKAPPLE, INC." in the Commonwealth of Virginia effective August 15, 2003, well after receipt of a cease and desist demand from Complainant, and very shortly prior to the commencement of this proceeding. Respondentís own July 29, 2003, application for trademark registration for "bookapple" was submitted as an intent-to-use application. He has not been commonly known by the disputed domain names.
Nor has Respondent, prior to notice of a dispute, made preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Respondentís efforts to establish a record of interest in <bookapple.com> as a youth education enterprise began after notice of a dispute by Complainant.
Respondent has expressly disclaimed any interest or intention to use the dispute domain names in a nominative fair use sense in connection with the offering of Complainantís travel services. It is not for the Panel to evaluate a prospective interest in the face of an express disclaimer of such intent by Respondent. Moreover, Respondent cannot support a claim to legitimate noncommercial use of the name, since no such use is being actively made, and since efforts to present the appearance of such prospective use commenced only after receipt of a cease and desist demand from Complainant.
The Panel determines that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has established the second element for a finding of abusive domain name registration and use.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (Id., paragraph 4(b)(i)); (2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)), and (3) that a respondent "by using the domain name, Ö [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 as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).
By registering the three disputed domain names, Respondent has prevented Complainant from registering its marks in corresponding domain names. In addition, Complainant has presented evidence that Respondent registered at least three additional domain names incorporating the "Apple Marks", i.e., "<appleresorts.com>", "<appletrips.com>" and "<my1apple.com>". Respondent has therefore demonstrated a pattern of conduct of registering domain names that prevent Complainant from registering corresponding names. This constitutes evidence of bad faith.
Moreover, Respondent has used the three additional domain names in the pattern of registration to intentionally divert Internet users to its commercial websites by creating confusion as to Complainantís sponsorship or endorsement of Respondentís websites. This reinforces the conclusion that Respondent has acted, and is acting, in bad faith in connection with the disputed domain names in relation to Complainant and its marks. Respondent has not merely engaged in a pattern of registering domain names confusingly similar to Complainantís marks, but he has used three in the pattern in a way harmful to Complainantís commercial interests.
The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
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 names, <bookapple.com>, <bookapplecamp.com> and <bookapplegrant.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: November 9, 2003