WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ski Utah, Inc. v. The Lodging Company Reservations Ltd.
Case No. D2003-0776
1. The Parties
The Complainant is Ski Utah, Inc., of Salt Lake City, Utah, United States of America ("the Complainant") represented by Gross & Belsky, LLP, United States of America.
The Respondent is The Lodging Company Reservations Ltd., of Kelowna, British Columbia, Canada ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name <skiutah.net> ("the Domain Name") is registered with Network Solutions, Inc. ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2003. On October 2, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 6, 2003, the Registrar 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 October 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 28, 2003.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 3, 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
The Complainant is, as its name implies, a Utah corporation engaged in the ski industry in the State of Utah. It is owned and managed by Utahís thirteen ski resorts. The business commenced in 1975.
The Complainant asserts by way of an Affidavit from its President that:-
1. it is the premier winter vacation promoter for the State of Utah ski industry;
2. it produces and disseminates worldwide advertising and promotional material such as The Ski Utah Winter Vacation Planner;
3. annual revenues from advertisements in The Planner amount to approximately $800,000;
4. it spends approximately $2 million per annum on marketing skiing in Utah. A wealth of promotional literature is exhibited to support that assertion;
5. it operates a back country ski tour known as Ski Utah Interconnect, which is rated by National Geographic Explorer magazine as one of the top adventure tours in the world;
6. it operates a website at "www.skiutah.com" which receives over 200,000 visitors per month. It has owned the <skiutah.com> domain name since 1995.
7. Ski utah was registered in the Supplemental Register in the United States from 1984 to 1991, under registration number 1304440 dated May 31 1983. It has been registered since January 4, 2000, for advertising, business promotion and merchandise (mugs and clothing) under registration number 2306725 dated September 28, 1998.
None of the above is contested by the Respondent (the Respondent not having filed a Response) and on the face of the material put before the Panel, the Panel is prepared to accept the above assertions as fact.
The Respondent, which appears from the evidence of the Complainant to be a company engaged in promoting skiing vacations in British Columbia, registered the Domain Name on November 14, 2002.
On April 29, 2003, the Complainantís representatives wrote a letter to the Respondent drawing attention to the Complainantís rights and seeking transfer of the Domain Name. The letter imposed a May 9, 2003 deadline for a reply. On May 7, 2003, the Respondent replied saying that the relevant person was out of the country and sought an extension of the deadline to May 23, 2003.
On June 2, 2003, no substantive reply having been received from the Respondent, the Complainantís representative sent a Ďchaserí following up on a voicemail message left with the Respondent the previous week and seeking a response by June 5, 2003.
On June 6, 2003, a British Columbia firm of lawyers representing the Respondent sent a letter denying the Complainantís claims of trade mark infringement and cybersquatting. The relevant passage reads as follows:-
"It is our clientís position that the phrase "ski utah" is highly descriptive with respect to services associated with skiing and lodging in ski areas in Utah. As such, we would suggest that your clientís trade mark is not distinctive and was not distinctive at the time our client registered the Domain Name. The registration of the SKI UTAH mark on the Supplemental Register supports a finding of non-distinctiveness of the SKI UTAH mark.
As our client has not acted in bad faith, and as your clientís trade mark does not appear to be distinctive, our clientís registration of skiutah.net would not appear to violate the Act."
5. Partiesí Contentions
The Complainant contends that the Domain Name is identical to a trade mark in which it has rights, namely SKI UTAH.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In the Complaint, the Complainant goes through paragraph 4(c) of the Policy and asserts that none of the examples therein set out are applicable here. The Complainant produces extracts from its web searches to demonstrate the nature and scope of the Respondentís business, none of which appears to have anything to do with skiing in Utah, let alone the name SKI UTAH. The Complainant points out that it has never licensed or authorized the Respondent to use the name SKI UTAH.
Finally, the Complainant asserts that the Domain Name was registered in bad faith and is being used in bad faith. The Complainant points out that while currently the Respondent is only engaged in the ski industry in Canada, the Respondentís website indicates that its business interests will be expanding into the United States. The Complainant contends that the Respondent registered the Domain Name with this in mind and knowing and intending that the use of the Domain Name would deceive Internet users along the lines of paragraph 4(b)(iv) of the Policy. In other words, when connected to an active Internet facility, Internet users will believe the Domain Name and the facility to which it is connected to have some connection with the Complainant and/or its website at "www.skiutah.com". The Respondent will derive a commercial gain from that confusion.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove 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 Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)).
A. Identical or Confusingly Similar
The Domain Name comprises the name/mark SKI UTAH and the domain suffix. In assessing identity/confusing similarity, the domain suffix is to be ignored.
Accordingly, the Domain Name is identical to the name/mark in question. But is the name a trade mark in which the Complainant has rights?
On the face of it one would have anticipated that registration of the name/mark on the US Supplemental Register gives some kind of rights to the Complainant, but the Complainant does not provide the Panel, who is not a US lawyer, with sufficient information to enable the Panel to assess the position. Moreover, the Complainant does not rely upon its Supplemental Register registration. Instead, it relies upon its common law rights.
The Complainant has put before the Panel a wealth of material to demonstrate that it is a substantial, well known and successful business which has operated for many years in Utah under the name SKI UTAH. The Panel believes it most unlikely that a competitor could trade under the same name in the same field without there being a high risk of substantial confusion. On this basis that Panel concludes that in such a situation the Complainant would be likely to succeed in a passing off/unfair competition action against the competitor in question entitling the Complainant to injunctive relief, restraining use of the name/mark SKI UTAH by that competitor.
It is on this basis that the Panel finds that the Complainant has common law rights in the name/mark SKI UTAH. Put another way, SKI UTAH is a trade mark in which the Complainant has unregistered rights.
In coming to this conclusion the Panel is aware that courts in common law jurisdictions tend to be slow to permit monopolies (and quasi-monopolies) in descriptive terms which competitors might reasonably wish to use in their business literature. However, in this case, while SKI UTAH has a strongly descriptive flavour, the Complainant has in the view of the Panel done enough to establish a secondary meaning. While the ambit of the Complainantís rights may be very narrow, they will certainly be sufficient to catch the use of an identical name in relation to a substantially identical category of service.
Accordingly, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy the Complainant is required to prove a negative, namely that the Respondent has no rights or legitimate interests in respect of the Domain Name.
In pursuit of that goal the Complainant has drawn attention to the facts and matters set out in paragraph 4(c) of the Policy which, if a Respondent can demonstrate that they (or any of them) are applicable, will establish that the Respondent has the relevant rights and/or legitimate interests. The Complainant has produced material tending to show that none of the examples set out in paragraph 4(c) of the Policy are applicable here. The Respondent is not conducting a business under or by reference to the name SKI UTAH, the Respondent is not known as SKI UTAH and the Respondent is not making any fair and/or non-commercial use of the name. The Complainant adds that it has not granted to the Respondent any rights or licence to use the name SKI UTAH.
The Panel is satisfied that the Complainant has made out a prima facie case under this head. In other words, the Respondent has a case to answer. The Respondent has not provided an answer of any kind. Moreover, the Panel cannot think of any reason why the Respondent might reasonably be said to have rights or legitimate interest in respect of the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Respondent is engaged in the ski industry in North America. Moreover, the Respondent is accustomed to conducting its business via the Internet. If it was the Respondentís intention to get involved in skiing vacations in Utah, the Respondent would have checked out that market in advance. The Panel finds it inconceivable that in those circumstances the Respondent could have registered the Domain Name skiutah.net without being aware of the existence of the Complainant and its website at "www.skiutah.com". In the Panelís experience, if one is registering a Domain Name in the .net domain, one will be likely to have checked who has registered the same name in the .com and possibly .org domains. However, as indicated, the Panel believes that the Respondent will have been well aware of the existence of the Complainant and its trade mark SKI UTAH long before it contemplated registering the Domain Name.
The circumstances are such that the Panel has no hesitation in accepting the Complainantís assertion that the Respondentís objective in registering the Domain Name was to use it in due course with a view to attracting internet users to its website and knowing that a substantial proportion of visitors to a website at "www.skiutah.net" will be likely to believe that the website is in some way associated with the website of the Complainant at "www.skiutah.com".
The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(a)(iv) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <skiutah.net>, be transferred to the Complainant.
Dated: November 7, 2003