WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chilton Properties, LLC v. NB Design/Natalie Brooks Design/Natalie Brooks
Case No. D2008-0199
1. The Parties
Complainant is Chilton Properties, LLC, Phoenix, Arizona, United States of America, represented by the law firm Jennings, Haug & Cunningham, LLP, United States of America.
Respondent is NB Design/Natalie Brooks Design/Natalie Brooks, Surprise, Arizona, United States of America. Ms. Brooks has submitted a Response.
2. The Domain Name and Registrar
The disputed domain name <ridenowpowersports.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint, in which only Natalie Brooks was named as Respondent, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2008. On February 7, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name, and GoDaddy.com, Inc. transmitted by email to the Center its verification response. This response stated that NBDesign was listed as the registrant and provided contact details listing Natalie Brooks as the technical and administrative contacts.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 18, 2008, adding NBDesign as a Respondent in addition to Ms. Brooks.1 The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on February 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2008. The Response was filed with the Center on February 19, 2008.2
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 4, 2008. The Panel finds that it was properly constituted. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant failed to serve Respondent with a copy of the Complaint or amended Complaint, as prescribed by the Rules, paragraph 2(a). Respondent confirmed, however, receipt of these pleadings from the Center, and has timely filed her Response. Thus the Panel has jurisdiction over this proceeding and there is no issue about whether Respondent has been “given a fair opportunity to present [her] case.” Rules, paragraph 10(b).3
4. Factual Background
Complainant does business under the name RideNow PowerSports. According to its website at “www.ridenowpowersports.com”, the company sells parts, accessories, apparel, luggage, and similar goods related to motorcycles. This website, but no evidence in the Complaint, states that Complainant maintains 31 retail locations throughout the United States of America as well as this online business. According to the Complaint, again without supporting evidence, Complainant has spent approximately $4.9 million in advertising relating to its name. Complainant holds a trademark in International Class 35 for RIDENOW, for advertising services related to the sale of motorcycles, all terrain vehicles, powerboats, and other related products. This mark was registered on the principal register of the United States Patent and Trademark Office (USPTO) in November 2005 based upon a first use in commerce in October 2004.
Respondent is an Internet developer and also a dissatisfied customer of Complainant. She registered the disputed domain name in October 2007. The disputed domain name resolves to a website optioned “Screw RIDE PowerSports Now (the Forum)” and “Information to help the Buyer Beware.” At this website Respondent maintains a blog at which she invites other dissatisfied customers of Complainant to post their stories: “Tell them your story, let them know what happened, make your post, they are watching and they will see it.” Through the website Respondent offers “at cost” tee shirts with her “Screw RideNow” logo. The website contains several unrelated advertisements and hyperlinks, some sponsored by Google but others not, some related to motorcycles and cycling but others not. One such other advertisement includes a link to a site apparently run by Respondent that sells electronic greeting cards; another is about and includes a link to a company that licenses software for real estate applications. At both these sites the banner across the top of the page has Respondent’s name prominently displayed.
5. Parties’ Contentions
A. Complainant contends as follows:
Complainant has rights in its RIDENOW mark by virtue of its USPTO registration. The disputed domain name contains RideNow as its principal element and is therefore confusingly similar to Complainant’s mark.
Respondent has no right to or legitimate interest in the disputed domain name. She is not known by “RideNow Power Sports” or “RideNow”, she has no connection to the Complainant; and Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent’s use of the disputed domain name to “disparage Complainant and its employees” is not legitimate under the Policy.
Respondent registered and has used the disputed domain name to tarnish Complainant’s mark and to confuse Internet users by luring to Respondent’s website Internet users seeking Complainant by adopting a domain name that is confusingly similar to Complainant’s mark.
B. Respondent contends as follows:4
Respondent has not committed trademark infringement. Complainant’s mark is in the words “RideNow” only, not “RideNow Power Sports”.
Respondent has not profited from her use of the disputed domain name. The shirts are sold at cost, advertising on the site is free, and the commercial advertisements yield “pennies” that are generated by visitors to her website, not the site’s content or Google’s name. As an American citizen, Respondent has a constitutional right to free speech. The stories on her site are true and “within [United States] law guidelines.”
Respondent has tried in good faith to comply with Complainant’s requests and to obviate any confusion between her site and Complainant’s. She changed the banner on her site from Screw RideNow Power Sports (the Forum) to Screw RIDE Power Sports Now (the Forum). The disputed domain name is today only a gateway for redirection to Respondent’s website at this latter name.
Complainant has singled out Respondent for retaliation because of her grievances. Despite the fact that a third party has registered “www.ridenow.org”, Complainant has not pursued that third party, only Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has a federally registered trademark in RIDENOW, which is sufficient to meet the first element of paragraph 4(a)(i) of the Policy. There is no dispute over whether Respondent, as a customer of Complainant, was aware of this mark. Identity of the disputed domain name with the Complainant’s mark is not required under paragraph 4(a)(i);5 rather the Complainant must establish that the disputed domain name is identical or confusingly similar to that mark. A long (and to this Panel’s knowledge unbroken) line of decisions under the Policy hold that confusing similarity is established when a respondent adopts the dominant feature of the complainant’s mark as the dominant feature of the disputed domain name. That is exactly what Respondent has done here. The dominant feature of the disputed domain name is RIDENOW, Complainant’s mark. Adding “Power Sports”, a word used by Complainant in its business name, makes confusion more, not less, likely. Forest Laboratories, Inc. v. Awad Kajouk, WIPO Case No. D2007-1650. Paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges, and Respondent does not deny, that Complainant has not authorized Respondent to use the disputed domain name or to use Complainant’s mark, or that Respondent has been commonly known, personally or in business, by any phrase that includes the words “RideNow”.
Respondent’s argument that she is merely exercising her First Amendment right to freedom of speech cannot clear a preliminary hurdle because of the considerable commercial content included at her forum site. This commercial content is not, as Respondent would have it, incidental to the blog. Several of the advertisements are quite prominent and completely unrelated to Complainant or criticism of Complainant; that is certainly true of the advertisement for Respondent’s greeting card business that contains a link to a website at which Respondent sells unrelated merchandise.
The fact that the commercial content has yielded little direct revenue or that Respondent has operated the website at a loss cannot overcome the undeniable fact that this content was intended to generate income for Respondent, both directly through click-through revenues (presumably the “pennies” referred to in the Response) and indirectly through the link to her other business or businesses. Their prominent inclusion on the website at the disputed domain name fatally undercuts any contention that the website is devoted entirely to criticism of Complainant and therefore solely an exercise of free speech. Including the advertisements and hyperlinks is no accident, as Respondent has been an Internet developer for ten years and may be presumed to know about the use of advertisements and links to generate business through referrals.
No commercial use is a threshold requirement even in the cases decided under View 2 of the WIPO Overview, paragraph 2.4, sustaining a First Amendment defense in a Policy proceeding (“This section only concerns sites that practice genuine, non-commercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain.”).6 Paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Complainant has also proven bad faith in use and registration. The text of Respondent’s blog and Respondent’s arguments in her Response make it clear that she selected the disputed domain name to make use of Complainant’s mark intentionally to attract other Internet users including those who may be seeking Complainant. Without the First Amendment defense that the Panel has found unavailing in the circumstances of this proceeding Respondent’s conduct falls squarely within the example of bad faith set out in paragraph 4(b)(iv) of the Policy: “By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Complainant’s failure to pursue an unrelated third party that allegedly also has a domain name incorporating Complainant’s mark has nothing to do with this proceeding. Here the Panel deals only with Respondent’s acquisition and use of Respondent’s domain name. As to those matters Complainant has met its burden of proof under each of the necessary paragraphs of the Policy.
Respondent devotes much of her Response to the nature and merits of her dispute with Complainant. The Panel has no means to judge whether these charges are true, presented in a proper factual content, or actionable at law; similarly the Panel has no way to determine if Respondent’s statements defame or disparage, as Complainant alleges. The Panel makes no findings on these matters one way or the other, leaving the parties to the national courts should they choose to pursue them.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ridenowpowersports.info> be transferred to Complainant.
Richard G. Lyon
Dated: March 17, 2008
1 For simplicity the Panel refers in this decision to Ms. Brooks as Respondent.
2 The Response is in the form of an email communication from Respondent to the Center. Upon the Center’s receipt of this email, the case manager requested Respondent to confirm that she wished the email to be treated as her Response. Respondent provided this confirmation on February 20, 2008.
3 Each party copied the Panel on an email communication to the Center after the Panel’s appointment, in violation of the Rules, paragraph 8.
4 In an earlier email message to the Center Respondent states: “My defense is on the site. Everything marked with ‘Administrator’ is me.” In rendering this decision the Panel has therefore reviewed, and treated as part of the Response, the content of website at the disputed domain name and all email communications from Respondent to the Center.
5 The Policy also does not require trademark infringement, as Respondent appears to contend.
6 See, e.g., Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947; Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300 (“a respondent must not be seen to be using the criticism site for commercial gain”); Gilead Sciences, Inc. v. Kumar Patel, WIPO Case No. D2005-0831.