WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Havasupai Tribe of Arizona v. AZNETCO
Case No. D2012-2030
1. The Parties
The Complainant is the Havasupai Tribe of Arizona of Supai, Arizona, United States of America, represented by The Rothstein Law Firm, United States of America.
The Respondent is AZNETCO of Chandler, Arizona, United States of America, represented by Stephen H. Sturgeon, United States of America.
2. The Domain Name and Registrar
The disputed domain name <havasupaitribe.com> (the “Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 12, 2012, 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 Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response November 19, 2012. The Respondent did not file a Response within the original deadline and accordingly the Center Notified the Respondent’s Default on November 20, 2012. On December 4, 2012, the Respondent’s authorized representative contacted the Center and notified the Parties of his appearance, provided a list of the Respondent’s Panel candidates and requested an extension of the Response due date because of personal hardships experienced by the Respondent. The Response was filed with the Center on December 19, 2012.
The Center appointed W. Scott Blackmer, William F “Bill” Hamilton and The Hon Neil Brown Q.C. as panelists in this matter on December 21, 2012. The Panel finds that it was properly constituted. Each member of 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 an Indian Tribe (termed a “Native Sovereign Nation” in more recent governmental documents) that is recognized by the Federal Government of the United States of America. The Complainant occupies a tribal reservation in and around the Grand Canyon of the Colorado River in the State of Arizona. It is undisputed that the Complainant is a legal entity that is competent, among other things, to engage in commerce and to own and use trademarks in commerce.
Since the 1950s, tourism has been the Complainant’s principal economic activity, commercialized through tribally owned enterprises. Despite the fact that there are no roads leading to the portion of the tribal reservation where world-famous waterfalls are located, some 20,000 tourists arrive annually on foot or on horseback, or by helicopter. The Complainant’s “Havasupai Tourism Enterprise” provides tourism services such as food, lodging, and guided horseback excursions and operates the “Havasupai Lodge”, the “Havasupai Tribal Café”, the “Havasupai Trading Post”, and campgrounds. The Complainant’s official website is found at “www.havasupai-nsn.gov”.
The Complainant has not registered “Havasupai” or “Havasupai Tribe” as trademarks. However, the Complainant claims them as common law marks, based on their use in commerce since 1961 in offering commercial tourism services on tribal lands to visitors from throughout the United States and many other countries.
The Respondent is an Arizona limited liability company that offers information technology support services in Arizona, with a website at “www.aznetco.com”.
According to historical WhoIs listings, the Domain Name was first registered by the Complainant, under the name “Havasupai Nation” (later changed to “Havasupai Tribe”), on June 19, 2001. On September 14, 2007, the Complainant’s “Havasupai Business Enterprise” (“HBE”) entered into a “Consultant Service Agreement” with the Respondent (named as “AZNETCO & Affiliates, LLC”), under which the Respondent would provide information technology and Internet services to HBE. The Complaint attaches copies of the agreement and invoices paid by HBE for the Respondent’s services, including “support of websites, email, domain names”.
On April 28, 2010, the Respondent sent a letter to the Complainant’s accountant, with a copy to the Complainant’s tribal council, saying that for more than three years the Respondent had “operated, managed, and maintained the website “www.havasupaitribe.com” for the benefit of the Havasupai tribe and its tourism industry.” The letter stated that the Respondent had continually updated the website as requested by tribal members and responded to “countless inquiries” from website visitors. Although the Respondent’s letter asserted that there were “now over 2 million hits a month” on the website, the Respondent also reported that there was insufficient advertising revenue to support the website and that the Respondent had already listed “the site” with a few brokers, for an asking price of USD 200,000. The Respondent warned that absent sufficient advertising or a negotiated agreement for the Respondent to continue maintaining the website by May 15, 2010, the Respondent would “take down the website or sell it to the highest bidder,” as the Respondent did not have the resources to continue maintaining the website and spending “countless hours” responding to inquiries from visitors. It appears from this letter and from the May 2011 email from Mr. Robinson, described below, that the Respondent’s practice had been to maintain the website to promote the Complainant’s tourism enterprises but also to retain for itself any third-party advertising revenues generated by the website.
The publicly-available WhoIs record shows that in August 2010 the Domain Name was still registered in the name of the Complainant, but the Respondent was named as the administrative contact. The registrant and administrative contact details are the same in a cached version of the publicly-available WhoIs record dated October 9, 2010. By December 1, 2010, however, the registration had been changed to show the Respondent as the registrant of the Domain Name. Thus, it appears that the Respondent changed the registration to its own name at some time between October 9, and December 1, 2010.
The Complaint attaches an email dated May 17, 2011, from the Complainant’s legal advisor, Mr. Robinson, to the Complainant’s tribal council, reporting on recent conversations with the Respondent and the Registrar. Mr. Robinson reported that the Respondent’s principal, Mr. Nicolaus, had “purchased the domain name through” the Registrar when the Complainant did not renew the registration and was now offering to sell the Domain Name to the Complainant for USD 200,000. According to the email, the Respondent reported that the website had been generating approximately USD 20,000 annually in advertising revenues. Mr. Robinson’s supposition that the Domain Name had been allowed to expire does not square with the WhoIs record, which indicates that the registration was renewed in June 2010, and remained in the name of the Complainant until at least October 9, 2010.
In November 2011, the Complainant’s accountant (who appears not to have been apprised of the earlier communications between the Respondent and the Complainant’s counsel) exchanged emails with Mr. Nicolaus, asking if he still maintained the website and, if so, instructing him to have the website show that it was “closed indefinitely”. Mr. Nicolaus replied that “[t]he entity that purchased the website is inquiring if the tribe would like free online reservations.” Mr. Nicolaus did not identify the entity that “purchased the website”, and there is no evidence in the record that any entity other than the Respondent ever controlled the Domain Name after the registration was changed to the Respondent’s name.
It is undisputed that the Respondent changed the registration of the Domain Name in late 2010 to show the Respondent as the registrant, and that the Respondent has since used the Domain Name for a website (the “Respondent’s website”) that displays information about tourist attractions in the Grand Canyon. The Respondent’s website advertises a variety of tourism services, some competing with those offered by the Complainant, such as Grand Canyon lodgings and campgrounds, guided tours, Colorado River rafting trips, and air tours. The “Contact” page of the Respondent’s website displays contact details for the Complainant rather than for the Respondent, and the website does not explain or disclaim any relationship between the Complainant and the website operator. An “Advertise with Us” page offers to place exclusive or rotating advertisements on the Respondent’s website in several categories (such as guided tours and camping gear), with a contact email address using the Domain Name. Thus, any parties interested in advertising on the website associated with the Domain Name are directed to the Respondent.
The Response is notably lacking in detail and supporting documentation. Counsel for the Respondent explains that Mr. Nicolaus suffered from a recent family tragedy and failed to provide such information as requested by counsel in nearly 40 unanswered emails. The Respondent has not offered to furnish additional evidence since the Response was filed. The Panel sympathizes with Mr. Nicolaus’ loss but notes that the Center already accommodated the Respondent by extending the deadline for filing a Response, which was ultimately filed a month after the original default date. The Panel will therefore proceed to a decision under the Policy based on the available record.
5. Parties’ Contentions
The Complainant claims common law rights in the HAVASUPAI mark and contends that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent, a paid consultant to the tribe, registered the Domain Name in bad faith in 2010 and used it to display paid advertising for the Complainant’s competitors, as well as offering to sell it to the Complainant for a price in excess of out-of-pocket costs.
The Respondent challenges the Complainant’s claim to common law trademarks. The Respondent asserts a legitimate interest in using the Domain Name for a website containing information and advertising pertinent to Internet users interested in visiting tourist attractions on the Complainant’s tribal lands. The Respondent argues that it was not bad faith to register the Domain Name, consisting of geographic and generic terms, and use it for relevant commercial purposes.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
As provided in paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant has not sought to register HAVASUPAI or HAVASUPAI TRIBE as trademarks, but it is undisputed that the Complainant has used these terms in connection with commercial tribal enterprises for more than half a century. The use of the tribal name in branding tourism services is reflected, for example, in the names of the Havasupai Lodge, the Havasupai Tribal Café, and the Havasupai Trading Post. These names appear on signage and also on the Complainant’s website, as well as on numerous third-party travel and travel reservations websites.
The Policy does not require that the Complainant’s marks be registered, but in the case of unregistered marks the Complainant “must show that the name has become a distinctive identifier associated with the complainant or its goods or services.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7. “The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.” Id. Here, the record indicates that the Complainant has long used the tribal name in connection with commercial tourism enterprises on tribal lands in the Grand Canyon. Given this long association, of the tribal name with tourism enterprises at a world-famous tourist destination, the Panel concludes that the Complainant more likely than not has enforceable rights in these names, in appropriate circumstances, under state laws including Arizona’s Fair Trade Practices Act, Consumer Fraud Act, and Unfair Sales Act, as well as under the common law tort doctrines of unfair competition, passing off, deceptive marketing, and misappropriation of trade values, which are widely recognized in the United States and specifically in Arizona jurisprudence. See, e.g., Arizona Department of State, “Trade Names, Trademarks & Service Marks”, www.azsos.gov/business_services/tnt/TNTHBook.pdf (state or federal registration does not displace other common law and statutory remedies): S. Aiken, “Unfair Competition in Arizona” (2004), available online at http://ashrlaw.com/dox/unfaircomp04.pdf: American Law Institute, Restatement of the Law (3d) of Unfair Competition (rev. 2012), chapters 2-4 (and cases cited therein).
The Panel concludes that the Complainant has established right to the common law marks HAVASUPAI and HAVASUPAI TRIBE.
The Domain Name incorporates the HAVASUPAI mark and is identical to the HAVASUPAI TRIBE mark except for the omission of a space between the words, which is not permitted in URL addresses in the Domain Name System. The Panel finds that the Domain Name is confusingly similar to the Complainant’s common law HAVASUPAI and HAVASUPAI TRIBE marks in appearance, sound, and meaning, establishing the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights to or legitimate interests in the Domain Names, by demonstrating any of the following:
“(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights: or
(iii) the respondent is 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.”
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing indicating the absence of such rights or interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Here, the Complainant has furnished evidence that the Respondent administered the Domain Name and associated website under a consulting contract with the Complainant. The Respondent’s own April 28, 2010, letter acknowledges that the Respondent did so “for the benefit of” the Complainant. The Response says that the written consulting agreement does not preclude the possibility of alternative oral agreements between the parties, but the Response does not attach an affidavit or other evidence of such oral agreements or describe their terms. There is no evidence in the record that the Complainant gave the Respondent permission to change the registration of the Domain Name to name the Respondent as the registrant, or to use the Domain Name for a website advertising competing tourism services. The Complainant states that it never did so, and the Panel finds it unlikely that the Complainant would consent to such use of its marks. Indeed, the record shows that the Complainant promptly asserted its trademark rights when the Respondent announced its intention to sell the Domain Name “to the highest bidder”.
The Respondent has not demonstrated that it had a license to use the Complainant’s marks in the Domain Name or in the Respondent’s website, nor has the Respondent demonstrated any other basis for claiming rights or legitimate interests in the Domain Name. While the Domain Name was registered to the Complainant, the Respondent apparently used its administrative control over the Domain Name to change the registration to its own name. The Respondent then used the Domain Name to advertise Grand Canyon tourism services competing with those offered by the Complainant. The Respondent was well aware of the commercial activity associated with the Complainant’s name HAVASUPAI TRIBE, because the Respondent had been managing the Complainant’s website for several years. In the Panel’s view, this cannot be considered a use of the Domain Name in connection with a “bona fide” offering of goods or services under the Policy, paragraph 4(c)(i), because it is a use that may infringe on the Complainant’s trademark rights and exceeds the scope of the Respondent’s contract with the Complainant.
Therefore, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie case under the second element of the Complaint. The Respondent has not come forward with persuasive evidence that the Respondent has any rights or legitimate interests in the Domain Name.
The Panel finds the Complaint has established the second element under the Policy.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or . . .
(iv) 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.”
The Complainant argues that both of these examples of bad faith are present in the facts of this case, and that the Respondent’s appropriation of the Domain Name while serving as a contracted consultant to the Complainant is additional evidence of bad faith in the registration and use of the Domain Name. The Panel agrees with these conclusions.
The relevant time for determining whether there was bad faith in the registration of the Domain Name is late 2010, when the registration was changed to show the Respondent, rather than the Complainant, as the registrant. “Registration in bad faith must normally occur at the time the current registrant took possession of the domain name” (WIPO Overview 2.0, paragraph 3.7).
In October or November 2010, when the name of the registrant was changed with the Registrar, the Respondent was undeniably familiar with the Complainant and the names used for its commercial enterprises. The Respondent had been maintaining the Complainant’s website for several years under contract with the Complainant, a contract that expressly required the Respondent to provide information technology and website support for those enterprises. The Complainant’s counsel (as he reported to the Complainant’s tribal council in May 2010) had already asserted the Complainant’s rights in the marks in direct communications with the Respondent, before the registration was changed.
The Respondent does not explain how the Domain Name came to be registered in the Respondent’s name, after it had been registered to the Complainant for more than nine years and maintained by the Respondent itself as a consultant to the Complainant. The Complainant’s representative in May 2010 spoke with the Respondent and the Registrar and reported his impression that the Complainant had allowed the Domain Name to expire and that it had then been registered by the Respondent (which would still raise bad faith issues given the Respondent’s awareness of the Complainant’s business and its role as a paid consultant to the Complainant). However, this does not appear to be accurate. The historical and publicly-available WhoIs record shows that the Domain Name registration expired in June at the end of each term since the Domain Name was created, and that it was still registered in the name of the Complainant on October 9, 2010. By August 2010, the Respondent was listed as the administrative contact for the Domain Name, and the Respondent presumably used its authority as administrative contact to change the name of the registrant in October or November 2010. Despite the Respondent’s vague reference to the “purchase” of the Domain Name in the November 2011 email exchange with the Complainant’s accountant, there is no evidence in the record that the Domain Name was ever purchased by the Respondent or any other party. The most likely explanation of the events is that the Respondent, as the administrative contact, simply changed the name of the registrant. The Respondent does not deny doing so, and the Respondent does not furnish any evidence that the Complainant ever agreed to transfer the Domain Name to the Respondent. This course of conduct reflects, in the Panel’s view, bad faith in the Respondent’s registration of the Domain Name, within the meaning of the Policy, paragraph 4(b).
Even before the registration was changed, the Respondent threatened (in its April 2010 letter to the Complainant and in subsequent conversations with the Complainant’s representative) to sell the Domain Name “to the highest bidder”, listing the Domain Name with brokers for an asking price of USD 200,000, and later asking for that amount from the Complainant. Such an amount is clearly in excess of out-of-pocket costs relating to the registration of the Domain Name. The Response states that the Complainant owed the Respondent more than USD 25,000 in payment for the Respondent’s services, and suggests that the Respondent’s appropriation of the Domain Name helped discharge that debt. However, the Respondent offers no evidence of a debt, lien, or agreement to transfer the Domain Name to the Respondent. The Panel therefore finds this conduct indicative of bad faith in the manner described in the Policy, paragraph 4(b)(i).
The Respondent has since used the Domain Name for commercial gain, for paid advertising relating to Grand Canyon tours and lodging and other services, some of which compete with those offered by the Complainant. The Respondent has fostered a likelihood of confusion with the Complainant’s marks, by using the same Domain Name incorporating those marks that was formerly used by the Complainant itself, misleadingly displaying the Complainant’s name on the associated website and the Complainant’s contact information on the “Contact” page of that website, and providing no identification of the Respondent or disclaimer of affiliation with the Complainant. The Panel concludes that these facts fit the paradigm of bad faith described in the Policy, paragraph 4(b)(iv), as an attempt to mislead Internet users for commercial gain.
For 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, <havasupaitribe.com> be transferred to the Complainant.
W. Scott Blackmer
William F “Bill” Hamilton
The Hon Neil Brown Q.C.
Date: January 5, 2012