WIPO Arbitration and Mediation Center


Van Wagner Communications, LLC v. Robert Shockey

Case No. D2010-0531

1. The Parties

Complainant is Van Wagner Communications, LLC of New York, United States of America represented by Sonnenschein Nath & Rosenthal of United States of America.

Respondent is Robert Shockey of Florida, United States of America represented by Jacobson & Colfin, P.C. of United States of America.

2. The Domain Name and Registrar

The disputed domain name <vanwagneroutdoor.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2010. On April 8, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 11, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on April 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 5, 2010. On May 7, 2010 the Center received a fax from Respondent indicating it wished to consent to transfer the disputed domain name to the Complainant.

The Center appointed Clark W. Lackert as the sole panelist in this matter on May 18, 2010. 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

Complainant is the owner of the VAN WAGNER service mark, Reg. No. 2,812,961, in the United States Patent and Trademark Office (“USPTO”) and Community Trade Mrk (“CTM”) Reg. No. 002983757 in the Office of Harmonization of the Internal Market (OHIM). Complainant has used the VAN WAGNER mark for decades. Complainant has also conducted business under the name Van Wagner Outdoor since 1998 and operates the website “www.vanwagner.com” which is available globally. Complainant provides advertising space and disseminates advertising and direct marketing services for others, and rents advertising space, including billboards, bulletin boards, street furniture, kiosks, aerials, and spectaculars (one of a kind displays).

Respondent provides outdoor advertising services and registered the domain name <vanwagneroutdoor.com> in 2006. The website appears to host content from another domain name of Respondent, <greatoutdoornetwork.com>.

According to the Complaint, on May 25, 2006, Complainant sent a cease and desist letter to Respondent. Thereafter, Respondent discontinued having the <vanwagneroutdoor.com> domain name redirect viewers to <greatoutdoornetwork.com> and instead redirected viewers to <realworkoutsinc.com>. The <realworkoutsinc.com> did not offer outdoor advertising services, but rather was supposedly selling workout videos.

On March 16, 2010, Complainant discovered that Respondent had again commenced offering outdoor advertising services at the “vanwagneroutdoor.com” website. Complainant then filed this Complaint with the Center.

5. Parties' Contentions

A. Complainant

Van Wagner is a limited liability company organized under the laws of the State of New York. Van Wagner registered the domain name <vanwagner.com> on February 8, 1999. Van Wagner is the owner of the VAN WAGNER service mark and owns registrations for the VAN WAGNER mark with the OHIM in the European Union and the USPTO. Van Wagner's registration for the mark VAN WAGNER in the United States is registered on the Principal Register, Reg. No. 2,812,961, dated February 10, 2004. Van Wagner and its predecessor-in-interest have used the mark VAN WAGNER in the United States for decades. Van Wagner's registration for the mark VAN WAGNER in the European Union is registered on the CTM registry, Reg. No. 002983757, dated May 26, 2004.

Van Wagner currently conducts business, and has conducted business since at least 1998 under the name Van Wagner Outdoor, including in California, Florida, Illinois and New York.

Van Wagner operates the site “www.vanwagner.com”. The Van Wagner website provides information about Van Wagner, its services, market, and contact information, among other things. Van Wagner provides advertising space and disseminates advertising and offers direct marketing for others in addition to renting advertising space. Van Wagner is particularly known for its outdoor advertising services, including billboards, bulletin boards, street furniture, kiosks, aerial, and spectaculars - one of a kind displays - that are unique based on the size, technology, special effects/applications, and/or location. Van Wagner's spectaculars are located in key pockets of leading markets including New York's Times Square, Penn Station, and the Meatpacking District; Sunset Strip and Hollywood in Los Angeles; and Chicago's Loop. The mark VAN WAGNER is prominently displayed in Complainant's advertisements.

Van Wagner offers and promotes its advertising services on its website “www.vanwagner.com”, which is available globally. Van Wagner's market in the United States includes some of the largest cities in the country, including, New York, Los Angeles, Chicago, Boston, Washington D.C., Miami, San Diego, and San Francisco. The VAN WAGNER mark is immediately recognizable by consumers worldwide in connection with its advertising services. As a result of the activities of Van Wagner, the VAN WAGNER mark has acquired substantial goodwill worldwide and is an invaluable asset to Van Wagner.

Van Wagner maintains a trademark policing program to prosecute and deter infringement of the VAN WAGNER mark, including sending cease and desist letters to third parties infringing the VAN WAGNER mark. Each of these matters have been resolved favorably to Van Wagner.

Respondent registered and commenced use of the domain name <vanwagneroutdoor.com> in connection with outdoor advertising around 2006. At or around this date, the domain name <vanwagneroutdoor.com> redirected to the site at <greatoutdoornetwork.com>, which, upon information and belief, was also owned by Respondent and offered competing outdoor advertising services.

Upon learning of the infringement, on May 25, 2006, counsel for Van Wagner sent a cease and desist letter to Respondent, advising Respondent of Van Wagner's rights in and to the VAN WAGNER mark, asserting that Respondent's registration and use of the domain name <vanwagneroutdoor.com> violated the trademark rights of Van Wagner, and requesting that Respondent assign the domain name <vanwagneroutdoor.com> to Complainant.

On or about June 5, 2006, Respondent caused the domain name <vanwagneroutdoor.com> to cease from redirecting to <greatoutdoornetwork.com>. Instead, the <vanwagneroutdoor.com> domain name began redirecting to the domain name <realworkoutsinc.com>, which appears to not have been offering outdoor advertising services but rather, purported to sell workout videos at this domain address. At that time, Van Wagner elected not to pursue a UDRP proceeding against Respondent, since Respondent ceased operating the domain name in connection with advertising services.

Respondent, through Domains By Proxy, Inc., renewed the domain name <vanwagneroutdoor.com> in 2006 and at sometime thereafter began to again offer advertising services at the disputed domain name <vanwagneroutdoor.com>.

On March 16, 2010, Complainant discovered that Respondent once again had commenced offering the nearly identical and substantially related services at the “www.vanwagneroutdoor.com” website. Counsel for Van Wagner promptly filed this Complaint believing that it had no other viable option to stop Respondent's continuing infringement.

Respondent's actions are especially egregious given that he is still an officer at Great Outdoor Network, Inc. (“GON”). Respondent was President of GON in 2006 and currently holds the position of Chief Executive Officer. Respondent certainly had knowledge of GON's infringing activity personally, and as an officer of GON.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant registered the VAN WAGNER mark with the USPTO on February 10, 2004 and in the European Union on May 26, 2004. Complainant has established rights in the VAN WAGNER mark under paragraph 4(a)(i) of the Policy. See Dalworth Carpet Cleaning, Inc. v. Dalworth Carpet Cleaning, Inc. c/o Domain Administrator, NAF Claim FA 727717 (“Complainant has established rights in the DALWORTH CARPET CLEANING mark through registration with the USPTO.”); Innomed Techs., Inc. v. DRP Servs., NAF Claim FA 221171(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

The domain name <vanwagneroutdoor.com> is confusingly similar to the VAN WAGNER mark in which Complainant has rights. Moreover, Respondent's domain name creates likelihood of confusion among consumers by falsely suggesting an association between Complainant and Respondent.

The domain name <vanwagneroutdoor.com> appears to be a Van Wagner sponsored domain name with the addition of the descriptive, if not generic term “outdoor,” to describe outdoor advertising services, an advertising area in which Complainant dominates the market. As other panels have held, the fact that a domain name incorporates a complainant's registered mark often can be sufficient to establish identical or confusing similarity for the purpose of the Policy, despite the addition of other words and letters to such marks.

The panel in Google Inc. v. Jennifer Burns, NAF Claim FA 726096, for example, found that domain names which incorporate a mark in its entirety with the generic term “outdoors” are confusingly similar for the purposes of Policy 4(a)(i). In Google, the panel found that the mere addition of the generic term “outdoors” to a domain that incorporates the mark GOOGLE, is insufficient in and of itself, to confer requisite and sufficient distinctiveness to avoid user confusion between the domain name <googleoutdoors.com> and the mark GOOGLE. Id. Likewise, adding the word “outdoor” to Complainant's well-known mark VAN WAGNER, exacerbates confusion especially since the term “outdoor” describes an area of Complainant's advertising services in which Complainant is a world leader, specifically, outdoor advertising services. Moreover, “Van Wagner Outdoor” is a business name used by Complainant since at least 1998.

Similarly, in Academy, Ltd. d/b/a Academy Sports & Outdoors v. I Lik Itt., NAF Claim FA 823129, the panel found that the addition of the generic terms “sports” and “outdoors” along with a hyphen, did not distinguish the domain name <academysportsoutdoors.com> from the mark ACADEMY and thus ordered the transfer of the domain name. Id. Indeed, other panels have held that “[t]he addition of generic words is especially confusing where the generic words bear an obvious relationship to Complainant's business.” Foot Locker, Inc. v. Blezin Widmaer, NAF Claim FA113283; see also Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740 (holding respondent's domain name <wamudirect.com> confusingly similar to complainant's WAMU trademark, noting that the addition of the descriptive term “[d]irect...increases the likelihood of confusion”); Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); Space Imaging LLC v. Brownwell, AF-0298 (eResolution) (finding confusing similarity where the respondent's domain name combines the complainant's mark with a generic term that has an obvious relationship to the complainant's business); Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, NAF Claim FAl29123; L.F.P., Inc v. Hotpics International, NAF Claim FA109576 <hustlervideo.com> - use of the generic term “video” does not defeat a confusing similarity claim, because the generic term directly relates to Complainant's business, which increases the likelihood of confusion); Marriott International, Inc. v. Cat au Lait, NAF Claim FA93670 <marriott-hotel.com>.

Consumers are likely to associate the term “outdoor” with the VAN WAGNER mark and its well known outdoor advertising services. Respondent's incorporation of the term “outdoor” into the domain name only exacerbates the confusingly similar , especially since Van Wagner Outdoor is a business name used by Complainant.

In fact, a potential business partner familiar with Van Wagner and its services emailed Complainant asking if the “www.vanwagneroutdoor.com” website was related to Van Wagner. Complainant was concerned that actual confusion has occurred with Respondent's domain name.

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The domain name <vanwagneroutdoor.com> on or about December 20, 2006. Respondent is not, nor has Respondent ever been, a licensee of Van Wagner, nor is it otherwise authorized by Van Wagner to use its registered service mark.

Respondent is not making any legitimate, noncommercial or fair use of the domain name. Respondent instead improperly seeks to trade upon the substantial goodwill associated with the VAN WAGNER mark using a confusingly similar domain name for the purpose of creating the appearance of endorsement of Respondent by Van Wagner. See Policy at ¶4(c).

Van Wagner first discovered use of the domain name in May 2006. Upon discovery, Van Wagner contacted Respondent, informed it of its infringing conduct, and attempted to reach a favorable resolution. Van Wagner elected not to pursue the matter further at that time when Respondent ceased using the domain name in connection with advertising services.

When Van Wagner learned that Respondent again commenced offering the identical advertising services at the domain name <vanwagneroutdoor.com>, Van Wagner promptly filed this Complaint.

Respondent adopted the domain name <vanwagneroutdoor.com> in bad faith for use in the advertising industry to compete with and trade off the goodwill associated with Van Wagner. This is especially true since Van Wagner has operated its business under the mark VAN WAGNER for decades and has used the business name Van Wagner Outdoor for nearly twelve (12) years. The obvious inference, as detailed below, is that Respondent adopted the domain name <vanwagneroutdoor.com> to create confusion as to its relationship with Van Wagner.

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent is not known (either as an individual, business, or other organization) by the name Van Wagner or Van Wagner Outdoor and has no relationship with Complainant. Instead, as stated above, Respondent has deliberately chosen the domain name <vanwagneroutdoor.com> to create confusion and the misleading appearance of endorsement, sponsorship or affiliation by Van Wagner.

Van Wagner is well known in the outdoor advertising industry and has a substantial market share. As Van Wagner has been operating in this industry for decades, Respondent likely had knowledge of the VAN WAGNER mark when it registered the domain name. Respondent acted in bad faith when it began offering advertising services for a second time at the domain name since it was put on notice by Van Wagner in 2006. See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453 (respondent's knowledge that she was using a commercial name sufficient to constitute bad faith registration); Digi International v. DDI Systems., NAF Claim FA124506 (“there is a legal presumption of bad faith, when Respondent reasonably should been aware of Complainant's trademarks, actually or constructively”).

In addition, paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website, this constitutes evidence of bad faith registration and use. Respondent currently uses <vanwagneroutdoor.com> to advertise its services, which include outdoor advertising services. These commercial services directly compete with identical services offered by Van Wagner in the United States, which significantly increases the likelihood that Internet users will be confused or misled by the <vanwagneroutdoor.com> domain name while seeking services offered by Van Wagner, which further supports a finding of bad faith under the Policy. See e.g. Las Vegas Sands, LLC v. Hsiu Chin Kuo, WIPO Case No. D2006-1377 (“Respondent's use of the Domain Name in connection with on-line gaming services that compete with Complainant's services demonstrates an intentional attempt to attract Internet users to Respondent's site by creating confusion as to source, sponsorship of, affiliation with or endorsement by Complainant.”); Tigre S.A. Tubos eConexoes v. Tubo Forte, S.A.C., WIPO Case No. D2008-1337 (finding that where the domain name at issue resolves “[t]o a web site at which goods directly competitive to those of Complainant are offered for sale. This is a direct violation of paragraph 4(b)(iv) of the Policy.”)

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <vanwagneroutdoor.com> be transferred to Complainant.

Clark W. Lackert
Sole Panelist

Dated: June 1, 2010