Complainant is Maurice Sporting Goods, Inc. of Northbrook, Illinois, United States of America, represented by Patzik, Frank & Samotny Ltd., United States.
Respondent is American Sportcase, LLC of Chapel Hill, North Carolina, United States, represented by Poyner Spruill LLP, United States.
The disputed domain name <ready2fish.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2010. On April 30, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, 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 the Respondent of the Complaint, and the proceedings commenced on May 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2010. On May 26, 2010, the due date for Response (further to mutual consent of the parties) was extended until June 3, 2010. The Response was filed with the Center on June 3, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 15, 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.
By email dated June 15, 2010, Complainant transmitted a Supplemental Submission to the Center, which was duly forwarded to the Panel. By email dated June 18, 2010, Respondent transmitted a Supplemental Response in Reply to the Center, which was duly forwarded to the Panel. The preponderant part of Complainant's Supplemental Submission proffers its legal analysis of Respondent's Response, and as such is not accepted. Complainant's Supplemental Submission attached an annex document showing use of the disputed domain name by Respondent subsequent to initiation of this proceeding, and as new factual evidence is accepted and will be considered by the Panel. To the extent that Respondent's Supplemental Response includes legal argumentation directed to Complainant's Supplemental Submission, this is not accepted. However, Respondent's explanation of Complainant's annex evidence is accepted and will be considered by the Panel.
Complainant has registered the word trademark READY2FISH on the Principal Register of the United States Patent and Trademark Office (the “USPTO”), registration number 2,324,514, dated February 29, 2000, in international class (IC) 28, covering “fishing equipment-namely, rods, reels, and tackle”, claiming first use and first use in commerce of February 18, 1999, with application for registration filed April 22, 1999. Complainant's trademark application was published for opposition by the USPTO on December 7, 1999.
Complainant is owner and operator of retail sporting goods outlets, including stores in four cities in the United States and in one city in Canada. Complainant also is a distributor of sporting goods, asserting that it is “the largest sporting goods distributor in North America, with over 500 employees... and servicing over 6000 retail storefronts”. Complainant claims to be “an established distributor of fishing tackle” among other sporting goods. Complainant has not provided evidence of its commercial activities other than by statements set forth in its Complaint.
Complainant has asserted that “since well before the December 10, 1999 registration date of the <ready2fish.com> domain by Respondent, Complainant has been continuously using the arbitrary and distinctive registered trademark READY2FISH in association with fishing equipment, namely rods, reels and tackle.” Outside the date of first use asserted in its application for trademark registration (February 18, 1999) Complainant has not provided evidence of such usage other than in statements set forth in its Complaint.
According to the Registrar's verification, Respondent is the registrant of the disputed domain name <ready2fish.com>. The present Registrar, GoDaddy.com, Inc., has indicated that the domain name registration was transferred to it by Respondent from a previous registrar on November 25, 2009. According to a GoDaddy.com Whois report printout furnished by Complainant, and confirmed by Respondent, the disputed domain name was initially registered by Respondent's owner on December 10, 1999.
Respondent indicates that in December 1999 it registered two additional domain names similar to the disputed domain name, <ready2golf.com> and <ready2ski.com>. A GoDaddy.com Whois query by the Panel confirms that Respondent registered each of the aforesaid domain names on December 10, 1999.
Complainant provided evidence in its Complaint that as of April 29, 2010, the disputed domain name resolved to a Startlogic parking page (stating “This site is not yet available”) that included sponsored links to service providers bearing no apparent relationship to the terms in the disputed domain name (e.g., “Chicago Dog Walking”).
In its Supplemental Submission, Complainant submitted a webpage printout dated June 11, 2010 that resolved from the disputed domain name but without a heading/caption (making it difficult to determine the full context of the page), showing links to providers of goods and services that bear a relationship to the disputed domain name, such as “Fishing Rods”. Respondent indicated in its Supplemental Response that it had been unaware that the Startlogic parking page had begun to include such links, and Respondent replaced the parking page with a “website not available” page on June 17, 2010 (and included a printout).
Respondent “American Sportcase” is solely owned by Mr. S. Crouch. Mr. Crouch
is the principal of two other substantial businesses, Solara Automation and Innovatech. Innovatech was founded in 1990. According to Mr. Crouch, in December 1999 Innovatech was researching and developing molded plastic components for the United States Government, and was considering making plastic cases for various outdoor equipment, including fishing skiing and golfing equipment. These would have been sold through American Sportcase. Innovatech determined that market demand for such products was already being met, and did not pursue this line of business. However, in the period in which it assessed this potential line of business, Respondent registered the disputed domain name related to fishing, and the similar domain names related to golfing and skiing. Respondent has submitted substantial evidence that its principal, Mr. Crouch, is substantially involved in the production of sophisticated machinery and equipment.
Respondent asserts that it has received numerous offers to purchase the disputed domain name, but has never pursued those offers. Respondent further asserts that it has continued to own the disputed domain name with the intention of eventually establishing a social networking site for fishing enthusiasts, but other active businesses and the poor general state of the economy have prevented it from active actively pursuing such business development with the disputed domain name. Respondent has not provided any evidence of development or intention to develop the aforesaid social networking website other than statements in the Response.
The Registration Agreement in effect between Respondent and GoDaddy.com, 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)).
Complainant asserts rights in the trademark READY2FISH based on use in commerce and as evidenced by registration at the USPTO. Complainant asserts that its rights in the trademark arose as a matter of common law prior to the date on which Respondent registered the disputed domain name.
Complainant alleges that the disputed domain name is identical or confusingly similar to its trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that it has not authorized Respondent to use its trademark, that Respondent is not commonly known by the disputed domain name, and that Respondent has not used or made any preparations to use the disputed domain name in association with a bona fide offering of goods or services.
Complainant contends that Respondent registered and used the disputed domain name in bad faith by intentionally using the disputed domain name for commercial gain by creating a likelihood of confusion regarding Complainant as source, sponsor, affiliate or endorser of Respondent's website from which Respondent earns pay-per-click revenues. Complainant asserts that Respondent's “actual knowledge of Complainant's trademark can be reasonably inferred from the fame and notoriety of Complainant's READY2FISH trademark.”
Complainant requests Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent asserts that it registered the disputed domain name in good faith in the context of considering the development of a line of commercial products, and that when it registered the disputed domain name in December 1999 it was not aware of Complainant's alleged trademark or asserted usage of that trademark. Respondent argues that its registration of the <ready2golf.com> and <ready2ski.com> domain names contemporaneously with the disputed domain name support its assertion of a contemplated multi-product business venture. Respondent alleges that these facts demonstrate its rights or legitimate interests in the disputed domain name.
Respondent indicates that Complainant's trademark was not registered by the USPTO until February 29, 2000 several months after Respondent registered the disputed domain name.
Respondent argues that its refusal to pursue offers it has received to purchase the disputed domain name, and the fact that it has never attempted to sell the disputed domain name to Complainant, is evidence of its lack of bad faith.
Respondent contends that it has not used the disputed domain name to divert Internet traffic to its website for commercial gain by creating confusion as to Complainant's affiliation with the website. Respondent states that it did not have any control over the links that its website host included on its parking page, and as far as Respondent knows as of April 2010 there were no links related to Complainant or its business (as evidenced by the screenshot provided by Complainant). Respondent states that the parking page was not a pay-per-click page from which it received any revenues, and that data regarding Internet traffic to the parking page indicates that it has not received any visitors. Respondent further argues that Complainant itself has a parked page at “www.ready2fish.net” that includes sponsored links to Complainant's competitors.
Respondent further argues that it was unaware of the type of links shown on the parking page subsequent to initiation of this proceeding, and removed the parking page as soon as it became aware of those links.
Respondent requests the Panel to reject Complainant's request to direct the transfer of the disputed domain name.
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 Policy 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)).
The Center transmitted the Complaint and notification of commencement of the proceeding to Respondent, and Respondent submitted a Response and a supplemental filing. The Panel is satisfied that each party had adequate opportunity to present its position in this proceeding.
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) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's 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.
Complainant has provided evidence of registration of the trademark READY2FISH on the Principal Register of the USPTO, and has asserted use in commerce of the trademark. Respondent does not dispute the fact of Complainant's trademark registration or the validity of the trademark.1
The Panel determines that Complainant has rights in the trademark READY2FISH.
The disputed domain name is identical to Complainant's trademark within the meaning of the Policy, and Respondent has not contested that fact.
The Panel determines that the disputed domain name is identical to a trademark in which Complainant has rights.
The second element of a claim of abusive domain name registration and use 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))
Complainant has asserted that Respondent lacks rights or legitimate interests in the disputed domain name based on the evidence available to it.
Respondent has presented a plausible story supported by some circumstantial evidence regarding its reasons for registering the disputed domain name, and supporting a claim of rights or legitimate interests.2 The owner of Respondent is a well-established entrepreneur operating substantial businesses that demonstrate significant industrial capacity. Respondent asserts that it was contemplating manufacturing a line of products (i.e. molded plastic cases) for use with fishing, golfing and skiing equipment, and in late 1999 registered three similar domain names (i.e. <ready2fish.com>, <ready2golf.com> and <ready2ski.com>) under which to market those products. Registration of the three similar domain names circumstantially supports Respondent's story, and plausibly supports a claim of demonstrable preparations to use the disputed domain name for a bona fide offering of goods prior to notice of a dispute. Respondent further states that it presently intends to develop a social networking site for fishing enthusiasts.
It is possible to theorize a different story. Respondent might have been aware of Complainant's asserted common law use of the READY2SKI trademark in early 1999. Respondent might have been aware of Complainant's application for trademark registration at the USPTO in April 1999. Respondent might have been sufficiently impressed by Complainant's alleged common law trademark to seek to take unfair advantage of it, or have anticipated ultimate registration of Complainant's trademark.
However, these do not appear as likely scenarios to the Panel. Complainant has not provided any evidence of actual use of its trademark before December 10, 1999, and the Panel does not have a tangible basis for concluding that Respondent knew or should have known of common law rights asserted by Complainant in early 1999. There is nothing on the record of the proceeding to suggest that Respondent more than a decade ago was studying third-party applications for trademark registration in order to take unfair advantage of prospective trademark owners. Finally, and perhaps conclusively, over a more than 10-year period since registration of the disputed domain name, there is no meaningful evidence that Respondent sought to take unfair advantage of Complainant or its trademark.3
A combination of factors leads the Panel to conclude that Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has demonstrated that it is owned by a serious legitimate entrepreneur with capacity to manufacture sophisticated products, and that it registered several similar domain names that are consistent with development of a product line for sporting goods molded plastic cases. Respondent has indicated, and the evidence before the Panel suggests, that Respondent did not know of Complainant's application for trademark registration or of Complainant's asserted common law trademark rights when it registered the disputed domain name. Respondent has owned the disputed domain name registration for more than 10 years, and there is no evidence of attempting to take unfair advantage of Complainant or its trademark.
The Panel determines that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel will not direct the Registrar to transfer the disputed domain name to Complainant.
The Panel exercises administrative economy and will not address the element of bad faith registration and use.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: June 29, 2010
1 Respondent has raised question regarding the date upon which Complainant's rights in its trademark arose.
2 This Panel has previously held that mere assertion of a contemplated business plan is insufficient to establish rights or legitimate interests, particularly when contradicted by evidence of abusive conduct (see Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000).
3 The only evidence Complainant has put forward is a very recent screenshot showing that between April and June 2010, Respondent's parking page sponsored links began to include competitors of Complainant. The likely explanation for those recent links is activity relating to preparation for this dispute, and these links are not persuasive of abusive conduct by Respondent.