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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trendwest Resorts, Inc. v. Kevin Tisdel
Case No. D2001-0987
1. The Parties
Complainant is Trendwest Resorts, Inc., an Oregon corporation with a principal place of business in Redmond, Washington, USA.
Respondent is Kevin Tisdel, an individual located in Seattle, Washington, USA.
2. The Domain Names and Registrar
The domain names at issue are:
(collectively, the "Domain Names")
The Registrar is: Network Solutions, Inc.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999, ("the Rules").
The Complaint was submitted by electronic mail on August 2, 2001, and by hard copy on August 7, 2001. On August 6, 2001, Network Solutions, Inc. confirmed registration of the Domain Names at issue to the Respondent. An extension of the Response deadline was granted on August 20, 2001, and a second extension was granted on September 14, 2001. The Response was submitted by electronic mail on September 24, 2001, and by hard copy on on September 25, 2001.
On October 10, 2001, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as Sole Panelist.
4. Factual Background
In January of 1997, Complainant sponsored a contest to name a resort facility it was developing on the outskirts of Roslyn, Washington (Kittitas County), in the foothills of the Cascade Mountains. On April 24, 1997, Complainant announced that its proposed resort would be named "MountainStar Resort." Articles announcing the name selection were published in the Daily Record and the Seattle Times. The Daily Record has a circulation of about 5,500 and the Seattle Times has a circulation of more than 220,000.
From late 1997 through 2000, Complainant took the necessary steps to satisfy local, state and federal regulations to begin construction on the planned resort. These steps included: an Environmental Impact Statement; addressing water and sewer issues; tax issues; and local economic issues. Complainant’s work in this area entailed lobbying for, and gaining, changes in Washington State laws, and winning State Court approval for a water leasing plan associated with the resort. Many of these steps were chronicled in local newspapers in Kittitas County from late 1997 through 2000.
On November 7, 1997, Complainant held an "open house" regarding the proposed resort, with self guided displays detailing Complainant’s plans, and offering tours of the property.
On September 23, 1998, the Kittitas County Planning Department held a "workshop/openhouse" regarding the Environmental Impact Statement for the proposed "MountainStar Resort."
On December 14, 1998, Respondent registered <mountainstar.com> as a domain name with Network Solutions.
On October 19, 1999, Complainant contacted Respondent in an attempt to acquire the domain name <mountainstar.com> from Respondent.
On October 29, 1999, Complainant filed an intent-to-use trademark application with the United States Patent and Trademark Office (USPTO) for the mark MOUNTAINSTAR. This application has since been abandoned.
On November 1, 1999, Respondent registered the domain name <mountainstarproperties.com> with Network Solutions.
On November 24, 1999, Respondent filed intent-to-use applications with the USPTO for the marks, MOUNTAINSTAR and MOUNTAINSTARPROPERTIES in connection with real estate brokerage and management services. This application was abandoned on October 26, 2000, after Respondent failed to respond to an office action.
On December 2, 1999, Respondent registered <mountainstarrealestate.com>, <mountainstarhomes.com>, and <mountainstarre.com> as domain names with Network Solutions.
On December 3, 1999, Complainant again contacted Respondent in an attempt to acquire the domain name <mountainstar.com> from Respondent.
On December 6, 1999, Respondent registered the domain name <mountainstarvacations.com> with Network Solutions.
In the winter of 1999, Complainant distributed a newsletter to residents of Kittitas County, Washington to inform them of progress on the proposed resort. On December 30, 1999, Complainant announced its selection of the "MoutainStar" logo.
On April 26, 2000, Complainant published an advertisement for the "MountainStar Resort" in the Daily Record. In June of 2000, Complainant acquired the property on which the proposed resort is to be constructed.
On October 17, 2000, the Kittitas County Commissioners approved Complainant’s land use application for the resort. On November 29, 2000, Complainant extended invitations to individuals to tour the "MountainStar Resort" property in its "Pre-Construction Phase" and learn about possibilities for reserving and viewing lots for vacation homes. Complainant’s letter indicated that lots were "now available for reservation."
On March 13, 2001, Complainant filed a trademark application with the USPTO for the service mark MOUNTAINSTAR, in connection with "property management services," and "real estate services." This application is pending, and is based on a first use date of December 31, 1998.
On March 14, 2001, Complainant also filed an intent-to-use trademark application with the USPTO for the service mark MOUNTAINSTAR, in connection with "tour guide services," "facilities for recreational activities," and "hotel and resort services." This application has been suspended.
5. Parties' Contentions
Complainant contends that it has prior common law rights in the service mark MOUNTAINSTAR through Complainant’s promotional efforts and the mark’s frequent recognition in local newspapers. Complainant contends that Respondent’s Domain Names are confusingly similar to Complainant’s service mark, and are, therefore, likely to cause confusion among users as to the source of Respondent’s proposed websites.
Complainant also contends that Respondent has no legitimate interest in the Domain Names because he has no rights in the mark MOUNTAINSTAR, has failed to use the Names in a bona fide offering of goods and services, is not known by any of the Domain Names, and has not made a legitimate noncommercial or fair use of the Names.
Complainant contends that Respondent registered the Domain Names in bad faith because he registered the first domain name, <mountainstar.com>, on December 14, 1998, after Complainant had "made significant public use of its Mark" beginning April 24, 1997. Further, Complainant contends that Respondent registered the remaining five Domain Names after being contacted by Complainant regarding the likelihood of confusion associated with the first domain name. Finally, Complainant contends that Respondent's failure to make legitimate use of the Domain Names constitutes bad faith use.
Respondent denies ICANN jurisdiction over the Domain Names because the Policy was not part of his Registration Agreement with Network Solutions when he registered the Domain Names. Therefore, he contends that the Policy does not apply to these Names and the Complaint should be dismissed.
Respondent contends that other vacation resorts throughout North America currently use the mark MOUNTAINSTAR, and that their use was prior to Complainant’s. Respondent contends that Complainant did not acquire any rights in the service mark, MOUNTAINSTAR, until after Respondent registered the Domain Names.
Respondent further contends that the Domain Names are not confusingly similar to Complainant’s service mark. Respondent contends that he has a legitimate interest in the Domain Names and "has commenced development of a bona fide business use of the names prior to any notice of a dispute." Finally, Respondent contends that he registered the Domain Names "in a legitimate pursuit of business interests, and did not register or use the [Names] in bad faith."
Respondent registered all six Domain Names with Network Solutions. Through his registration agreement, Respondent has had notice that he is subject to whatever dispute policy Network Solutions has in effect at the time a Complaint is filed against him. Network Solutions has incorporated the Uniform Domain Name Dispute Resolution Policy (the "Policy") into its own domain name dispute policy, and this was in effect when the Complaint in this matter was filed. Therefore, this Panel has jurisdiction in this dispute. Respondent is also on notice that, in the event that he objects to Network Solutions’ policy regarding dispute resolutions, his sole remedy is to cancel his domain name registrations.
Since this dispute is clearly within the Panel’s jurisdiction, our substantive inquiry will focus on three issues: (1) are the Domain Names confusingly similar to a trademark or service mark in which Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Names; and (3) have the Domain Names been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
A. Confusing Similarity
Complainant’s Rights in the Service Mark
The Policy requires that a Complainant have "rights" in a mark that is the subject of a domain name dispute. Therefore, a threshold question here is whether Complainant has established a protectable right in the service mark MOUNTAINSTAR. In order to have a protectable right, Complainant’s mark must be distinctive and used in commerce. Federal registration of a mark is prima facie evidence of its distinctiveness.
Complainant has neither a federal, nor a state registration for the service mark MOUNTAINSTAR. However, the Policy does not require a service mark to be registered by a governmental authority for the Complainant to have rights in the mark. Complainant may have established common law rights in the mark prior to Respondent’s domain name registration. Therefore, we must look to Complainant’s use of the service mark prior to the registration date of each of the six Domain Names.
When determining prior use of a service mark, the proper test is to "look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together establishes prior use." West Florida Seafood, Inc. v. Jet Restaurants, Inc. 31 F.3d 1122 (Fed. Cir. 1994). We must fit together the pieces of the puzzle in the record here to determine whether, with respect to each of the six Domain Names, Complainant made prior use.
In January of 1997, Complainant sponsored a contest to name its proposed resort facility. On April 24, 1997, Complainant announced that the proposed resort would be named "MountainStar." Articles announcing the name selection were published in local newspapers with combined circulations of approximately 230,000 in the Kittitas and King County areas of Washington.
In late 1997, Complainant began taking the steps necessary to satisfy local, state and federal regulations to begin construction on the planned resort. Between June of 1997 and December 14, 1998, the date Respondent registered <mountainstar.com> with Network Solutions, at least 13 different articles and/or letters to the editor appeared in four local newspapers in and around Kittitas and King Counties that chronicled Complainant’s progress in meeting the required regulations to begin construction on the proposed resort. More importantly, each article referred to Complainant’s proposed resort as either, "MountainStar," "Mountainstar" or "Mountain Star."
Additionally, on November 7, 1997, Complainant held an "open house" regarding the proposed resort, with self guided displays detailing Complainant’s plans, and offering tours of the property.
Then between March and September of 1998, Complainant published a series of four notices entitled "MOUNTAINSTAR PUBLIC INFORMATION SERIES," in one of the Kittitas County newspapers. These notices were intended to provide Kittitas County residents with information about the environmental impacts of the proposed resort, the possible property tax effects, employment possibilities and annual wage rates for "MountainStar Resort" employees.
Finally, on September 23, 1998, the Kittitas County Planning Department held a "workshop/open house" regarding the Environmental Impact Statement for the proposed "MountainStar Resort."
Respondent contends that Complainant had no rights in the service mark when Respondent registered the first of the Domain Names, <mountainstar.com>, on December 14, 1998 because Complainant had not, and could not have possibly, made a sale using the mark by that date.
However, it is well recognized that actual sale of a marked product is not necessary for the purpose of determining priority of use in an unfair competition action. New West Corp. v. NYM Co. of Calif., Inc., 595F.2d 1194 (9th Cir. 1979) (finding prior rights based on pre-sale publicity). Although evidence of actual sales is highly persuasive in determining prior use, the 9th Circuit has found that,
"evidence showing, first, adoption, and second, use in a way sufficiently public to identify or distinguish the marked [services] in an appropriate segment of the public mind as those of the adopter of the mark is competent to establish ownership, even without evidence of actual sales." Id.(quoting New England Duplicating Co. Inc. v. Mendes, 190 F.2d 415, 418 (1st Cir. 1951))
The Washington Courts have also adopted this line of reasoning, holding that the requirement of prior use in a mark is met when that name is actually used in such a way as to become associated in the public’s mind as the name of the business. Fish v. Koldkist Beverage Ice, 802 P.2d 837, 838, 60 Wash.App. 122, 123 (1991) (prior rights arise when a name "is actually used in such a way as to be come associated in the public mind as the name of the business").
To determine whether Complainant used the service mark in such a way that it identified and distinguished the mark in an appropriate segment of the public mind as signifying the Complainant’s proposed resort, we must look at the evidence as a whole. The numerous media reports between April of 1997 and December of 1998 on the proposed resort, all using Complainant’s mark to identify the resort, are probative. Also probative are: the numerous announcements and updates published and circulated by Complainant, the various local meetings and "open houses" held to discuss the proposed resort, and the involvement of the Washington state legislature and the courts in the process. Taken as a whole, all of these factors are sufficient for the public to identify the service mark with the Complainant’s resort.
But even more probative of the service mark’s impact on the "appropriate segment" of the public is the reaction of those in the real estate business, such as the Respondent, to the mark. Respondent submitted an affidavit for the record in which he explains his thinking when he registered the domain name <mountainstar.com>. In paragraph 2 of the affidavit, Respondent states that he believed Complainant ". . . had no interest in using the domain name," because, "Approximately twenty months had elapsed since [Complainant] announced that it would be using the name ‘MountainStar’ for its planned resort community … and [Complainant] still had done nothing to register the domain name or to seek trademark registration of the name…."
Later, in paragraph 7 of his affidavit, Respondent states, "The domain name <mountainstar.com> and the other domain names at issue in this arbitration have never been intended to be used as part of my business name, but were used merely because they provide a geographic reference to the Mountainstar community."
What Respondent refers to as "the Mountainstar Community" only exists because Complainant adopted that name as their service mark for the resort. From this statement it is clear, not only that Respondent associated Complainant’s service mark with Complainant’s proposed resort, but that he also knew consumers associated the mark with the resort. Otherwise, as a real estate professional, he would have no business reason to register the Domain Names at issue.
Although Complainant had not obtained federal registration of its mark or made an actual sale, it made enough use of the mark prior to December 14, 1998, that Respondent, a real estate professional, associated the mark with Complainant’s services and apparently believed the public made the same association. I find, therefore, that Complainant established a protectable right in the mark in its local area of business prior to Respondent’s registration of the first domain name at issue, <mountainstar.com>.
Respondent also argues that several other entities throughout North America were using the name MOUNTAINSTAR for vacation resort-related business activities at the time Respondent registered the domain name <mountainstar.com>. This is not relevant because none of these other businesses were operating in the State of Washington and Respondent does not intend his use of the Domain Name to relate to any of those uses.
<mountainstarproperties.com>, <mountainstarrealestate.com>, <mountainstarhomes.com>, <mountainstarvacations.com>, and <mountainstarre.com>
Evidence of adequate use by Complainant of MOUNTAINSTAR prior to Respondent’s registration of the five additional Domain Names is even stronger. Again, Respondent’s own statements submitted for the record best demonstrate this. In paragraph 3 of his affidavit, Respondent states:
"Throughout 1999 I was contacted by friends and clients inquiring whether I would provide vacation rental management services in the Roslyn, Washington area, including future vacation homes at the Mountainstar resort community. I decided to offer such services for these clients, and began preparations to offer vacation rental referral services under the business name Roslyn Properties. As part of my business preparations I registered additional domain names that could be used in connection with these services … . I registered these domain names with the understanding that individuals would need a way to find the companies that offer the services for which they are looking and that numerous other real estate companies would be offering similar services in the area of the Mountainstar community."
Respondent registered the last five Domain Names in November and December of 1999. The above statement by Respondent demonstrates that he registered these five Domain Names in response to consumer demand for services in connection with Complainant’s proposed resort "[t]hroughout 1999." Prior to Respondent’s registration of the five Domain Names, consumers were referring to Complainant’s resort by its service mark. Therefore, whatever use Complainant was engaged in with respect to its mark was driving consumers to seek out services in connection with the mark. This demonstrates that Complainant had established secondary meaning in the mark by the time Respondent registered the five remaining Domain Names.
Therefore, I find that Complainant had a protectable interest in MOUNTAINSTAR at the time each of the Domain Names was registered.
Similarity of the Domain Names and the Service Mark
The domain name <mountainstar.com> is virtually identical to Complainant’s service mark, and is, therefore, confusingly similar to Complainant’s protected mark.
The misspelling of the mark in the domain name <mountainstarre.com> does not cure the confusing similarity because the domain name retains the same meaning as the mark. Furthermore the residents of Kittitas and King Counties have been inundated with news reports and advertisements for Complainant’s resort, with many of the reports including variations on the spelling of MOUNTAINSTAR (e.g., "MountainStar," "Mountain Star," or "Mountainstar"). As a result, Respondent’s domain name <mountainstarre.com> is likely to be confused by consumers as another variation of the service mark representing Complainant’s resort.
The remaining four domain names, <mountainstarproperties.com>, <mountainstarrealestate.com>, <mountainstarhomes.com>, and <mountainstarvacations.com> are also likely to confuse consumers as to source. The generic terms that Respondent has added to Complainant’s service mark to form these Domain Names are all descriptive of the very services – properties, real estate, homes and vacations -- Complainant has advertised in conjunction with the proposed resort under the mark since April of 1997. As a result, the use of these terms together with Complainant’s mark could actually make these Domain Names more likely to confuse consumers.
Complainant succeeds on this element for all six Domain Names.
B. Legitimate Interest
Respondent has made no use of the Domain Names in connection with the bona fide offering of goods and services. Not only is Respondent not commonly known by any of the Domain Names, he states in the affidavit filed in this matter that he does not intend to name his business anything similar to any of the Domain Names. Respondent has also failed to demonstrate that he is engaged in a legitimate noncommercial or fair use of the Domain Names. Finally, although Respondent alleges in his Response that he "has commenced the development of a bona fide business use of the names prior to any notice of a dispute," Respondent fails to provide any demonstrable evidence to support this claim. I find that Respondent lacks a legitimate interest in the Domain Names. Complainant succeeds on this element.
C. Bad Faith
The circumstances surrounding Respondent’s registration of the Domain Names and his intent for registering the Names as expressed in the affidavit filed for the record indicate that Respondent registered the Domain Names in bad faith. Respondent admits he selected and intends to commercially exploit the Domain Names solely because of Complainant's selection and use of the MOUNTAIN STAR name for its resort. The Domain Names would not have been registered by Respondent but for Complainant's adoption and prior use of MOUNTAIN STAR. Further, Respondent's proposed use of the Domain Names involves attracting Internet users seeking Complainant's services to Respondent's website for profit.
Respondent registered the first domain name, <mountainstar.com>, after numerous news articles were published concerning Complainant’s progress in establishing the proposed resort. Each of these news reports associates Complainant’s service mark with the proposed resort. Given that these news reports were published in the area where Respondent operates a real estate business, it is reasonable to believe that Respondent registered the first domain name to prevent Complainant from registering its service mark as a domain name, disrupt the Complainant’s business, and/or intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark..
Respondent’s statements from his affidavit to the effect that he registered the Domain Names in order to provide services in association with Complainant’s resort, indicate that he did, in fact, register the last five Domain Names with the intent of attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark.
Furthermore, Respondent registered the last five Domain Names after Complainant had already contacted him to express its concern over his registration of the first domain name. Several of the Domain Names were registered within days after Complainant and Respondent met to discuss these issues. The timing of these registrations is indicative that Respondent was acting in bad faith.
I believe the reasons Respondent cited for selecting the Domain Names, and the timing of their selection, demonstrate that Respondent registered the Domain Names in bad faith.
Respondent has yet to make use of the Domain Names. However, passive holding of a domain name can be considered bad faith. The Chancellor, Masters and Scholars of the University of Oxford v. Damian Macafee WIPO Case No. D2001-0975. The only possible good faith use Respondent could engage in is noncommercial or fair use, but because Respondent stated that he intended to use the Domain Names in conjunction with his real estate business, I will take Respondent at his word. Unfortunately, because of Respondent’s stated intent for registering the Domain Names, it is difficult to imagine how Respondent could use the Domain Names in conjunction with his real estate business in the Kittitas or King County region at this point without that use being in bad faith.
In similar situations involving the adoption of a trademark, the U.S. Courts have recognized that a deliberate attempt to preempt another's rights in a mark may be an act of bad faith. Stern Electronics, Inc. v. Kaufman, 523 F. Supp. 635 (E.D.N.Y. 1981) (finding defendant's attempt to preempt plaintiff's rights was bad faith use of SCRAMBLE mark). That principle is applicable here where Respondent deliberately selected a Domain Name based on Complainant's use of MOUNTAIN STAR.
Complainant contends that Respondent offered to exchange the Domain Names for a lot in the proposed resort. The evidence in the record does not support this allegation. However, Respondent’s overall conduct, combined with his stated intent for registering the Domain Names, leads me to the conclusion that he acted in bad faith. Complainant also succeeds on this element.
All six of Respondent’s Domain Names are confusingly similar to the service mark in which Complainant has protectable rights. Respondent does not have a legitimate interest in any of the Domain Names and Respondent registered and used the Domain Names in bad faith. Therefore, the six Domain Names, <mountainstar.com>, <mountainstarproperties.com>, <mountainstarrealestate.com>, <mountainstarhomes.com>, <mountainstarvacations.com> and <mountainstarre.com> shall be transferred to Complainant.
Mark V. B. Partridge
October 24, 2001