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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Douglas Benson Spong and Mara Spong v. Opper Sports, Inc.
Case No. D2002-0381
1. The Parties
The Complainants are Douglas Benson Spong and Mara Spong, both of 59 The Corso, Isle of Capri, QLD 4217, Australia. They are represented by Pizzey’s Patent and Trademark Attorneys of Level 14 ANZ Centre, 324 Queen Street, Brisbane QLD 4001, Australia.
The Respondent is Opper Sports, Inc. of 222 S Granados Avenue, Solana Beach, California 92075-2010, United States of America. It is represented by Branfman & Associates, 12750 High Bludff Drive, Ste 100, San Diego, CA 92130, United States of America.
The Respondent is its own administrative contact, and its technical contact is Bruce W Gresham, of Events On Line, 232 Pacific Avenue, Solana Beach, CA 92075, United States of America.
2. The Domain Name and Registrar
The Domain Name, which is the subject of this Complaint, is <surfcult.com>
The Registrar is Network Solutions, Inc. of 21355 Ridgetop Circle, Dulles VA 20166, United States of America, ("NSI").
3. Procedural History
On April 24, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented by ICANN ("the Rules"). A hard copy was received on April 29, 2002.
The Center sent a Request for Registrar Verification to NSI on April 25, 2002, by email who responded on April 29, 2002, and confirmed: (1) that it was the Registrar for the disputed domain name, (2) that the Respondent, Opper Sports, Inc., was the current Registrant of the disputed Domain Name, (3) that the Respondent’s contact details as set out above were correct, (4) that the current status of the disputed domain name was active, (5) that the language of the Agreement was English, and (6) that the Registrant had submitted in its registration Agreement to jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names.
On April 30, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, facsimile, and e-mail, as well as to its Administrative and Technical contacts.
The Respondent’s representative sent an e-mail to the Center on May 3, 2002, to which the Center replied on May 6, 2002. A Response was received from the representatives of the Respondent on May 20, 2002, by e-mail, which was acknowledged by the Center on the following day. A hard copy was received on May 23, 2002.
The Center sent a Notification of the Appointment of an Administrative Panel giving a Projected Decision Date of June 10, 2002, to the Respondent and the Complainant on May 27, 2002, via email. A copy was also sent to the Panel on the same date by email.
The Center sent by email a Transmission of Case File to the Panel, copying the Respondent and the Complainant on May 27, 2002. Hard copies of this material were sent to the Panel on the same day and received on May 29, 2002.
On June 10, 2002, the projected Decision Date was extended to June 19, 2002, under Rule 10(c) of the Rules due to exceptional circumstances.
4. Factual Background
Activities of the Complainant
The Complainants’ name SURF CULT was originally coined by Mr. Allan Paul Surman in or around 1988. Mr. Surman sold his surf wear business to the Complainants in 2000 and assigned his rights and goodwill in the trademark SURF CULT to the Complainants’ company Waterview Trading Pty Ltd. In 2001, the Complainants’ restructured their business and the trademarks were assigned from Waterview Trading Pty Ltd to them. Copies of the Assignment Deeds were annexed to the Complaint, but it would appear that not all of the assignments have yet been recorded against the relevant trademarks. The situation in the United States of America is alleged by the Complainants to be particularly relevant to this Complaint. Whilst the assignment of the SURF CULT trademarks to the Complainants has apparently been recorded with the United States Patent and Trademarks Office ("USPTO"), the USPTO trademarks database still notes the owner name on US Registered Trademark No. 1613012 as being Allan Paul Surman. Whilst steps are being taken to alter these records, but Mr.Surman's name will have appeared on the USPTO trademarks database on this registration at all times relevant to this dispute.
The Complainants are directors of the Australian company Cult Industries Pty Ltd which has been licensed to use the SURF CULT trademark around the world.
The Complainants allege that the SURF CULT trademark has been used around the world for a period of fifteen years, originally by Mr. Surman and subsequently by Cult Industries Pty Ltd. The mark is used on clothing, sunglasses and watches which have been specifically styled for the surf wear market and which are promoted by and/or sold through catalogues, the internet, retail outlets and authorised distributors around the world. Brochures currently used by Cult Industries Pty Ltd in Australia displaying the goods which bear the trademark were annexed to the Complaint.
Originally the sales of goods under the trademark SURF CULT were modest in value and primarily on surf wear styled clothing. In 1995 the use of the trademark was expanded with the commencement of the sale of surf wear styled sunglasses under the trademark. The use of the trademark expanded once again in 2000, when the Complainants purchased the business and the trademarks.
The Complainants contend that because sales under the SURF CULT trademark have totalled an estimated A$2.63 million over 15 years, with projected sales of A$8 million next year, it has become known amongst consumers within the surfing products market and is associated with the Complainants and/or Cult Industries Pty Ltd and/or its predecessor Alan Paul Surman.
The Complainants have also registered a number of domain names which incorporate the SURF CULT trademark of which a list was annexed to the Complaint and which are held either in one of the Complainants’ names or in the name of companies which they own. They are all linked to the web site of Cult Industries Pty Ltd which displays goods offered for sale under the SURF CULT trademark and provides for customers to locate SURF CULT products around the world.
The Complainants state that the trademark SURF CULT was first used in commerce in the USA in June 1989; that surf wear clothing bearing the SURF CULT trademark has been sold and offered for sale in the USA since 1989; and that the length of use of the trademark in the USA within the surfing market means that the trademark would be known to consumers within the surfing market and be associated with the Complainants and/or Cult Industries Pty Ltd and/or its predecessor Alan Paul Surman.
The Complainants claim to have been aware of the Respondent and its involvement in the surf video/movie market prior to February 2002, but they also claim that they have never had any direct dealings with the Respondent.
Activities of the Respondent
Mr. Ira Opper is the President and owner of the Respondent, Opper Sports, Inc., and he has been involved in the surfing industry for 17 years. Opper Sports’ primary source of income is from the sale of surfing videos and movies. The company also produces and distributes film, video and entertainment programming.
The Complainant’s Trademarks
The Complainants either jointly or singly are the owners of a number of registered trademarks and pending trademark applications for the trademark SURF CULT and other trademarks containing the word CULT in Australia, the United States of America, Europe, Japan, New Zealand, Brazil, Hong Kong, Philippines and Indonesia. Full details of the trademarks were annexed to the Complaint.
5. The Parties’ Contentions
In both cases, the Panel’s narrative of the parties’ contentions is a verbatim account largely using their own words.
On February 27, 2002, the Complainants received the copy of an e-mail from a Mr. Ira Opper to Mr. Surman which had been forwarded to them by Mr. Surman. Mr. Ira Opper is the Respondent's "Agent for Service of Process" and he is also noted in the Respondent’s surfhistory.com website as being the owner of the Respondent and in the subsequent e-mail correspondence he identified himself as being the President of the Respondent.
The original email of February 27, 2002, referred to Mr. Surman as "Brizzo" a name by which Mr. Surman is known and referred to within the surfing industry. The Complainants therefore submit that the use of this nickname by Mr. Opper was an indication that he was aware of Mr. Surman's involvement in the surfing industry and his involvement in the sale of surfing products under the trademark SURF CULT.
The e-mail also advised Mr. Surman that Ira Opper owned the domain name surfcult.com, that he planned to use it on an "e-commerce surf products site" and enquired if Mr. Surman was "interested in purchasing the domain name". The Complainants contend that although it is in fact the Respondent who owns the disputed domain name Mr. Opper's reference to "ownership", was intended to refer to the Respondent's ownership of the domain name. The Complainants further contend that Mr. Opper’s use of the words "I own and plan to use surfcult.com" in the email indicates that despite the fact that the domain name had been registered by Mr. Opper in 1999, the domain name had not been used prior to the date of the email. The Complainants also contend that because the e-mail was addressed to Mr. Surman, Mr. Opper must have been aware that the trademark SURF CULT had been used on surfing related products by Mr. Surman.
In and between February 27, 2002 and March 15, 2002, the Complainants corresponded with the Respondent by email. In the course of this they attempted to obtain from the Respondent an indication of the price which the Respondent sought for the domain name, but despite a number of requests, the Respondent would not provide a price.
The Complainants believe that it can be concluded from the e-mails from the Respondent, that Mr. Opper had more than a basic level of knowledge of the ICAAN domain name dispute resolution policy, and accordingly the Complainants contend that the reason that a price was not suggested by the Respondent, is that the Respondent was aware that asking for an amount greater than the amount which the Respondent had paid to obtain the domain name, was a "bad faith indicator" under the Policy. The Complainants also believe that the tone of the Respondent's correspondence and the approach which was made by the Respondent to the Complainants and Mr. Surman tended to indicate that it was more likely than not that the Respondent was seeking an amount greater than its costs for the registration of the domain name. Copies of all the e-mails which have passed between the Respondent and Complainants were annexed to the Complaint.
The Complainants contend that the Respondent also discloses in the e-mails an awareness of the registered and pending trademark applications held by the Complainants.
There has been no communication between the Respondent and the Complainants since March 15, 2002, and the Respondent was notified in the e-mail of March 14, 2002, of the Complainants' intention to file a dispute under the Policy.
In and between February 27, 2002, and March 5, 2002, the Complainants' representatives entered surfcult.com into their web browser to determine how the domain name was being used. The domain name linked directly to an on-line shop for surfing related products which was contained within a web site called surfhistory.com. The whole of the web page to which the disputed domain name directed was not visible at first glance within the Complainants' Attorney's Explorer browser window. Accordingly, a user who visited this web page via the disputed domain name would not have been aware of who was operating the on-line shop. Only after scrolling down two screen lengths did a small copyright notice appear which indicated that copyright in the web page was claimed by the Respondent. Apart from this copyright notice there did not appear to be any indication on the web page as to whom was offering goods for sale. Further progression through the shop pages and the shopping help pages, also did not disclose any information as to whom was offering the goods for sale, although it was noted that a user is directed to make any cheques payable to "surfhistory.com". The domain name <surfcult.com> does not appear on the bottom of the copy of the web pages provided due to the diversion of the domain name to the <surfhistory.com> website. A copy of the web page and a copy of the three browser views of the web page and a copy of the shopping pages and help pages were annexed to the Complaint.
The fact of the diversion of the surfcult.com domain name to the Respondent's website was raised with the Respondent in the Complainants' e-mail of March 5, 2002, which the Respondent did not deny.
The Complainants' representatives continued to monitor the disputed domain name web page to determine whether the domain name use changed, and on April 15, 2002, the link for the domain name had changed to the Registrar's holding page.
Annexed to the Complaint was a list of the domain names which had been registered by the Respondent with Verisign. This disclosed that at the same time that the disputed domain name was registered a total of fifteen domain names were registered by the Respondent. Of these fifteen domain names, only eight are currently registered and are linked to web pages. Of those eight domain names, there were three which linked to the Registrar's holding pages and three which went to the front page of the Respondent's website surfhistory.com. The disputed domain name was the only domain name which linked to the shopping page within <surfhistory.com> . Copies of all of them were annexed to the Complaint.
The Complainants contend that when the Respondent's "legitimate" domain names linked to the front page of the surfhistory.com website, the name "Opper Sports Productions" was clearly visible in the first browser window for that page and that this was in contrast to the page to which the disputed domain name directed.
Further searches were then conducted on the USPTO trademark database to determine whether the Respondent's domain names were trademarks owned by other traders. The Complainants' Attorneys found that nine of the fifteen domain names, including the disputed domain name, were identical or confusingly similar to trademarks which were or had been registered trademarks of third parties and that the majority of the registered trademarks found were registered in respect of surfing related products. The Complainants' Attorneys also noted that the majority of the owners of the registered trademarks were located in California, which is the State where the Respondent is resident. Copies of the USPTO trademark database extracts for the trademarks and a table summarising the Complainants’ investigations regarding the domain names contained in the Registrar's list was annexed to the Complaint.
A further search was conducted of Californian Corporations but there was no record of the Respondent having registered a company or business name "Surf Cult".
Based on the above facts the Complainants contend, firstly, that the domain name <surfcult.com> is identical to the Complainants' registered SURF CULT trademark.
The Complainants further contend that the Respondent has no right or legitimate interest in respect of the domain name surfcult.com and the Complainants have satisfied the requirements of paragraph 4 (a) (ii) of the Policy, for the following reasons
- That the Respondent had not made preparations to commence a bona fide offering of goods or services under the surfcult.com domain name prior to the dispute coming to the attention of the Complainants as evidenced by Mr. Ira Opper's statements in his first e-mail that the domain name had not been used prior to February 27, 2002.
- That the Respondent has not been commonly known by the name SURF CULT.
- That neither the Complainants nor Cult Industries Pty Ltd nor Mr. Alan Paul Surman have licensed the Respondent nor otherwise expressly nor impliedly authorised the Respondent to use the trademark SURF CULT in the USA or in any other country.
- That the name SURF CULT is not conceivably derived from the Respondent's name Opper Sports Inc. nor the Respondent's President's name Ira Opper, nor does the Respondent have a registered business which operates by this name.
- That the trademark SURF CULT is one which has been coined by Mr. Surman and is not a phrase which is ordinarily used in the English language. A search of the trademark databases of the major English speaking trading countries (United States of America, Canada, Community Trademark, United Kingdom, Australia and New Zealand) indicates that there are no applications or registrations for the trademark SURF CULT in respect of any goods or services other than the Complainants' registrations and applications, and that these records support the claim that the trademark SURF CULT is one which is unusual and less likely to be randomly selected and that the trademark is not one which is likely to be selected by traders to describe their goods or services.
- That the only meaning or significance of the trademark is as a trademark identifying and distinguishing the Complainants' and/or Cult Industries Pty Ltd's and/or Mr. Surman's goods from those of its competitors.
- That by the operation of USA law, the Respondent is taken to have constructive knowledge of the existence of the Complainants' registered SURF CULT trademark, due to its presence on the USPTO Trademarks Register.
- That because it was, as outlined above, the Respondent who first contacted Mr. Surman, the Complainants' predecessor in title to the trademark and the person who appears on the USPTO trademark register record as the owner of the trademark, and because he utilised the industry nickname for him, the Respondent had actual knowledge of the Complainants' trademark.
- That the Respondent’s statements in its e-mail correspondence with the Complainants indicate an awareness of the status of the Complainants’ USA trademarks and the goods which it covered and that accordingly the Respondent was aware of the Complainants’ trademark and selected the domain name specifically to trade on the Complainants' reputation and goodwill.
- That even though the Respondent appears to indicate that the domain name was selected to refer to "surfing culture", in fact the words "cult" and "culture" have distinct and different meanings in the English language. (Extracts from an English dictionary were annexed to the Complaint as proof thereof.)
- That accordingly, it is unlikely that the Respondent would innocently select the word "cult" to portray the meaning "culture" and that it is highly improbable that the Respondent selected the disputed domain name without knowledge of the Complainants' trademark and that there is no reasonable possibility that the domain name was selected at random.
- That the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and that the Respondent has purposely directed the domain name to its internet surf product shopping page within its surfhistory.com website, because each of the Respondent's other domain name, that link to the Respondent's surfhistory.com website, direct the user to the front page of the website where it is clear that the website is operated by the Respondent. Consequently the direction of the disputed domain name in this deceptive manner was clearly to attract customers to the Respondent's surfing product shopping site and to divert those customers from the Complainants to the Respondent's products.
- That even though the Complainants do not have a trademark registration which covers videos, the Respondent's videos only relate to surfing so the nature of the Complainants' and the Respondent's customers is the same. Consequently the Complainants' customers would be seeking out the Complainants on the internet by their trademark SURF CULT because of their interest in surfing
- That the Respondent has intentionally attempted to divert to its site, customers who are interested in purchase surfing products. Furthermore, in the Respondent’s first email to Mr. Surman, he indicated that his intention was to operate an e-commerce surf products site. There was no mention in this email of the particular nature of the products, and the fact that the site initially displayed videos for sale does not mean that it was not the Respondent's intention to offer other surfing products for sale.
The Complainants also contend that the Respondent has acted in bad faith. Although the Respondent did not name a price for the purchase of the disputed domain name, the Respondent did first approach the Complainants and attempt to sell the domain name. In addition the Respondent's conduct during the communications to purchase the domain name, made it evident that the Respondent was seeking a sum of money greater than its out of pocket expenses incurred in first obtaining the domain name. Because of Mr. Opper's level of knowledge of the Policy, the Respondent was aware of the implications of specifying a sum greater than its out of pocket expenses. Accordingly, during the exchange of correspondence, the Respondent became more aggressive and indignant in an attempt to extract a price from the Complainants. The Complainants suggest that such conduct tends to indicate that the Respondent registered the disputed domain name in bad faith, and they submit that had the Respondent merely been intending to recover its costs of registering the domain name, the Respondent would not have attempted to push the Complainants to choose a price.
The Respondent, by its own admission, did not use the disputed domain name before it approached the Complainants' predecessor to sell the domain name and the non-use of a domain name or the passive holding of a domain name has been found to amount to a use in bad faith.
The Respondent has a history of registering domain names which are identical or confusingly similar to registered surfing related trademarks and of holding domain names that it does not have any intention of using. The concurrent registration of the disputed domain name with the other surfing domain names is an indication that the Respondent intended to use or hold the domain name in bad faith and the lack of activity in relation to the disputed domain name between its registration in 1999 and its use in 2002, is further indication that the Respondent did not have a legitimate interest in the disputed domain name.
The Respondent only commenced use of the domain name when it became apparent that the Complainants were very interested in the domain name so the Respondent may have begun use of the domain name in an attempt to force the Complainants to offer the Respondent a large sum of money for the domain name.
Alternatively, it is alleged that the Respondent linked the domain name to its shopping page, within its website, to divert customers from the Complainants to the Respondent for commercial gain or to attract customers interested in the Complainants' surfing products to its website.
The Respondent has engaged in conduct which misleads consumers into believing that the website reached via the disputed domain name was associated with the Complainants and/or to damage or disrupt the business of the Complainants and its Licensee.
B. The Respondent
In 1999, Mr. Ira Opper, the President of the Respondent, registered several domain names for use in his surfing video business. He maintains that he did so because he saw that domain names were being registered at a frenetic pace and he was unsettled as to which domain name to use for his business.
The Respondent contends that Mr. Opper had a legitimate interest and did not act in bad faith in registering or using the <surfcult.com> domain name because at the time the disputed domain name was registered by Mr. Opper he had no knowledge of Complainants, Cult Industries, or of the SURF CULT trademark.
However the Respondent contends that in fact it is the Complainants who have acted in bad faith. The Complainants acknowledge that well prior to February 2002, they were aware of the Respondent and his involvement in the surf video/movie market. Despite this knowledge, the Complainants never complained to Opper Sports regarding the Respondent’s domain name until Opper Sports’ email to Paul Surman in March 2002. The Complainants then asked Opper Sports to make them an offer to sell the disputed domain name, coupled with a threat to sue Opper Sports. It is apparent that the Complainants’ actions were undertaken in an attempt to trap Opper Sports and manufacture a claim under the Policy. Knowing that they had no legitimate claim to take Opper Sports’ domain name, the Complainants attempted to manufacture a case first by waiting for Opper Sports to contact them, and then by baiting Mr. Opper to make an offer while refusing to do the same.
When Opper Sports did not succumb to the Complainants’ bullying tactics, they filed the present Complaint which, in the opinion of the Respondent, clearly oversteps the intended goals of the Policy. The Complaint and its 27 exhibits is several hundred pages long and makes dozens of unsupported and conclusory allegations that have no place in the present proceedings. Despite hundreds of pages of unnecessary exhibits, the Complainants fail to offer rudimentary evidence to establish an actionable claim under the Policy.
The Complainants have also attempted to mislead the Panel into believing hat their purported trademark SURF CULT is in widespread use in the United States and is widely known. Nothing could be further from the truth and it appears that the Complainants’ U.S. trademark registration was either fraudulently obtained or fraudulently maintained and is therefore subject to cancellation.
The Respondent contends that this Complaint must be denied and the Complainants should be found guilty of Reverse Domain Name Hijacking.
In addition the Respondent alleges that the Complainants do not even have standing to bring this action, because a close examination of the Complaint indicates an unclear chain of title between the founder of the Australian clothing line apparently called Surf Cult – a Paul Surman - and the Complainants. For example, if the Surf Cult trademark was purchased from Mr. Surman by Cult Industries, Inc., why are Mr. and Mrs. Spong the Complainants? If the Surf Cult trademark was bought by the Spongs, how does Cult Industries claim ownership? In other words, it appears that there may have been an invalid assignment in gross of the trademark by Mr. Surman and that Mr. and Mrs. Spong do not have standing to bring this action.
Under Paragraph 4(a)(i) of the Policy, a Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. However the Respondent maintains that the disputed domain name is not identical to the Complainants’ registered SURF CULT trademark, and therefore, that the requirements of paragraph 4(a)(i) of the Policy have not been satisfied.
The Complainants have not alleged that any confusion would result by virtue of Opper Sports’ use of the disputed domain name and as a result, Complainants have failed to satisfy their burden with respect to proving confusing similarity as required by Paragraph 4(a)(i) of the Policy. The Respondent contends that WIPO Panels have held that similarity of names is not enough, and that when a Complainant’s goods or services are dissimilar to those of respondent, confusing similarity is not established. Reference is made to the cases of Talal Abu-Ghazeleh v. Dabbas, WIPO Case No. D2000-1479 (December 24, 2000). Knirps v. Tomforde, WIPO Case No. D2001-0008 (March 20, 2001).
As shown in Mr. Opper’s Declaration, and as admitted by the Complainants, the Complainants and the Respondent are not in the same business. The Complainants allegedly sell clothing; the Respondent produces and distributes film, video and entertainment programming.
According to the Policy, a Respondent may be found to have a "legitimate interest" in his domain name when, "before any notice to [the respondent] of the dispute, [the respondent has made] 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." The Respondent refers to a number of findings by Panels under the Policy in this regard, for example –
- A Respondent is within his rights to secure a domain name, develop products and seek funding prior to a full commercial launch of his web site.
- Even perfunctory preparations have been held to suffice for this purpose.
- Raising the burden of proof for the Complainant even further, a Respondent submitted four (4) affidavits from acquaintances and associates which stated that Respondent had a legitimate purpose in registering the domain name at issue. Clearly persuaded by the corroborated testimony, the Panel held that a Complainant would have to present "very persuasive evidence" to overcome such corroborated evidence.
- Respondent’s uncorroborated affidavit of legitimate registration was enough to satisfy the Panel that a claim of bad faith registration was not justified.
- A "legitimate interest" exists for the registration and use of a domain name when a Respondent can establish an "overall business concept" that transcends the single domain name in dispute.
- A Respondent alleged that it had registered torontostar.tv as part of an overall business plan to provide entertainment focused web sites in various North American Cities. The respondent offered two memoranda referring to the business plan. While the Panel noted that the respondent’s evidence was a bit thin, it ruled in the respondent’s favor because the complainant has the burden to establish a lack of a legitimate interest.
The Respondent in this case contends that the evidence presented by Mr. Opper overwhelmingly establishes a legitimate interest in the disputed domain name. His Declaration states that he registered the domain name for use with his surfing related business of selling surfing videos and that the name was selected as a contraction of "surf" and "cult" which is short for "culture" and clearly falls into the overall business concept of Opper Sports which is to sell surfing related products – specifically surfing videos.
Moreover, Mr. Opper’s sworn statement of a legitimate interest in the disputed domain name is supported by a copy of a business proposal and by several affidavits from associates which corroborate Mr. Opper’s assertions.
The Respondent maintains that the fact that Mr. Opper initiated contact with Complainants’ predecessor has little consequence because Mr. Opper had registered and used the disputed domain name in good faith, and the mere attempted sale of a domain name is not sufficient to reverse the evidence of legitimate use presented by Mr. Opper. Mr. Opper’s email to Paul Surman was intended as a friendly overture and that in response the Complainant Douglas Spong invited Mr. Opper to make an offer to sell the domain name. The only reason that this Complaint was instituted was because Mr. Spong did not like the way the discussions progressed after he repeatedly asked Mr. Opper to make an offer to sell.
The Complainants also claim that Mr. Opper had constructive knowledge of the Surf Cult trademark by virtue of United States trademark law and Complainant’s existing trademark. However, this "constructive knowledge" argument was specifically rejected in the WIPO Panel Decision Substance Abuse Mgmt. V. Screen Actors Models Int’l WIPO Case D2001-0782 of (August 14, 2001).
Lastly, the Complainants cite Mr. Opper’s emails of March 8, 2002, and March 12, 2002, to support their claim that Mr. Opper was aware of Complainants’ trademarks. However, Mr. Opper’s emails were in response to Mr. Spong’s emails of March 1, 2002, and March 8, 2002, which make specific reference to those marks.
In the present case, the Complainants have made only circumstantial and conclusory allegations of bad faith and have offered no evidence whatsoever to prove that any of their sales have occurred in United States. Rather, the Complainants presumptively reason that their "estimated" $2.63 million in sales over a 15 year period "means that the SURF CULT trademark is certainly known amongst consumers within the surfing products market and is associated with Complainants and/or Cult Industries Pty Ltd and/or its predecessor Alan Paul Surman." The Respondent contends that throughout hundreds of pages of attached Exhibits the Complainants failed to offer a single page of evidence to support their "estimated" sales or any sales at all in the United States. The Complainants also failed to offer any evidence that the Surf Cult name is known to a single citizen of the United States. Complainants’ claimed sales of $2.63 million over a 15 year period amount to a modest A$175,333 per year, in sharp contrast to the Complainants’ "projected" sales for next year of A$8 million. Considering that most, if not all, of these sales occurred in Australia, the Respondent maintains that it is clear that the Surf Cult name does not enjoy international notoriety.
The Complainants’ claim of bad faith is also based on false claims that Mr. Opper became more aggressive and indignant during the exchange of emails, and that Mr. Opper did not use the disputed domain name. The latter statement is obviously untrue because the Complainants repeatedly acknowledge that Mr. Opper has used the disputed domain as a pointer to his <surfhistory.com> web site. Contrary to Complainants’ assertions, domain forwarding is a common practice and is not misleading in any way. At all times the "surfhistory.com" graphic is visible to visitors coming to the <surfhistory.com> site via <surfcult.com>. With respect to the former claim that Mr. Opper became indignant, the emails attached to Complainants’ complaint demonstrate that Mr. Opper remained cordial despite multiple accusatory emails from Mr. Spong.
Lastly, the Complainants cite previous surfing related domain registrations by Mr. Opper to come to the conclusion that Mr. Opper is a cybersquatter. However, Opper Sports’ registration of surf industry related domain names should not be surprising because it falls within Opper Sports’ surf related business and business concept. With regard to the endlesssummer related domain names, Opper Sports was the registrant due to the fact that Opper Sports is the licensing agent for this company. As to the remainder of the registered domain names, any relation to existing trademarks is mere coincidence. Additionally, no one except for the Complainants herein have ever complained to Mr. Opper or Opper Sports about any of the other domain names that Opper Sports has registered. Indeed, one would be hard-pressed to find a domain name of value that is not somewhat similar to an existing trademark registration.
The Respondent rebuts the Complainants’ unsupported allegations by presenting the sworn affidavit of Mr. Opper which states that he had no knowledge of the Complainants, Cult Industries, or the Surf Cult trademark at the time he registered the <surfcult.com> domain in 1999. The Declaration goes on to state that Mr. Opper did not hear of Surf Cult until 2002, and that was in relation to Surf Cult being used in Australia, not in the United States. Further supporting Mr. Opper’s affidavit are the affidavits of six (6) long time surf industry professionals which state that they also have never heard of a company operating under the name Surf Cult.
Just before the filing of the Response, Mr. Steve Barrett, a Surf Cult employee, confirmed to Mr. Joe Mandour, an Opper Sports employee that Surf Cult products ARE NOT available in the United States. The fact that Surf Cult has no presence at all in the United States, and the non-use of the Surf Cult trademark in the United States demonstrates that it was reasonable for Mr. Opper to have never heard of Complainants or their trademark at the time he registered the disputed domain name. The Respondent maintains that the non-use of the Surf Cult trademark in the United States raises serious credibility concerns about the Complainants and could lay them open to further legal action in the United States for unfair business practices. If the Complainants have not told the truth about their use of the trademark in question in the U.S., what else have they not told the truth about?
The Respondent alleges that last year the Complainants fraudulently renewed their United States Surf Cult trademark Registration No. 1,613,012 by falsely declaring that it was in use in the United States when in fact, according to Surf Cult’s own employees, this is not true. The fraudulently obtained or renewed U.S. Registration for Surf Cult has been heavily relied upon by Complainants in the present proceedings and by Mr. Spong in his litigation-threatening emails to Mr. Opper. Considering this new evidence, it is clear to the Respondent that the Complainants have purposely misled this Panel in an attempt to take Mr. Opper’s <surfcult.com> domain name when such action is clearly not justified.
The Respondent hereby requests that the present Complaint be denied, and that Complainants take nothing by way of these proceedings.
The Respondent further requests that this Panel find the Complainants guilty of Reverse Domain Name Hijacking under paragraph 15(e) of the Uniform Rules.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint, and the Panel will now examine each of them in turn.
That the domain name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights
According to the Policy, it is only necessary for a Complainant to prove that he has rights to a trademark. Nothing is said about the country where those rights exist, or the goods or services to which they extend.
The Complainants have provided a great deal of documentation relating to its trade- marks, a lot of which is not relevant, but amongst the documents are copies of the following registrations of the trademark SURF CULT, written in block capital letters, all of which are currently in force –
Australia 856045 Douglas Benson Spong
Japan 2614372 Surf Cult Australia Pty Ltd
New Zealand 627683 Douglas Benson Spong
USA 1613012 Allan Paul Surman d.b.a. Surf Cult
Copies of a number of still pending applications for the trademark SURF CULT in the names of Mr. Spong or Mr. & Mrs. Spong all of them filed prior to the date of this Complaint were also provided.
The Respondent has alleged that there is no clear evidence that the Complainants actually own the marks and are therefore entitled to bring this Complaint. It is alleged that "there may have been an invalid assignment in gross of the trademarks by Mr. Surman." This is puzzling because copies of deeds of Assignment from Mr. Surman to Waterview Trading Limited and from Waterview Trading Limited to Mr. and Mrs. Spong were also filed, and in the opinion of the Panel these show a clear transfer of title to the Complainants for a number of trademarks, including the Australian, New Zealand and United States of America marks identified above. At no time have the Complainants alleged that any of these trademarks were owned by Surf Cult Industries Ltd., only that this company is licensed to use them.
The Respondent also alleges that the term SURF CULT is neither identical nor similar to the disputed domain name <surfcult.com>. However in the opinion of the Panel this is clearly not the case. For comparison purposes under the Policy it is customary to discount the generic TLD ".com" and, as the Internet does not recognise a space, it is apparent that the two words ‘surf cult’ are identical to the single word "surfcult". This is sufficient under the Policy to prove paragraph 4(a)(i) and it is not necessary for a Complainant either to allege that there has been confusion – as the Respondent’s claims – or for this to be proved. This is apparent from hundreds of decisions under the Policy, and the two referred to by the Respondent both involved special features that do not exist in the present case. They are therefore not good precedents.
Accordingly the Panel finds that the Complainants, Mr. and Mrs. Spong, currently possess valid rights in the trademark SURF CULT and that this trademark is identical to the disputed domain name.
That the Respondent has no rights or legitimate interests in respect of the domain name
In connection with any rights or legitimate interests, some of the Complainant’s contentions are specious (notably the claim that the Respondent had constructive knowledge of the Complainant's name and trademark SURF CULT) but it has nevertheless established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show that he has rights to or legitimate interests in respect of the disputed domain name. On balance, and despite some arguments on behalf of the Respondent that are clearly unsupportable, the Panel finds that he has.
Dealing first with the Respondent’s claim that the trademark SURF CULT is not in use in the United States of America, the Panel notes that there is in fact nothing in the Complaint to back up the Respondent’s statement that the Complainant is alleging "widespread use in the United States." The Complainant states only that "clothing bearing the SURF CULT trademark has been sold and offered for sale in the USA since 1989". It might however have been helpful had the Complainants backed up this claim with some more concrete evidence of sales.
Nor is the Complainants’ claim in conflict with the information obtained by the Respondent’ employee Mr. Joe Mandour who was told only that SURF CULT products are not "currently available in the States". This is not to say that they have never been sold in the US or that they might not be in the future. Whether or not the US registration of the trademark SURF CULT is invalid as a result is not for this Panel to decide.
It seems not unreasonable to suppose that, given Mr. Opper’s long and, by his own admission, extensive involvement in the surfing industry, that he had at least encountered the name SURF CULT. He makes videos and movies about surfing and the Complainants make clothing and accessories for surfers. It is a very fine line between the two. Mr. Opper must meet and mingle with surfers who are not renowned for being shy or retiring or reluctant to swap information with other surfing aficionados. However there is no evidence that he had encountered the name before registering the disputed domain name in 1999. On the contrary, all the evidence points the other way.
Mr. Opper has filed a copy of what he describes as a business plan. It occupies one sheet of paper and must have taken all of 10 minutes to prepare. It contains no figures, no projected sales, no information about manufacturing facilities or potential suppliers, no industry background, and no indication of potential customers or likely sales outlets. The Panel ventures to suggest that any banker presented with such a plan would not have been willing to lend Mr. Opper a single cent on the strength of it.
Mr. Opper has also filed a sworn Declaration. In it he declares that he had never heard of the Complainants or their trademark before February 2002. Also filed were two sworn Declarations from employees of the Respondent who say that they have never heard of any clothing sold under the brand name SURF CULT. These are backed by other Declarations from six businessmen, and although they are couched in remarkably similar wording each one says, in effect, that the Declarant has never heard of SURF CULT. They do not prove that Mr. Opper therefore had a legitimate right to register the disputed domain name <surfcult.com> - although Mr. Krumb, an employee of the Respondent, swears that he has known Mr. Opper for 16 years and he knows that Mr. Opper registered the disputed domain name for his own business - but they do strongly support the Respondent’s claim that the trademark SURF CULT is hardly known in the United States.
It is quite clear that, when sending his initial e-mail, Mr. Opper had expectations of being able to profit from his domain name. He explains in his Declaration that the only reason he associated the name with Mr. Surman, and addressed him by his nickname, was because he had found the information on the Complainants own website. This initial approach was met with a very forceful response from Mr. Spong and it is perhaps not surprising that Mr. Opper has reacted in the way that he has as a result. It would be speculation on the part of the Panel, but if Mr. Spong had been slightly more understanding or conciliatory at the outset, this Complaint might never have happened.
The Panel does not agree with Mr. Opper’s proposition that the word "cult" is derived from "culture". They are both quite different concepts. However he does produce two documents to prove that, as he says, "the term ‘surf cult’ has been used generically and commonly for many years to refer to a type of film and video". They go a long way to disproving the Complainants’ assertion that the phrase "surf cult" is unique to themselves, although in fact an Internet search for "surf cult" conducted by the Panel threw up only references to the Complainants.
The Complainants stress repeatedly that Mr. Opper must have been aware of their name and trademark when he registered the domain name <surfcult.com> in 1999, but in this regard, the Panel prefers Mr. Opper’s version of events. He claims to have registered a number of surf related names at that time because he perceived that there was a lot of domain name registering going on at the time and he wanted to reserve a good name for his business. The records show that on August 17, 1999, he registered :
On August 26, 1999, he registered :
On September 6, 1999, he registered <animal-dreams.com>.
On September 8, 1999, he registered * <endlesssummer3.com>.
On February 1, 2000, he registered :
All of them are still in force except the three marked with an asterisk which appear to have lapsed.
As we know he eventually chose to go with <surfhistory.com> as the name of his main website for selling surfing videos and movies.
The Complainants allege that these names are similar to US registered trademarks but the evidence for this is not convincing. They have annexed details of trademark registrations only of the words: BEACH CULT, ENDLESS SUMMER, BAREFOOT + Device, EBEACH, GUERILLA FILMWORKS & RECORDS + Device, LONGBOARD, as well as their own SURF CULT. Of these, BEACH CULT has expired, and in the opinion of the Panel there must be some doubt whether the domain names <guerillatv.com> and <barefootadventures.com> are similar to their allegedly corresponding trademarks. Mr. Opper has stated that he is the licensing agent for the movie "Endless summer" (a fact that is confirmed in an Affidavit from its Director Mr. Bruce Brown) which explains the registrations of the two "endless summer" domain names. That leaves only <ebeachtv.com> and <longboardtv.com> which again are not identical to any registered trademarks.
The Panel does not see in all of these registrations a "pattern" of registering other people’s marks as domain names, but a genuine registration of names relating to surfing or surfing movies which is the business of Mr. Opper and the Respondent.
The Panel has concluded that Mr. Opper is, as he says he is, "an ethical business man" who would "never purposely register a domain name for a bad faith purpose". The Panel also believes that he was not aware of the Complainants’ name and trademark when he registered the disputed domain name <surfcult.com> and that it was only at some time earlier this year that Mr. Opper encountered the Complainants’ business and, having no further use for the disputed domain name, he decided to see if he could get some money for it. Hence the email to Mr. Surman.
As a result the Panel rules that the Respondent did have a legitimate right and interest in the disputed Domain Name when it was registered.
That the domain name has been registered and is being used in bad faith
The Complainant’s third hurdle is to establish that the Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. However as the Panel has found in the Respondent’s favour under paragraph 4(a)(ii) of the Policy, it will not address the question of bad faith.
In the result, the Panel has found that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, but that the Respondent has rights and legitimate interests in respect of the disputed domain name.
Accordingly, the Panel directs that the registration of the domain name <surfcult.com> should not be transferred to the Complainants.
8. Final Remarks
The Respondent has charged the Complainants with bad faith and reverse-name hijacking.
The former is, in the opinion of the Panel, not proved. The Complainants may have gone over the top initially, but they have always acted responsibly and ethically.
The latter is defined in the Policy as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." In view of the Decision, it would follow that this has too not been proved.
David H. Tatham
Dated: June 17, 2002