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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wick Communications Co. Inc. v. Half Moon Bay Coastside Foundation
Case No. D2002-0556
1. The Parties
Complainant in this proceeding is Wick Communications Co. Inc., a corporation organized and existing under the laws of the state of Arizona, with a principal place of business at 333 West Wilcox Drive, Suite 302, Sierra Vista, Arizona, United States of America. The Complainant is represented in this proceeding by Jennifer S. Sim, Esq., Perkins Coie LLP, 180 Townsend Street, Third Floor, San Francisco, California 94107, United States of America.
Respondent in this proceeding is Half Moon Bay Coastside Foundation, a non-profit organization whose address is 1589 Higgins Canyon Road, Half Moon Bay, California 94019, United States of America. The Respondent is represented in this proceeding by Stephen H. Sturgeon, Esq., Law Offices of Stephen H. Sturgeon & Associates, 11116 Hurdle Hill Drive, Potomac, Maryland 20854, United States of America.
2. The Domain Names and Registrar
The domain names in dispute are <pescaderopebble.net>, <pescaderopebble.org>, <pescaderopebble.info>, <thepebble.org> and <thepebble.info>.
The registrar for the disputed domain names is Tucows, Inc., 96, Mowat avenue, Toronto, ON, M6K 3M1, Canada.
3. Procedural History
This case will be considered and resolved according to the procedures implemented under the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on June 17, 2002, in hard copy, and on June 21, 2002, by e-mail. On June 19, 2002, the Center sent a Request for Registrar Verification to Tucows, the registrar of the disputed domain name. Tucows responded the same day that the registrant of the disputed domain name was the Respondent in this proceeding and that this dispute is subject to the Policy.
On June 24, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
On July 11, 2002, Respondent requested an extension to the deadline for filing a Response. Complainant filed a statement opposing the Respondent's request on July 17, 2002. On July 18, 2002, for reasons including Respondent’s difficulty in finding legal counsel, the Center granted the Respondent a one week extension until July 28, 2002 per Rule 5(d). On July 28, 2002 the Center received the Response by e-mail and on August 2, 2002 in hard copy.
On August 13, 2002 the Complainant filed a response to the Respondent’s Response. However, having reviewed the Complaint and the Response, the Panel has decided that, per Rule 12, it does not need and will not request or review additional filings from either party.
The Panel submitted a Declaration of Impartiality and Independence on August 13, 2002, and on that date the Center proceeded to appoint the Panel. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
The due date of this Decision is August 27, 2002.
4. Factual Background
Complainant, an American company engaged primarily in newspaper publishing, owns the weekly newspaper, "Half Moon Bay Review and Pescadero Pebble." The newspaper has a relatively limited circulation which is confined to one small geographical area, a portion of San Mateo County, California, USA. In addition, among other domain names, Complainant has registered (in 1999) and uses the name <pescaderopebble.com> to assist its publishing efforts.
Respondent is listed as the Registrant of the disputed domain names, all of which were registered on February 16, 2002. On February 25, 2002, Complainant sent Oscar Braun an e-mail expressly refusing him permission to use the mark "Pescadero Pebble" (Exhibit E to the Complaint). Subsequent to its registration of the names, Respondent has used them to access its web site which provides various news and commentary concerning the same small geographical area covered by Complainant's newspaper. On March 27, 2002 and April 12, 2002, Complainant sent Respondent cease and desist letters demanding that it stop using the disputed domain names (Exhibit H to the Complaint).
5. The Parties’ Contentions (Summarized)
--Complainant, an America company involved in the publishing industry, bought a weekly newspaper called the "Half Moon Bay Review and Pescadero Pebble" in 1986. The newspaper has operated under that name since 1937, and has several thousand subscribers in its area of San Mateo County, California, USA.
--The portion of the newspaper's name called "Pescadero Pebble" is famous, and Complainant has acquired a common law trademark in the name.
--In 1999, Complainant registered the domain name <pescaderopebble.com>, through which it offers news articles and other services.
--The disputed domain names are all identical or confusingly similar to Complainant's trademarks. The first three disputed domain names referred to above are visually the same as Complaint's trademark, "Pescadero Pebble", except for the addition of various gTLDs. The last two disputed domain names are also confusingly similar to Complainant's mark.
--Respondent has no rights or legitimate interests in respect of the domain names. An agent for Respondent, Oscar Braun, asked for permission to use Complainant's trademark, but Complainant refused. Respondent has never been known by any of the disputed domain names, and has used them only to infringe Complainant's trademark by creating a web site that effectively duplicates Complainant's offerings (i.e., commentary, copies of news articles and other information about the San Mateo County coastline community, including local news, politics, the environment, fire safety, and local history). Such offerings are not strictly noncommercial since products are advertised and sold by Respondent for its financial benefit.
--Respondent has registered and used the disputed domain names in bad faith. Respondent was aware of Complainant's rights in the mark, "Pescadero Pebble," and proceeded to register the names and use them to infringe Complainant's mark even after being notified of Complainant's refusal to grant permission to do so. After discontinuing use of the first three disputed domain names listed above in response to cease and desist letters from Complainant, Respondent offered to sell the names to Complainant.
--Respondent intentionally uses the disputed domain names to attract Internet users to its web site by misleading those users into thinking that the web site is affiliated with Complainant. Respondent's use of the names dilutes the value of Complainant's mark.
--Respondent's actions are not consistent with a clear case of "cybersquatting" or "cyperpiracy," and therefore the Policy should not apply to this case.
--Respondent is a foundation which has been operational since December 23, 1999.
--The disputed domain name is not identical or confusingly similar to a trade or service mark in which Complainant has rights. Complainant's newspaper is known under the name "Half Moon Bay Review" with only slight mention of "Pescadero Pebble." Complainant has no common law trademark rights in "Pecadero Pebble" as "pescadero" and "pebble" are generic words, as available to Respondent as anyone, including Complainant.
--The burden of proof is clearly upon Complainant to establish that Respondent has no rights or legitimate interests in the disputed domain name, a burden which Complainant has not met.
--Respondent does have rights and legitimate interests in the disputed domain names. Respondent has been actively engaged in use and the preparation for use of the disputed domain names in connection with a bona fide offering of goods and services. Respondent has planned, developed, published and modified web sites for these purposes. At varying times prior to the notice of the dispute, all of the domain names have been in use for these purposes.
--Respondent did not register and use the disputed domain names in bad faith. There is no evidence that the disputed domain names were registered with the intent to sell them to the Complainant, to disrupt its business, or to prevent it from registering its trademark in a domain name. Respondent's offer to sell some of the names during a call initiated by Complainant does not constitute bad faith.
6. Discussion and Findings
In accordance with the Policy (Paragraphs 4[a][i] through 4[a][iii]), Complainant may prevail and obtain transfer of each of the disputed domain names, <pescaderopebble.net>, <pescaderopebble.org>, <pescaderopebble.info>, <thepebble.org> and <thepebble.info>, if Complainant can prove the following in connection with each domain name:
--the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
--Respondent has no rights or legitimate interests in respect of the disputed domain name; and
--the disputed domain name was registered and is being used in bad faith
Identical or Confusingly Similar
Complainant has offered no evidence of, and the Panel finds that Complainant does not own, a valid registered trade or service mark in the name "Pescadero Pebble."
Complainant relies instead on common law trademark rights in the name "Pescadero Pebble." Many previous panels ruling in cases under the Policy have held that common law trademark rights may be protected in proceedings such as these. See for example United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005 (March 27, 2002) and Meijer, Inc. v. Porksandwich Web Services, NAF Case No. 97186 (July 6, 2001). These cases have generally found common law trademark rights if Complainant could establish that it had done business under the name in question sufficient to create a secondary meaning identifiable with Complainant's goods or services.
Complainant contends that newspapers have been sold for decades under its mark which includes the name "Pescadero Pebble," establishing an identity between the name and this service among at least the subscribers and readers of that paper within the region they inhabit. Furthermore, since 1999, Complainant's registered domain name, <pescaderopebble.com>, has steered consumers to a web site offering the same informational services, increasing the secondary meaning.
Respondent counters by asserting that the dominant heading for Complainant's weekly newspaper is "Half Moon Bay Review" and that the phrase "and Pescadero Pebble" is only an afterthought in the title. However, Respondent's argument is substantially undercut by its own actions. Within its lengthy Response, Respondent never once contradicts Complainant's allegation that a person, Oscar Braun, acting as an agent for Respondent, asked permission from Complainant to use the name in question. Why, if Respondent believed Complainant had no rights in the name "Pescadero Pebble", would it contact Complainant about using the name?
Respondent further argues that Complainant could never establish a trademark at common law in "Pescadero Pebble" because it is comprised of two generic words, "pescadero" (meaning "fishmonger" in Spanish) and "pebble." Again, however, Respondent's reasoning is faulty. A simple example suffices to show why. There are hardly two more generic words than "motors" and "general," which by themselves can probably not be trademarked when used for their dictionary meaning. But combined as "General Motors", they denote one of the largest corporations and most readily identifiable trademarks in the world.
In view of Complainant's continuous use of the name in connection with the delivery of news in hard print and over the internet for many years, the Panel concludes that Complainant does own common law trademark rights in "Pescadero Pebble."
The disputed domain names, <pescaderopebble.net>, <pescaderopebble.org>, <pescaderopebble.info>, vary from Complainant's trademark, "Pescadero Pebble", only in the deletion of the space between the words and the addition of the various gTLDs at the end. Prior panels have uniformly disregarded the elimination of spaces between trademarked words in evaluating the identity or similarity of domain names. See Laerdal Medical Corporation v. Locks Computer Supply, WIPO Case No. D2002-0063 (April 18, 2002). Such Panels have concluded also that the addition of gTLDs does not reduce the identity or confusing similarity of a disputed domain name relative to a valid trade or service mark. See, Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA95856 (December 18, 2000). Thus, the Panel finds an identity between the disputed domain names and Complainant's trademark.
The disputed domain names, <thepebble.org> and <thepebble.info>, are certainly not identical to "Pescadero Pebble." While the addition of the definite article and the gTLDs are an immaterial variation, the elimination of the longer and more distinctive of the two words of the trademark creates a meaningful difference. Citing some cases decided under the Policy, Complainant argues that these disputed domain names are confusingly similar to its mark. However, those cases present trademarks which are far more well known than Complainant's and have greater similarity to the domain names in question than is the case here. The case with the furthest disparity between mark and domain name (CIMCities LLC v. None aka Hamid Shojaee, NAF Case No. FA95606 [Oct. 19, 2000]) -- "Access Arizona" versus <accessaz.com> -- still presents a difference significantly less distinguishable than that presented here, because "az" is the well-recognized abbreviation for "Arizona."
It is far from clear to the Panel that internet users outside the region of Complainant and Respondent's operations would be confused by the similarity of these two disputed domain names and Complainant's trademark. Given the limited reach of the mark, it is not likely that such users would assume Complainant was the source of web sites attached to those names. There is not even evidence in the record to demonstrate that Complainant's own subscribers would be fooled as to the source of these two domain names -- i.e., there is no evidence that the renown of Complainant's newspaper is so great within even its own area that it is simply referred to as "The Pebble."
In accordance with the foregoing, the Panel finds that the disputed domain names <pescaderopebble.net>, <pescaderopebble.org> and <pescaderopebble.info> are identical or confusingly similar to a trademark or service mark in which Complainant has rights, but that Complainant has failed to carry its burden of proof to show that the disputed domain names, <thepebble.org> and <thepebble.info> are likewise identical or confusingly similar. As a result of this finding, the continued discussion below does not involve the latter two domain names.
No Rights or Legitimate Interests
While paragraph 4(a)(ii) of the Policy places the burden of proving that Respondent has no rights or legitimate interests in the disputed domain names on Complainant, the Panel finds much support from prior cases decided under the Policy that it should consider all of the evidence presented in the case in its evaluation of this issue. See for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000) and Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150, (May 2, 2000).
As is evident from cease and desist letters sent by Complainant to Respondent, Complainant never gave Respondent permission, authorization or a license to use Complainant's trademark.
Paragraph 4(c) of the Policy lists three ways for Respondent to persuade the Panel that Respondent has rights or legitimate interests in the disputed domain names. Paragraph 4(c)(iii) of the Policy allows Respondent to confirm its rights and interests in the disputed domain names by presenting evidence that it is making a legitimate noncommercial or fair use of the names, but Respondent has submitted no evidence or even a contention to that effect. Similarly, Respondent has forgone any showing that it, as an organization, is commonly known by any of the disputed domain names, per the requirements of Paragraph 4(c)(ii).
Respondent does contend that it is using the disputed domain names in a bona fide offering of goods or services. However, Respondent has not said exactly what these goods or service are. In that vacuum, the Panel must accept Complaint's non-contradicted contention that Respondent has provided news articles and local information on its web site attached to the domain names. As such, through use of Complainant's mark Respondent is furnishing much the same services as Complainant, a situation that prior panels have found not to constitute a "bona fide" offering under the Policy. See Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 (April 17, 2002) ("…using the contested domain name…in the exact same field of endeavor as the Complainant…can not and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the contested domain name.").
Therefore, taking into account all of the submissions before it in this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(b) of the Policy presents four specific circumstances which would compel a ruling that Respondent has registered and is using the disputed domain names in bad faith. Most pertinently, Paragraph 4(b)(iv) lists one such circumstance: "by using the domain name, [Respondent] is intentionally attempting to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating the likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location."
Complainant has provided the Panel with evidence that Respondent's web site is used to disseminate local news and information (Exhibits F and G), a charge which is never denied in Respondent's comprehensive Response. Furthermore, Complainant has alleged and furnished evidence (Exhibit I to the Complaint), again without contradiction, that Respondent derives some commercial gain from this activity through its co-mingled sale of goods through the same web site. The Panel concludes that, since Respondent’s provision of local news and information is the same as Complainant's business, confusion is likely among internet users as to the source of this news and information since it appears under domain names identical to Complainant's mark. Thus, given the financial benefit to Respondent, the conditions set forth in Paragraph 4(b)(iv) are satisfied in this case.
Accordingly, the Panel finds that Complainant has sustained its burden of proof to show that the disputed domain names were registered and are being used in bad faith.
Reverse Domain Name Hijacking
The Respondent has requested the Panel find that the Complainant is attempting to gain control of the disputed domain names through reverse domain name hijacking (Rule 15(e)). However, the Panel believes that the foregoing discussion amply demonstrates that the Complainant has sound reasons for seeking transfer of the disputed domain names and that this Complaint has not been brought in bad faith.
With respect to the disputed domain names, <pescaderopebble.net>, <pescaderopebble.org> and <pescaderopebble.info>, the Panel finds that they are each identical to Complainant’s common law trade and service mark, "Pescadero Pebble." The Panel has also found that Respondent has no rights or legitimate interests in those disputed domain names. Finally, the Panel concludes Respondent registered and is using those disputed domain names in bad faith because Respondent is intentionally attempting to benefit commercially from the likelihood of confusion between those names and Complainant's mark.
With respect to the disputed domain names, <thepebble.org> and <thepebble.info>, the Panel has found that Complainant failed to show that they are identical or confusingly similar to Complainant's common law trademark, "Pescadero Pebble," per the Policy at Paragraph 4(a)(i).
In accordance with the foregoing and pursuant to Paragraph 4i) of the Policy and Paragraph 15 of the Rules, the Panel orders: that the disputed domain names, <pescaderopebble.net>, <pescaderopebble.org> and <pescaderopebble.info>, be transferred from Respondent, Half Moon Bay Coastside Foundation, to Complainant, Wick Communications Co. Inc.; and that the disputed domain names, <thepebble.org> and <thepebble.info>, remain registered to Respondent, Half Moon Bay Coastside Foundation.
Dennis A. Foster
Dated: August 27, 2002