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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tail of the Dragon, LLC v. Ronald Buck

Case No. D2007-0594

 

1. The Parties

The Complainant is Tail of the Dragon, LLC, Robbinsville, North Carolina, United States of America, represented by Carter Schnedler & Monteith PA, United States of America.

The Respondent is Ronald Buck, Largo, Florida, United States of America, represented by David M. Jeffries, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dragonstail.com> is registered with NamesDirect.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2007. On April 20, 2007, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On April 20, 2007, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2007. The Response was filed with the Center on May 21, 2007.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 30, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant has registered the word service mark TAIL OF THE DRAGON on the Principal Register of the United States Patent and Trademark Office (USPTO), registration No. 2,991,952, dated September 6, 2005, in international class 39, covering travel related services, as further defined, claiming date of first use and first use in commerce of July 2000. (Complaint, Annex 8)

Complainant has indicated that the TAIL OF THE DRAGON service mark is used in connection with providing travel information services, as well as on products (e.g., on articles of clothing and souvenirs associated with motorcycle-related travel). Complainant uses the service mark in connection with a website at Internet address “www.tailofthedragon.com”. Complainant states that it intends to use the aforesaid service mark in connection with sales and service of motorcycle equipment in the future. (Id., paras. 15-16)

Complainant asserts common law service mark rights in the term THE DRAGON’S TAIL. Complainant asserts that it adopted and began using that service mark in 2001 in connection with the <dragonstail.com> domain name and website which are the subject of this proceeding. (Id., para. 17)

According to the Registrar’s Verification report, Respondent Ronald Buck is the registrant of the disputed domain name, <dragonstail.com>. According to a NamesDirect.com WHOIS database report submitted by Complainant, the record of registration was on October 23, 2001, and was last updated on February 28, 2007. According to a second NamesDirect.com WHOIS database report submitted by Complainant, the registrant of the disputed domain name as of January 24, 2007, was Judith Covert. Respondent indicates Judith Covert is the mother of Ronald Buck.

An owner/officer of Complainant, Ronald Johnson, in October 2001, registered a number of domain names, including the disputed domain name, on behalf of Peter Covert, the husband of Judith Covert. Mr. Johnson acted on behalf of Mr. Covert as the administrator of a website addressed by the disputed domain name offering rental properties in and around North Carolina, United States of America. In addition to property owned by Mr. Covert (and others), individual owners of Complainant listed rental properties on the aforementioned website. Complainant maintained a hyperlink to its own “www.tailofthedragon.com” website on the “www.dragonstail.com” website.

“Tail of the Dragon” appears to be the common name used for a length of roadway (US 129) in and around Deal’s Gap (an unincorporated community) at the Tennessee/North Carolina border which is popular among motorcycle enthusiasts because of a substantial number of curves. Entering “Tail of the Dragon” into a common Internet search engine generates a large number of references to this geographic location. (Response)

Respondent’s counsel advises that upon the death of Peter Covert, his spouse, Judith Covert, was beneficiary of his estate and took title to all of his assets, including his interest in the disputed domain name. (Response) There is nothing in the record of this proceeding to suggest otherwise.

In an e-mail exchange between Ron Johnson (owner/officer of Complainant) and Peter Covert (predecessor registrant of the disputed domain name), dated June 12, 2005, the following relevant statements appear:

Johnson to Covert:

“Here is a listing of the domain names you own.

[25 domain names listed]

And of course this one that I hope you would let me buy if you decide to sell:

DRAGONSTAIL.COM 10/23/2001 10/23/2008”

Covert to Johnson:

“Thanks for being so prompt in getting the domain names to me. Yes – have no fear – Dragonstail.com will be yours if I ever stop using it. Your porice [sic] is ‘$1.00 and other considcerations [sic]’.”

Subsequent to the death of her husband, Mrs. Covert requested that Complainant, the administrator of the “www.dragonstail.com” website, remove her properties from listing for rental. There is some dispute as to whether Complainant then, without authorization, transferred the disputed domain name to Complainant. Whether or not there was an intervening transfer, the parties agree that Mrs. Covert subsequently transferred the disputed domain name from her deceased husband’s name to her own name.

Complainant through its counsel dispatched several threatening demands to Mrs. Covert, asserting that she was engaged in a violation of the federal Anti-cybersquatting Consumer Protection Act, and potentially liable for payment of $100,000 in statutory damages plus trademark owner’s attorney’s fees. Complainant’s counsel added “your personal assets are therefore exposed to the substantial monetary liabilities discussed above”. (Complaint, Annex 12, Letter from Monteith to J. Covert, Jan. 24, 2007) Complainant demanded immediate transfer of the disputed domain name.

Following a brief reply pending further study from Mrs. Covert’s counsel, Complainant’s counsel followed with a letter to that counsel indicating that Mrs. Covert had “misappropriated the <dragonstail.com> domain name registration by unilaterally changing the registrant of the domain name from Peter Covert to Judith Covert. Of course, above and beyond the factual background is the unavoidable reality that Mrs. Cover is unlawfully holding hostage a domain name that is confusingly similar to a federally registered trademark owned by my client”. (Complaint, Annex 12, Letter from Monteith to Jeffries, dated Feb. 2, 2007)

Mrs. Covert’s counsel subsequently advised Complainant that Complainant clearly did not own the registration of the disputed domain name, which was lawfully transferred to Mrs. Covert in consequence of execution of her husband’s estate. Mrs. Covert’s counsel observed that Complainant had registered the disputed domain name for Peter Covert and acknowledged his ownership, but was now claiming that this domain name infringed Complainant’s trademark rights that pre-dated that registration. Mrs. Covert’s counsel also noted that there was no basis for Respondent to unilaterally assert control of the disputed domain name, whether on the basis of contract or otherwise. (Complaint, Annex 12, Letter from Jeffries to Monteith, dated March 1, 2007)

While the aforementioned exchange of correspondence between counsel was proceeding, Mrs. Covert transferred the disputed domain name to her son, Ronald Buck. Respondent’s counsel indicates this was done “so that Mrs. Covert would be spared the bullying by Complainant and Complaint’s [sic] counsel”. (Response)

Respondent indicates that Mr. Buck and Mrs. Covert each own rental properties in the area around Tail of the Dragon in North Carolina, and intends to use the disputed domain name to rent those properties in the future.

The Registration Agreement in effect between Respondent and NamesDirect.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of rights in the service mark TAIL OF THE DRAGON based on use in commerce and as evidenced by registration at the USPTO. Complainant argues that the disputed domain name <dragonstail.com> is confusingly similar to that service mark.

Complainant also contends that it is owner of common law service mark rights in THE DRAGON’S TAIL which it permitted Peter Covert to use in connection with the website identified by the domain name registered in the name of Peter Covert. By virtue of use of Complainant’s service mark on that website, Complainant has obtained common law service mark rights in THE DRAGON’S TAIL, which is confusingly similar to the disputed domain name, and which is also confusingly similar to its TAIL OF THE DRAGON service mark.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant argues that Ronald Buck has not used the disputed domain name for any legitimate purpose, but instead has used the name to direct Internet traffic to the homepage of his corporation, MedRx, Inc., of which Mrs. Covert serves as a director.

Complainant argues that, even if Mrs. Covert’s interests could be imputed to Respondent, that she does not have rights or interests in the disputed domain name, stating:

“Specifically, when Ms. Covert informed Mr. Johnson, an individual owner of Complainant, that she did not want the rental properties previously advertised by the late Mr. Covert to continue being advertised on the site, she relinquished any rights or legitimate interest she may have had in the domain name. Therefore, Ms. Covert had no rights or legitimate interests in respect of the dragonstail.com domain name to transfer to Respondent Buck and Respondent Buck has no such rights or interests.”

Complainant argues that Respondent registered and is using the disputed domain name in bad faith. It contends that Ronald Buck’s acquisition of the disputed domain name is the legal equivalent of a new registration. It contends that by directing the disputed domain name to the website of his MedRx, Inc. business, Respondent is using the name to intentionally attract Internet users to his website by creating a likelihood of confusion as to Complainant’s sponsorship of or affiliation with that website. Complainant argues that because the disputed domain name has no apparent relevance to Respondent’s business, it could not conceivably be used in good faith in connection with that business. It further argues that since Mrs. Covert transferred the disputed domain name after learning of this dispute, her actions may be considered bad faith use by Respondent. Complainant argues that Respondent’s failure to provide information to Complainant constituted a conspiracy to prevent Complainant from learning of the relationship between Mrs. Covert, Mr. Buck and MedRx, all constituting bad faith.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

Respondent argues that Complainant has provided no evidence of use of THE DRAGON’S TRAIL as a service mark other than connection with the website on which Respondent’s predecessor allowed it to list properties. Respondent alleges that Complainant has failed to put forward a theory under which it can have rights to THE DRAGON’S TAIL mark exclusive of Respondent’s, since it was using Respondent’s website if and when it used the term.

Respondent states that TAIL OF THE DRAGON and THE DRAGON’S TAIL are each descriptive terms of a geographical location in North Carolina.

Respondent claims that Complainant was employed by Mr. Covert to register domain names and maintain his website, and that Complainant’s individual owners were permitted to list their properties as a courtesy, and not due to any ownership interest in Respondent’s website. Respondent asserts that Complainant registered the disputed domain name as a service contractor for Mr. Covert, and that correspondence makes clear that the disputed domain name and website associated with it were owned by Mr. Covert.

Respondent asserts that TAIL OF THE DRAGON is not confusingly similar to the disputed domain name, <dragonstail.com>.

Respondent states that Complainant has failed to explain why, if it believed that the disputed domain name infringed on its trademark rights, it agreed to register the name for and indicate its ownership by Mr. Covert.

Respondent asserts that Judith Covert became the owner of the registration of the disputed domain name upon the death of her husband. Respondent contends that she decided to stop renting properties temporarily as she recovered from the loss of her husband. Respondent contends that Complainant without authorization transferred the disputed domain name into its own name, but that this was reversed upon action by Mrs. Covert. Respondent asserts that Judith Covert thereupon transferred the disputed domain name into her own name. Respondent asserts that there is no basis for Complainant to allege that Mrs. Covert needed its authorization to undertake such transfer.

Respondent asserts that the e-mail exchange between Peter Covert and Ron Johnson did not create a binding contract that would carry over to Mr. Covert’s estate, but that even if it did, Mrs. Covert intended and intends to use the disputed domain name in the future. Thus the condition of ceasing to use the disputed domain name has not been met. Moreover, the e-mail exchange includes an open price term, i.e., other consideration, reflecting only an agreement to agree in the future if certain preconditions were met (i.e., abandonment of the domain name).

Respondent states that the transfer of the disputed domain name by Mrs. Covert to Ronald Buck was not in bad faith because (a) Ronald Buck is her son, and (b) it was undertaken to avoid further bullying by Complainant and Complainant’s counsel. Respondent cites provisions of Complainant’s correspondence which it considers aggressively and inappropriately threatening.

Respondent requests the Panel to reject Complainant’s request to direct the Registrar to transfer the disputed domain.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Complainant and Respondent have each filed submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has demonstrated service mark rights in the term TAIL OF THE DRAGON based on use in commerce and as evidenced by registration at the USPTO (see Factual Background above). Respondent has noted that the service mark is identical to a commonly used geographic name for a place in and around North Carolina, USA. This might be understood as a claim that Complainant’s mark is invalid as geographically descriptive when used in connection with travel services, but the legal argument is not significantly advanced by Respondent. The Panel is prepared to assume that Complainant has rights in the service mark TAIL OF THE DRAGON.

Complainant has argued that it has common law service mark rights in the term THE DRAGON’S TAIL. Complainant’s sole alleged use of the mark is while acting as the compensated administrator of a website identified by the disputed domain name which was registered and owned by Respondent and its predecessors in interest. Complainant has alleged no substantial basis for ownership of the disputed domain name, or the commercial website associated with it. While there may be question, in any case, whether the term THE DRAGON’S TAIL is inherently distinctive, or whether a common law claimant must demonstrate secondary meaning,¹ because Complainant has demonstrated no ownership interest in the alleged common law service mark, the Panel finds that Complainant has failed to establish rights in THE DRAGON’S TAIL.

Complainant argues that the disputed domain name <dragonstail.com> is confusingly similar to its TAIL OF THE DRAGON service mark. Because Complainant’s service mark is also the name of a geographic location where it is based, Complainant’s rights in the mark are not strong. That is, third parties can fairly use the term TAIL OF THE DRAGON to refer to the place, and the term is widely used by third parties in that way, including on the Internet.

The disputed domain name uses two of the terms of the weak service mark, in reverse order. The visual impression of the service mark and domain name are substantially different. When spoken, the terms sound substantially different. On the other hand, the meaning of the terms is similar. TAIL OF THE DRAGON is a nominative term, combining a noun with a possessive phrase. “Dragon’s Tail” is a nominative term that places the possessive phrase in front of the same noun.

The question whether TAIL OF THE DRAGON and <dragonstail.com> are confusingly similar within the meaning of the Policy is a close factual question. If TAIL OF THE DRAGON were a well known or strong mark, the Panel might be inclined to find confusing similarity with <dragonstail.com>. TAIL OF THE DRAGON is, however, a weak mark in the hands of Complainant, and the term “Dragon’s Tail” is descriptive of part of a mythical creature that is in common public usage. On this basis, the Panel rejects Complainant’s claim of confusing similarity between the disputed domain name and the TAIL OF THE DRAGON mark.

Complainant’s action fails on other grounds as well and, because the question of confusing similarity is a close one, the Panel will address those other grounds.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

The individual named Respondent in this proceeding is Ronald Buck. He is the son of Judith Covert, who acquired the disputed domain name as beneficiary of her late husband, Peter Covert’s, estate. Peter Covert’s real estate rental business had been known by the disputed domain name since 2001. Beyond that, Peter Covert used the disputed domain name for a bona fide offering of services long before notice of any dispute with Complainant. The undisputed fact is that Mrs. Covert acquired the registration of the disputed domain name through a transfer of ownership interest as a consequence of the death of her husband. Mrs. Covert was thereupon entitled to transfer registration of the disputed domain name from her deceased husband’s name into her own. She did not require any authorization or consent from Complainant.

The Panel accepts that the transfer of the disputed domain name from Judith Covert to Ronald Buck took place for the reason stated by Respondent’s counsel, that is, to attempt to insulate Mrs. Covert from the aggressive threats directed at her by Complainant and its counsel. While there might be other circumstances in which a transfer following notice of a dispute, even among family members, will fail to carry over rights or legitimate interests previously established in a disputed domain name, those circumstances are not present here. The Panel need not speculate about what such circumstances might be. The Panel in the circumstances of this proceeding determines that Respondent holds the rights and legitimate interests established by Peter Covert in the dispute domain name.

Complainant appears to theorize that the death of Mr. Covert, combined with Mrs. Covert’s decision to suspend the listing of her property on the website identified by the disputed domain name, somehow resulted in a self-executing transfer of ownership of the disputed domain name to Complainant. After that, presumably, everything Mrs. Covert (and Respondent) did was unlawfully interfering with Complainant’s rights.

Complainant does not advance a coherent explanation – or for that matter any explanation – concerning how this self-executing transfer of ownership was supposed to have occurred. Presumably, the fact that Peter Covert had once indicated that if he ceased using the disputed domain name he would be willing to sell it for $1.00 and other consideration to Complainant was enough to trigger this transfer.

Leaving aside the open price term, leaving aside the question whether Peter Covert would be bound by a statement made without evident consideration, and leaving aside whether there might have been changes in Peter Covert’s position since his initial email was written, there remains the fact that Mrs. Covert became the owner of Peter Covert’s assets, including the disputed domain name, upon his death. There is no evidence that Mrs. Covert indicated to Complainant that she intended to cease using the disputed domain name. The only evidence is that she told one of Complainant’s principals that she did not then want her property listed on her own website.

The position adopted by Complainant and its counsel in this proceeding are to the Panel inexplicable.

Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Peter Covert registered and used the disputed domain name in evident good faith. His wife took the name as beneficiary of his estate, and she transferred it to her son under unjustified threat from Complainant’s counsel. There is no bad faith imputable to Respondent.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Frederick M. Abbott
Sole Panelist

Dated: June 18, 2007

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¹ See, e.g., Two Pesos v. Taco Cabana, 505 U.S. 763 (1992)