3rd May 2010

NATIONAL ARBITRATION FORUM

 DECISION

CNRV, Inc. v. Vertical Axis Inc.

Claim Number: FA0912001300901

 

PARTIES

Complainant is CNRV, Inc. (“Complainant”), represented by John W. Dozier, of Dozier Internet Law, P.C., Virginia, USA. Respondent isVertical Axis Inc. (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <adventurerv.com>, registered with Nameview, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Alan L. Limbury, David H. Bernstein and The Hon. Neil Anthony Brown QC as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the Forum’s new Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.

On March 2, 2010, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <adventurerv.com> domain name (“the Domain Name”) is registered with Nameview, Inc. and that the Respondent is the current registrant. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@adventurerv.com by e-mail. Also on March 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on March 26, 2010. Respondent chose to opt-in to the electronic process with its submission and submitted its Response in electronic copy only.

Complainant’s Additional Submission was received on March 31, 2010 and was deemed to be in compliance with Supplemental Rule 7.

Respondent’s Additional Submission was received on April 5, 2010 and was deemed to be in compliance with Supplemental Rule 7.

On April 8, 2010, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Alan L. Limbury, David H. Bernstein and The Hon. Neil Anthony Brown QC as Panelists.

On April 14, 2010 the Panel, by procedural order, requested Complainant to provide a clearly legible set of the exhibits to the Complaint by April 19, 2010 and extended the time for its decision until further order.

On April 19, 2010, Complainant complied with the Procedural Order and the time for the Panel’s decision was extended to May 3, 2010.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

  1. Complainant

Complainant says as follows:

It was incorporated in Tennessee in 2004. It sells Recreational Vehicle parts, accessories and supplies under the name AdventureRV, in which it has common law trademark rights. It has operated a website at <www.adventurerv.net> since mid-2004. Prior to Complainant’s incorporation, the business was carried on under the same name for about 15 years by the Complainant’s predecessor in business.

Respondent registered the Domain Name on or about December 14, 2006. It resolves to a website with more than 20 links to competing sellers of Recreational Vehicles and parts.

The Domain Name is identical or confusingly similar to Complainant’s trademark and Respondent has no rights or legitimate interest in the Domain Name, which was registered and is being used in bad faith.

As to legitimacy, the Domain Name does not reflect any name by which Respondent is commonly known or in which Respondent has any rights. At no time did Complainant authorize or consent to Respondent’s use of the trademark or the registration of the Domain Name. Respondent’s use of the Domain Name is not legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Microsoft Corp. v. Woo Seungchul, FA 601455 (Nat. Arb. Forum Jan. 20, 2006). It is purely a bad faith tactic to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.

As to bad faith, the Domain Name directs online users to sellers in direct competition with Complainant. Respondent is receiving commercial gain from this bad faith use. See Old Dublin Road, Inc. v. Peterboro Basket FA 765695 (Nat. Arb. Forum Sept. 14, 2006). The registration of the Domain Name makes it clear that the registration and use of the Domain Name was done intentionally to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark.

  1. Respondent

Respondent says as follows:

The registration of the Domain Name was entirely in good faith. Respondent registered the Disputed Domain in December 2006 after it had expired and been deleted and became available to be registered again. Respondent correctly believed “adventure RV” to be a descriptive term that was not subject to exclusive trademark rights. An “RV” is a recreational vehicle. Adventure means, among other things, an exciting experience, and it is often associated with exciting travel experiences. For this reason adventure is often associated with “RV,” describing the exciting aspect of travelling in a recreational vehicle. Consumers do not view Complainant as the exclusive, or nearly exclusive, source associated with Adventure RV. A Google search for “adventure RV,” yielded 18,400 third party results, including at least 10 other third party companies operating under the name “Adventure RV,” with no connection to Complainant.

Respondent had no knowledge of Complainant or its [claimed] trademark when it registered the Domain Name. Because Complainant does not have a registered mark, Respondent cannot be found to have had constructive notice of Complainant’s alleged mark when it registered the Domain Name. Accordingly, in order to prove bad faith registration, Complainant must prove that Respondent had actual notice of Complainant’s mark, which Respondent adamantly denies.

Respondent’s legitimate interest is well-established both because the Domain Name is wholly descriptive and was registered based solely on descriptiveness with no intent of targeting Complainant’s alleged mark and because Respondent has used the Domain Name in connection with the bona fide offering of goods and services by displaying Yahoo auto-generated pay-per-click (PPC) advertisements related to recreational vehicles.

Further, Respondent registered over a hundred other similar descriptive domain names, including 75 domain names incorporating “adventure,” such as roadtripadventures.com; adventuremaps.com; and adventurerentals.com; 63 domain names incorporating “RV” or “recreational vehicle,” such as recreationalvehicles.com, bigrv.com, discountrvrental.com and rvparksdirectory.com.

Other panels have expressly recognized the bona fide nature of this Respondent’s pay-per-click use of domain names. The Panel should reach the same conclusion here.

Considering Complainant’s lack of any registered trademark rights; the numerous third party companies operating under the name “Adventure RV;” and the numerous other descriptive “RV” and “adventure” domain names registered to Respondent, there is no basis to infer that Respondent registered the Domain Name to target Complainant, and overwhelming evidence to the contrary.

Complainant has failed to establish either that Respondent lacks a legitimate interest in the Domain Name or that it registered it in bad faith. Complainant’s delay of over 3 years in taking action raises the inference that Complainant did not truly believe it had a meritorious case against Respondent. Accordingly, the Complaint should be denied.

  1. Additional Submissions

Complainant says “AdventureRV” has become a distinctive identifier associated with Complainant and its goods and services in the geographic region in which Complainant is located, namely the Eastern part of Tennessee near Gatlinburg and the Smoky Mountains National Park. Evidence of trademark use and of expenditure related to the mark are provided in an accompanying affidavit.

Complainant says Respondent’s bad faith is shown by its having used a privacy service to conceal its identity as a serial cybersquatter, and recklessness or a conscious effort to avoid acquiring knowledge of the trademark when it registered the Domain Name, having regard to the extensive number of other uses of this name by other RV dealers in other parts of the country.

Respondent says Complainant’s mark, if recognized, would be very weak based on the substantial third party use of the term, including ten other companies associated with this particular name. Cf. Nexmedia Pte Ltd. v. Heavy Lifting LLC, et al., D2010-0059 (WIPO Mar. 9, 2010).

Here, because of the substantial third party use of the descriptive term “adventureRV” Complainant cannot prove, without direct evidence, that Respondent was “targeting Complainant.” See Streetprices.com, Inc. v. Nett Corp., FA 280020 (Nat. Arb. Forum Nov. 10, 2009). As the Panel explained there, a complainant must present evidence that the “Respondent knew of Complainant’s activities that gave secondary meaning to the trademark…” No such evidence has been presented here. Accordingly, even if the Panel finds that Complainant has established “secondary meaning” to Adventure RV on a limited scale, the substantial third party use of the term is fatal to Complainant on the bad faith and legitimacy prongs of the Policy.

 

FINDINGS

Complainant has failed to establish all the elements entitling it to relief.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 12 of the Rules does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the “sole discretion” as to acceptance and consideration of additional submissions. The overriding principle of Rule 12 enables the Panel both to disregard unsolicited submissions received within the time limits contemplated by the Forum’s             Supplemental Rule 7 and to take into account unsolicited submissions received  outside those time limits.  See Darice, Inc. v. Tex. Int’l Prop. Assocs. – NA NA, FA1082320 (Nat. Arb. Forum Nov. 16, 2007).

On this occasion, because both Parties have submitted Additional Submissions, the Panel has had regard to both parties’ Additional Submissions. 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3)   the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy does not require Complainant’s trademark rights to have arisen before the Domain Name was registered.  See Valve Corp. v. ValveNET, Inc., D2005‑0038 (WIPO Mar. 9, 2005) and the cases there cited.

The word “adventure” is a common dictionary word. On the material before the Panel, including Complainant’s exhibits, it is clear that the letters “RV” are commonly understood, amongst suppliers and customers in the field in which Complainant and its competitors operate, as an abbreviation of “Recreational Vehicle”. Accordingly, the term “AdventureRV” may be understood as a descriptive expression for the kind of vehicle that is used for recreational adventure.

This does not preclude its registration as a trademark, however nor the acquisition, through use, of secondary meaning, giving rise to common law trademark rights, including in a narrow geographic territory.

Based on the material submitted by Complainant regarding its use and promotion of the mark “AdventureRV” and on some of the customer testimonials exhibited to the Complaint (such as those from “Jeffrey M” and “joe m”) which used that mark in a trademark sense to refer to Complainant as the source of recreational vehicles and parts, a majority of the Panel is prepared to accept that, by the time the Complaint was filed with the Forum, Complainant had established secondary meaning in the mark “AdventureRV” in the Eastern part of Tennessee and accordingly has common law rights in that mark in that geographic area. 

The Panel notes Respondent’s argument that there appear to be various companies in the RV market that use the name “Adventure RV.” These various names may co-exist in the United States if they are each used in discrete geographic areas, as concurrent uses. Indeed, the same majority of the Panel also notes that “US ADVENTURE RV” has been registered by a third party as a trademark in the United States (interestingly, without a disclaimer of the word “adventure” and without the requirement of showing secondary meaning under Section 2(f) of the Lanham Act). See U.S. Registration2,979,890. The Panel cannot, on this record, determine the various rights that may be owned by different parties, but on the limited record presented, a majority of the Panel is prepared to find that Complainant has established that it has trademark rights in the limited geographic area of its use.

The Domain Name is identical to Complainant’s “AdventureRV” mark, the gTLD “.com” being inconsequential. Accordingly, a majority of the Panel concludes that Complainant has established this element of its case.

Panelist Brown would find that Complainant does not have common law trademark rights to the term ADVENTURERV. The onus is on the Complainant to establish this element and it must be done on the balance of probabilities. Applying that test, Panelist Brown is unable to conclude on the balance of probabilities that Complainant has established sufficient secondary meaning with respect to the alleged trade mark to associate the expression with the Complainant.

That expression of the conclusion is similar to the expression used in Family & Children’s Ctr. Inc. v. James M. Van Johns, D2004-0497 (WIPO Aug. 30, 2004) as that case is analogous to the present one. In the former case, the Complainant alleged that the acronym FCC was “synonymous with Complainant’s social services in Northern Indiana and adjoining territories”. It will be seen that the claim was limited to part of a State as is the claim of the Complainant in the present proceeding. The Panel decided on the evidence (although the Complaint was undefended) that the claim had not been made out because: “The service mark FCC comprised of letters is an inherently weak mark. The burden of proof of acquired distinctiveness or proof of secondary meaning is higher with respect to inherently weak service marks than with respect to created or novel service marks.” The evidence relied on by the complainant was not entirely dissimilar to that in the present case, although clearly each case must be judged solely on the evidence in those proceedings. The conclusion reached by the panel was that it was not satisfied on the evidence and that: “Even if the Panel were to find that the Complainant has a common law trademark or service mark in FCC, such mark would have to acquire limited secondary meaning relating to social services in Northern Indiana.”

In the present case, the mark that is claimed is inherently weak, as it is entirely descriptive, has the meaning attributed to it in the popular dictionary  www.urbandictionary.com that is contended for by Respondent and is clearly used by numerous other firms operating in the same field and in common parlance in the same descriptive sense, as is seen from the list of firms and their services set out in Complainant’s Exhibit H, a list of Complainant’s competitors allegedly promoted by Respondent. There is, also, nothing to suggest that the expression has ever been claimed by Complainant as a trademark or applied to be registered by it as such, although the registration of trademarks is apparently available in the State of Tennessee for a fee of $20 (see www. http://state.tn.us/sos/forms/ss-4264.pdf). Moreover, the area claimed by the Complainant, although only in its supplemental filing, is the narrow region of “the Eastern part of Tennessee near Gatlinburg and the Great Smokey Mountains National Park.” All of these features, although not sought in any way to diminish the standing of the Complainant’s business and its obvious success, tend to suggest that the trademark claimed is inherently weak.

Given that there must be evidence of real substance to counterbalance the inherently weak mark at issue and in effect to appropriate a commonly used expression, Panelist Brown is not satisfied on the balance of probabilities that that test has been met in the present case.

The question, of course, arises as to how much evidence is enough to constitute evidence of substance and although many tests have been offered in judicial and UDRP decisions, Panelist Brown has found helpful the formulation in Charcoal Steak House, Inc. v. Staley, 263 N.C. 199,139 S.E.2d 185 (1964), a decision of the Supreme Court of North Carolina, cited in Lindsay, International Domain Law, p.196, where the Court said:

“When a particular business has used words publici juris for so long or so exclusively or when it has promoted its product to such an extent that the words do not register their literal meaning on the public mind but are instantly associated with one enterprise, such words have attained a secondary meaning. That is to say, a secondary meaning exists when in addition to their literal, or dictionary meaning, words connote to the public a product from a unique source.” (emphasis added)

It is true that Complainant has adduced some evidence tending to that conclusion, such as its advertising budget and testimonials, but the totality of the evidence does not establish that the expression is associated with Complainant or any other “unique source” either in the very limited area of Tennessee relied on or elsewhere, rather than connoting the dictionary or generally accepted meaning of the words.

Accordingly, Panelist Brown would find that Complainant has not established the first element required to be proved.

Rights or Legitimate Interests

Once a complainant establishes a prima facie case against a respondent under this heading, the burden shifts to the respondent to provide evidence of its right or legitimate interests under ¶ 4(c) of the Policy:  Cassava Enters. Ltd., v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).

Panelists Limbury and Brown would find that Complainant has failed to establish a prima facie case of absence of rights or legitimate interest in the Domain Name on the part of Respondent because Complainant has not shown that, through use, it had acquired (in Eastern Tennessee or elsewhere) common law rights in the descriptive mark “AdventureRV” in the relatively short period of around 2 years between the incorporation of Complainant in 2004 and Respondent’s registration of the Domain Name in 2006. There is nothing before the Panel from which it may conclude that Complainant’s predecessor in business had acquired common law trademark rights which it had effectively passed on to Complainant upon the incorporation of Complainant in 2004. Hence, since the words “adventure” and “RV” are descriptive terms which anyone may legitimately register on a ‘first-come, first-served’ basis (seee.g.Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000), it does not avail Complainant that Respondent has never been known by the name “AdventureRV”, does not conduct business under that name and was not authorized by Complainant to register a domain name which incorporates that name.

If, contrary to this view, Complainant has established a prima facie case, Panelists Limbury and Brown would agree that Respondent has demonstrated a legitimate interest for the reasons give by Panelist Bernstein.

Panelist Bernstein would find that Complainant has established a prima facie case but that Respondent has demonstrated a legitimate interest in the Domain Name on the basis that, although numerous panels have noted the lack of societal benefit offered by pay-per-click (“PPC”) landing pages of the type offered by Respondent, see, e.g., mVisible Techs., Inc. v. Navigation Catalyst Systs., Inc., D2007-1141 (WIPO Nov. 30, 2007), panels also have recognized that domain names that are descriptive and are used solely in connection with PPC advertising keyed to the descriptive meaning of the domain name can constitute a legitimate interest for purposes of the policy. Cf. Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008). Here, regardless of whether Complainant’s mark is descriptive or inherently distinctive for purposes of the Lanham Act, “adventure” and “RV” are dictionary words with a common meaning, and Respondent’s PPC landing page does appear to have advertising that is related to that dictionary meaning. Accordingly, use of the Domain Name in connection with this PPC landing page gives rise to a legitimate interest under the Policy. See Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004) (legitimate interest “[if] the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); see also Nat’l Trust for Historic Pres. v. Preston, D2005-0424 (WIPO Aug. 10, 2005).

For the foregoing reasons Complainant has failed to establish absence of rights or legitimate interest in the Domain Name on the part of Respondent.

Complainant has failed to establish this element of its case.

Registration and Use in Bad Faith

Although the circumstances taken to constitute evidence of both bad faith registration and bad faith use contained in paragraph 4(b) of the Rules are not exhaustive, they all require some proof of intent or purpose on the part of Respondent vis à vis Complainant or its mark at the time of registration of the disputed domain name.

Notwithstanding the majority of the Panel’s conclusion that Complainant appears to have common law trademark rights, it is clear that those rights are quite narrow given the very limited geographic area in which Complainant uses its mark and that its mark coexists with extensive third party use of the same name by others in the field. 

All members of the Panel are of the opinion that Complainant has failed to establish by a preponderance of the evidence that Respondent had Complainant in mind either when registering the Domain Name or prior to notice to it of the dispute. Rather, it appears to the Panel that Respondent in this case registered this Domain Name in good faith because of its value as a descriptive reference to recreational vehicles used for adventure. This finding is fatal to Complainant’s case on bad faith. See, e.g.DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (finding “Respondent’s registration cannot have been in bad faith if, at the time, it had not heard of Complainant”); Meguiar’s, Inc. v. Target Online Inc, FA 435003 (Nat. Arb. Forum Mar. 8, 2005).

Complainant has thus failed to establish this element of its case.

Reverse Domain Name Hijacking

Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name”. See also Rule 15(e). To make such a finding, the Panel must be satisfied either that Complainant knew of Respondent’s unassailable right or legitimate interest in the Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith:  Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000‑1224 (WIPO Oct. 31, 2000) and Goldline Int’l, Inc. v. Gold Line, D2000‑1151 (WIPO Jan. 4, 2001) or that the Complaint was brought in knowing disregard of the likelihood that Respondent possessed legitimate interests: Smart Design LLC v. Hughes, D2000‑0993 (WIPO Oct. 18, 2000); or that Complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith:  Zuckerman v. Peeris, DBIZ2002‑00245 (WIPO Aug. 12, 2002);  HER MAJESTY THE QUEEN v. Virtual Countries, Inc., D2002‑0754 (WIPO Nov. 27, 2002).

Applying these principles to the present case, the Panel concludes that such a finding should be made.

Panelist Brown considers that, at the time of the filing of the Complaint, the Complainant must be taken to have been aware that it was putting forward a claim for an inherently weak common law trademark confined only to one part of a State; that the name was commonly used by others elsewhere in the United States descriptively in relation to recreational vehicles; that the Domain Name was being used descriptively by Respondent for commercial gain;  that the Respondent appeared to possess legitimate interests in the Domain Name; and that it would have been difficult if not impossible to prove bad faith registration, an essential ingredient in the case. Further, Complainant’s disparaging allegations against Respondent (such as that Respondent relied on affidavits of “dubious credibility”, that it conducted “reckless, perfunctory searches and that, in effect, it concealed unfavourable evidence) were made without evidence or argument to justify them. This points to an element of harassment in bringing this administrative proceeding, an element specifically aimed at by Rule 15(e).

Panelists Bernstein and Limbury consider that Complainant must have known it could not demonstrate bad faith registration and use, given the weakness of its trademark, Respondent’s descriptive use of the Domain Name, and the inherent unlikeliness that Respondent could have had Complainant in mind when registering the Domain Name, given the narrow geographic scope of Complainant’s activities and the many concurrent users of the same name.

Accordingly the Panel declares that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding.

DECISION

Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.

Alan L. Limbury, Presiding Panelist

David H. Bernstein, Panelist                                                                                    The Hon. Neil Anthony Brown QC, Panelist

Dated: May 3, 2010

NATIONAL ARBITRATION FORUM