Columbia Sportswear Company v. Mahlon Keeler
[Indexed as: Columbia Sportswear v. Keeler]
[Indexed as: columbia-sportswear-company et al]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0206
Commenced: 31 March 2000
Judgement: 16 May 2000
Presiding Panelist: M. David Perkins
Domain name - Domain name dispute resolution policy - U.S. Service mark - Worldwide use - Famous mark - Identical - Extensive Advertising - Use of hyphens - Inferred bad faith registration - Bad faith use - Uncontested - Unknown activities of respondent - Legitimate interest
Complainant was registered owner of U.S. trademark COLUMBIA SPORTSWEAR COMPANY for 42 years. Respondent registered the domain names columbia-sportswear-company. com and columbiasportswearcompany.com. Respondent has made no attempt to dispute the complaint.
Held, Name Transferred to Complainant.
The domain names in dispute are identical to the trademark "Columbia Sportswear Company", which Complainant has used and advertised extensively for 42 years. Bad faith registration of these domain names can be inferred by Respondent's use of hyphens in an attempt to register an otherwise identical name to that of Complainant. Further, offering to sell the domain names to Complainant for $750.000 constitutes bad faith use. By failing to respond to these allegations, Respondent has failed to show any legitimate interest in the domain names in dispute.
Policies referred to
Uniform Domain name Dispute Resolution Policy, adopted August 26, 1999
Perkins, Panelist: -
1. The Parties
The Complainant is Columbia Sportswear Company of 6600 North Baltimore Street, Portland, OR. 97203, United States of America.
The Respondent is Mr. Mahlon Keeler of 3 Demi Lune, Vals-des-Monts, Quebec J8N 5B4, Canada.
2. The Domain Names and Registrar
The domain names at issue are:
and the Registrar is CORE Internet Council of Registrars [CORE]
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on March 24, 2000, [electronic version] and March 27, 2000, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of commencement of this administrative proceeding is March 31, 2000.
On March 27, 2000, the Center transmitted via email to CORE a request for registrar verification in connection with this case and on March 30, 2000, CORE transmitted via email to the Center CORE's verification response confirming that registrant is Mr. Mahlon Keeler the contact for administrative purposes is also Mr. Mahlon Keeler and the technical contact is firstname.lastname@example.org
Having verified that the Complainant satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 31, 2000, to email@example.com the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 19, 2000. On the same day the Center transmitted by mail copies of the forgoing documents to:
Mr. Mahlon Keeler
3 Demi Lune
Quebec J8N 5B4
Mr. Mahlon Keeler
Quebec J8N 5B4
firstname.lastname@example.org and email@example.com
No response was received by the Respondent by the due date of April 19, 2000. On April 20, 2000, Notice of Respondent Default was sent to the Complainant and the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondent to the Notification of Respondent Default was received.
Having received on May 3, 2000, Mr. David Perkins Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was May 17, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2a of the Rules "... to employ reasonably available means calculated to achieve actual notice to the Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.
4. Factual Background
4.1 The Complainant
The Complainant, Columbia Sportswear Company, was founded in 1938 and is the manufacturer of a well known outwear brand, including ski-wear, which is sold in the United States and worldwide. The Complainant manufactures and sells a wide variety of outwear, sportswear, rugged footwear and accessories. Those products are distributed through an estimated 10,000 plus retailers in some 30 countries. The Complainant has used the COLUMBIA SPORTSWEAR COMPANY mark since at least 1958.
4.2 The Respondent
The Respondent is Mr. Mahlon Keeler of Quebec, Canada. Nothing is known about the business or activities of the Respondent.
4.3 The Complainant's Trade Mark
The Complainant has used the trade mark COLUMBIA SPORTSWEAR COMPANY since at least 1958. The Complainant owns the following trade mark registrations:
US1,975,556 [Classes 1, 2, 3, 22, 39 & 41] COLUMBIA SPORTSWEAR COMPANY filed March 30, 1992 and registered May 28, 1996 in respect of:
"mens', womens' and childrens' jackets, parkas, wind resistant jackets, pants, rain suits, ski bibs, jacket liners, gaiters, scarves and bootees; mens' and womens' turtlenecks, sweat shirts, sweat pants, ski suits, fishing vests and shirts, and ski gloves, hats and visors: ski bags and all purpose sports bags".
The words sportswear company are disclaimed except were used as part of the mark as a whole.
US2,117,710 [Classes 1, 2, 3, 22, 39 & 41] COLUMBIA SPORTSWEAR COMPANY & device filed September 26, 1996 and registered December 2, 1997. The goods covered by the registration include those identified above in respect US1,975,556 with the following additional goods:
"mens' and womens' belts; and womens' jumpers and skirts".
Peru 17,548 [Class 25] COLUMBIA SPORTSWEAR COMPANY & device filed October 7, 1998 in respect of mens' clothing.
Norway 174,639 [Classes 18 & 25] COLUMBIA SPORTSWEAR COMPANY filed December 14, 1994 and registered June 27, 1996.
Japan 3,354,283 [Class 18] COLUMBIA SPORTSWEAR COMPANY & device filed November 11, 1995 and registered October 24, 1997 in respect of sports bags.
The Complainant states that it has promoted and continues to promote its COLUMBIA SPORTSWEAR COMPANY mark through extensive advertising.
4.4 In the absence of a Response, there is no challenge to the Complainant's assertions as to ownership, use and reputation of the COLUMBIA SPORTSWEAR COMPANY marks.
5. Parties' Contentions
The Complainant contends that the Respondent has registered as domain names marks which are identical to the Complainant's COLUMBIA SPORTSWEAR COMPANY mark, that the Respondent has no rights or legitimate interests in respect of those domain names and that the Respondent has registered and is using those domain names in bad faith.
No response or any communication relating to the Complaint has been received from the Respondent.
6. Discussions and Findings
6.1 The Policy para. 4a provides that the Complainant must prove each of the following:
· that the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
· the Respondent has no rights to and legitimate interests in respect of the domain name; and
· the domain name has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar
The use of hyphens "columbia-sports-wear-company" in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY. The two are in all material respects identical.
The Panel, therefore, finds that both of the domain names in issue are identical to the COLUMBIA SPORTSWEAR COMPANY trade mark in which the Complainant has rights. The Complainant succeeds in establishing the requirement of para 4a(i) of the Policy.
6.3 Rights or Legitimate Interests
Para 4c of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights and legitimate interests for the purposes of para. 4a(ii). Those circumstances are that:
(i) before any notice to the Respondent of the dispute, the Respondent's use of or demonstrable preparation 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain names in issue without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
6.4 In the absence of a Response and in the context of the Respondent's email of February 13, 2000, (referred to below), there is no evidence that the Respondent is able to demonstrate rights to and a legitimate interest in the domain names in issue. Further, the Complainant has not licensed or otherwise permitted the Respondent to use its COLUMBIA SPORTSWEAR COMPANY trade mark or to apply for or use any domain names incorporating that mark.
6.5 In the circumstances, the Panel can find no evidence that would tend to establish that the Respondent has rights to or legitimate interests in respect of the domain names in issue and the Complainant succeeds in establishing the requirement is para. 4a(ii) of the Policy.
6.6 Bad Faith
Para. 4a(iii) of the Policy requires that the Respondent's domain names must both have been registered and be being used in bad faith. Both requirements must be met.
Para. 4b of the Policy sets out circumstances which, if found by the Panel to be present "... shall be evidence of the registration and use of the domain name in bad faith.". The Policy goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
6.7 Registered in Bad Faith
The Respondent registered the domain names in issue on January 3 and 4, 2000, by which time the Complainant had been trading under and by reference to the COLUMBIA SPORTSWEAR COMPANY mark for some 42 years. Bad faith on the part of the Respondent is to be inferred from using hyphens as a device to obtain a domain name, which is in all material respects identical to the Complainant COLUMBIA SPORTSWEAR COMPANY trade marks. In the absence of a Response and having regard to the Respondent's email of February 13, 2000, (see below), the Panel finds that the Complainant succeeds in establishing the first part of the requirement of para. 4a(iii) of the Policy.
6.8 Use in Bad Faith
The Complaint has exhibited an email of February 13, 2000, addressed to it in the following terms:
Its unfortunate that your company has not registered
we however have.
If you would like to advantage of purchasing the .com addresses from us please contact us via email. Our current asking price is $750,000 u.s.d.
The foregoing is evidence of the registration and use of the domain names in issue in bad faith illustrated in para. 4b(i) - (iii) of the Policy. The Complainant, therefore, succeeds in establishing the second part of the requirement of para. 4a(iii) of the Policy.
For the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of para. 4 of the Policy. Accordingly, the Panel requires the registration of the domain names, columbiasportswear company.com and columbia-sports-wear-company.com be transferred to the Complainant.
May 16, 2000
Domain Name Transferred