Bandon Dunes L.P. v. DefaultData.com

[Indexed as: Bandon Dunes v. DefaultData.com]
[Indexed as: BANDONDUNES.com]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No. D2000-0431
Commenced: 19 May 2000
Judgment: 13 July 2000

Presiding Panelist: Thomas L. Creel

Domain name – Domain name dispute resolution policy – Legitimate interest – Bad faith registration – Bad faith use – Identical – Confusingly similar – U.S. Service mark – Jurisdiction – Procedure – Survey evidence – Parody – Fair use – Satire – Cybersquatting – Bandon dunes.

Complainant was owner of United States service mark registration for the mark BANDON DUNES for use with golf courses and services. The registration was filed in June 1999 and issued in March 2000. The earliest published use of the mark was in late 1998. Respondent registered the domain name bandondunes.com in October 1999.

HELD, Name Transferred to Complainant

Despite some imprecision as to the correct name of Respondent, the Panel is satisfied that all necessary parties having possible rights in this dispute have been given notice and have appeared. The Rules provide only for a Complaint and Response. Since Complainant’s Reply was not requested, it has not been considered in this decision.

The domain name is identical or confusingly similar to Complainant’s mark. Based on evidence submitted by Complainant, it is clear that Complainant built up a name and reputation at least as early as late 1998, prior to Respondent’s registering the domain name.

Respondent claims that he did his own survey of 58 people, which purports to show that none of those asked associated the domain name with the name BANDON DUNES. This survey is not persuasive. Respondent does not supply the survey questions, methodology, or execution, and does not identify how survey participants were selected. To be relevant, the survey must be of  the relevant universe of persons whose attitudes and states of mind are at issue.

Respondent has no rights or legitimate interests in the domain name. Respondent never attempted to use the domain name in connection with offering any goods or services, nor any business of any kind. Respondent has not shown that the registration was without intent for commercial gain or to tarnish the service mark at issue.

Respondent’s claim of fair use of the domain name as a public comedy forum and parody also fails. Simply stating that the domain name was registered as a parody is not enough. There must be actual use, which was not shown. Registering a domain name and providing a simple un-posted web page does not even meet the threshold requirement for a parody. 

Respondent registered and used the domain name in bad faith. At the time the Respondent registered the domain name, Respondent was aware that Complainant had an interest in the domain name. Additionally, Respondent has registered a large number of domain names associated with marks of third parties in which it has no legitimate interest.

The Anticybersquatting Consumer Protection Act does not immunize Respondent’s activities in this arbitration. The Panel does not find that Respondent believed that he was engaging in fair use or otherwise lawful conduct. The Panel does not believe that the relevant section of the Act protects any and all subjective beliefs, no matter how unreasonable or bizzare. Finally, the Act provides a remedy in a civil action in United States courts; it does not apply to these proceedings.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Statutes referred to

Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(1)(B)(ii)

Cases referred to

Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987)
Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569, 583 (1994)
Compagnie de Saint Gobain v. Com-Union Corp., ICANN Case No. D2000-0020
Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936 (S.D.N.Y. 2000)
 

Creel, Panelist: -
 

1. The Parties

Complainant is Bandon Dunes, L.P. (hereinafter "Bandon Dunes"), a Delaware limited partnership composed of Cascade Ranch, an Oregon Corp., having a principal place
of business at 57744 Round Lake Road, Bandon, Oregon 97411, U.S.A.

According to the Registrar of the domain name at issue, Respondent is currently listed with the Registrar as Brian Wick of DefaultData.com. Respondent’s Post Office
address is P.O. Box 481002, Denver CO 80248, U.S.A. and the email address is bgw@earthnet.net.

Complainant notes that previous searches it made of the Whois records in December, 1999, showed that the registrant was previously listed as NameIsForSale.com and
Ban, Don & Dunes, both of the same Post Office and email addresses as the current registrant. The contact person according to the present listing is "Contact, Billing,
Telephone: 303-893-0888", with the same email address of bgw@earthnet.net. Complainant asserts, on information and belief, that Brian G. Wick is the administrative
contact listed as Brian Wick in the Whois results of a December 10, 1999, Whois search and is the registered user of the account at the above email address. It further
asserts that Mr. Wick maintains a residence at the following address: Brian G. Wick, 2230 S. Monroe Street, Denver CO 80210, U.S.A. Respondent does not deny these
assertions, but Mr. Wick filed a declaration where he stated: 

"1. I, Brian Wick, am the owner and president of American Distribution Systems, Inc., and in that capacity I registered the Internet domain <bandondunes.com> on
October 10, 1999."

2. The Domain Name and Registrar

The domain name at issue is bandondunes.com registered with Register.com, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Bandon Dunes on May 12, 2000, by e-mail and on May 16, 2000, in hard copy. The
Complainant made the required fee payment. On May 19, 2000, the Center acknowledged the receipt of the Complaint to Complainant’s authorized representative, and assigned this matter Case No. D 2000-0431.

On May 17, 2000, the Center requested Register.com, Inc. to verify the registration data. On May 18, 2000, Register.com, Inc. confirmed that it is the Registrar of the
domain name registration and, inter alia, that Brian Wick of DefaultData.com is the current registrant.

Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, and the
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on May 19, 2000, sent to Respondent, with a copy to the Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint. The formal date of the commencement of this
administrative proceeding is May 19, 2000. 

On June 14, 2000, the Center acknowledged to the parties that it had received the Response from the Respondent on June 9, 2000. This response indicates it was filed by
"Respondent, Brian Wick, through counsel."

On June 22, 2000, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had
appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Presiding Panelist").

On June 23, 2000, the Center received a reply from the Complainant to the response filed by the respondent. 

4. Factual Background

The Complainant is the owner of the federally registered United States service mark "Bandon Dunes" for "golf courses, golf club services, providing facilities for golf
tournaments, entertainment in the nature of golf tournaments." This registration was filed on June 3, 1999, and issued on March 14, 2000.

The Bandon Dunes Golf Course only officially opened on May 2, 1999. Nevertheless, GOLFWEEK newspaper ranked the course 10th in the United States among all
courses built in the last 40 years. In the March 13, 1999, issue of GOLFWEEK (as cited by the Complainant), it was reported that the developer, Mike Keiser, first saw the
land where the course is located in 1993. The earliest dated publication submitted by the Complainant which mentions Bandon Dunes is from late 1998. Between that time
and the date of Respondent’s registration, Complainant has submitted several other publications attesting to the publicity this course has received and its recognition in the
golfing community as one of the best golf courses in the United States.

On October 10, 1999, the Respondent registered the domain name bandondunes.com. Respondent’s registration information with Register.com listed the Registrant of
bandondunes.com initially as "NameIsForSale.com, PO Box 481002, Denver, CO 80248" and the Administrative Contact as "Wick, Brian bgw@earthnet.net
303-893-0888." On December 19, 1999, after receiving a demand letter from Complainant, Respondent changed the registration information to list the Registrant as "Ban, Don, & Dunes," under the same address as before. The Administrative Contact was also changed to "Contact, Billing," under the same e-mail address and telephone
number as before. After receiving another demand letter from Complainant, Respondent again changed the registration information, this time listing the Registrant as
"DefaultData.com." The address and Administrative Contact information remained the same.

5. Parties’ Contentions

Complainant has requested that the domain name be transferred to Complainant because: 

(1) domain name bandondunes.com is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 

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

and

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

Respondent has filed a response stating that: 

(1) Complainant failed to prove that its Mark is either famous or distinct; 

(2) Complainant failed to prove that Respondent’s use of the Mark is likely to cause confusion; 

(3) Respondent’s use of the Mark was non-commercial and thus fair use; 

(4) Respondent’s use was not in bad faith; and

(5) the Anticybersquatting Consumer Protection Act of 1999 provides a "safe harbor" that precludes finding bad faith.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain
name registration, 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; 

(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. They will be addressed separately below, after first addressing jurisdiction.

I. Jurisdiction and Procedure

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of
proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of
proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules). No objection has been made that the necessary parties are not
before this tribunal, nor that this tribunal lacks any authority to rule upon the requested relief.

The latest Whois search conducted by Complainant showed the registrant to be DefaultData.com. The legal status of this entity is unknown. Both Complainant and WIPO served the Complaint on this entity.

Register.com subsequently advised that the registrant was "Brian Wick of DefaultData.com." The response was filed by "Respondent Brian Wick, through counsel." Mr. Wick filed a declaration where he affirmed he registered this domain name in the capacity as owner and president of American Distribution Systems, Inc.

In this case, the Presiding Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these
proceedings. Despite some imprecision as to the correct name of the Respondent, the Presiding Panelist is likewise satisfied that all necessary parties having possible
rights in this dispute have been given notice and, indeed, have appeared. This Tribunal has jurisdiction to decide this dispute as presented.

The Rules only provide for a Complaint and Response. Para. 12 of the Rules provide that the Panel may request, in its sole discretion, further statements from either of the
parties. Complainant’s Reply was not requested. It has not been considered in making this decision.

II. The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark

Complainant claims to have been using the mark, "Bandon Dunes," in commerce since "at least as early as 1991," but offers no evidence of use dating back that far. Its
service mark registration claims use in interstate commerce since June 1998. Based on the numerous golf-related publications provided by Complainant, it is clear that the
Complainant built up a name and reputation in the golf industry at least as early as late 1998, prior to Respondent’s registering the domain name. 

Respondent raises several arguments as to why its domain name should not be found to be identical to or confusingly similar to Complainant's service mark for Bandon
Dunes. It contends that the public would be more likely to recognize the generic word stream "Band On Dunes" or "Ban Don Dunes." As purported evidence of this, Mr.
Wick said he did his own a survey of 58 people. He said none of them associated the domain name with the name Bandon Dunes. These survey results, however, were not
provided. Rather two "typical responses" were provided. The "typical" question was: "What words or phrase does the following Web Site translate to? bandondunes.com".
One response said band on dunes and the other Band On Dunes. The survey respondents were identified only as Sandra and Julie. 

This purported survey is not persuasive on this point. Respondent does not supply the survey questions and answers, methodology or execution. It also does not identify
how the survey participants were selected. To be relevant, the survey must be of the relevant universe of persons whose attitudes and states of mine are at issue.

As discussed hereafter, Respondent also asserts that it adopted this domain name to exhibit parody. A parody, of course and by definition, is an imitation of something
else. The claim of a parody is inconsistent with the claim that no one would identify bandondunes.com with Complainant Bandon Dunes. As stated in Jordache
Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987): 

"In one sense, a parody is an attempt ‘to derive benefit from the reputation’ of the owner of the mark, Sicilia, 732 F.2d at 431, if only because no parody could be made
without the initial mark."

Nowhere in Mr. Wick's declaration does he offer any reason for adopting the bandondunes.com domain name which is in anyway inconsistent with the fact that this domain name is associated with Bandon Dunes, the Complainant. Also, as discussed hereafter, the original registrant was NameIsForSale.com. The name bandondunes.com
would have little value for sale unless it was identical or confusingly similar to the service mark Bandon Dunes.

Based on all of the facts, I find that Respondent’s domain name "bandondunes.com" is identical or confusingly similar to Complainants registered service mark "Bandon
Dunes." Therefore, the requirement of Paragraph 4(a)(i) is met.

III. Rights or Legitimate Interests in Respect of the Domain Name

Paragraph 4(c) of the Policy enumerates how a respondent may establish rights to and legitimate interests in a domain name. The evidence presented shows that
Respondent never attempted to use bandondunes.com in connection with offering any goods or services, nor any business of any kind. Respondent admits this. Therefore,
subparagraphs (i) and (ii) of Para. 4(c) are inapplicable. Paragraph 4(c)(iii) does describe a circumstance under which the Respondent can demonstrate such rights and
interests even without a commercial use. This is where "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." (emphasis added).

Respondent claims that his use of bandondunes.com was as a public not-for-profit comedy forum and parody, and thus fair use. Simply stating that the domain name was
registered as a parody is not enough. There must be actual use by this time since the domain name was registered in October 1999. Respondent included with his
response a purported screen shot of the alleged parody website. This is not posted at bandondunes.com. This is confirmed by Complainant’s search using the domain
name on April 19, 2000, and the presiding Panelist’s search on July 6, 2000. There is nothing posted.

Respondent cites Campbell v Acuff-Rose Music, Inc. in support of the proposition that, "[F]irst Amendment protections do not apply only to those who speak clearly,
whose jokes are funny, and whose parodies succeed." 510 U.S. 569, 583 (1994). In that case, Justice Souter made it clear that it is not for the court to determine the worth
of a work, "outside the narrowest and most obvious limits." Id. at 582. But it is these "narrowest and most obvious limits" that are at issue in this case. Justice Souter
stated that, "[t]he threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived." Id. While the Campbell
Court did find that a parody existed, the facts are quite different in this case. Respondent in this case, by registering a domain name and providing a simple un-posted web
page, does not even meet the threshold requirement for a parody.

Respondent has also not shown that the registration was without intent for commercial gain or to tarnish the service mark at issue. Facts tending to show there was such
intent include the fact that the initial registrant was NameIsForSale.com, registration by respondent of a large number of domain names associated with trademarks of third
parties in which it has no legitimate interest and the fact that Complainant alleges (without dispute) that Respondent established a disparaging web page using the name of
Complainant's attorneys to retaliate against Complainant’s attorneys for seeking to enforce the rights asserted in this matter.

The evidence presented demonstrates that Respondent had no rights or legitimate interests in respect to the domain name at issue. Respondent is not undertaking a
legitimate fair use. Therefore, the requirement of Paragraph 4(a)(ii) of the Policy has been proved by the Complainant.

IV. Bad Faith

The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith." 

Respondent claims that it intends to engaged in social and political satire, perhaps criticizing the Complainant’s business. Even if true, which it is not, this does not allow
appropriation of this domain name. As the arbitrator said in Compagnie de Saint Gobain v. Com-Union Corp., ICANN Case No. D2000-0020,

"[i]t goes without saying that shareholders or other interested parties have the right to voice opinions, concerns and criticism with respect to a listed company and that the
Internet constitutes an ideal vehicle for such activities. The issue at hand is however not as Respondent seems to contend, the freedom of speech and expression but the
mere choice of the domain name used to exercise this inalienable freedom of speech and expression. When registering the Domain Name, Respondent knowingly chose a
name which is identical and limited to the trademark of Complainant. ... Respondent could have chosen a domain name adequately reflecting both the object and
independent nature of its site, as evidenced today in thousands of domain names. By failing to do so, and by knowingly choosing a domain name which solely consists of
Complainant’s trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties."

As to the original registration, Complainant has shown that the registration was made in bad faith. The evidence indicates that, at the time Respondent registered the
domain name, Respondent was aware that that Complainant had an interest in the domain name. The initial registrant was listed as "NameIsForSale.com." Mr. Wick
claims that this name was erroneously inserted automatically by the Registrar. However, he provides no evidence about what he submitted or why the Registrar would have
done this "automatically." He provides no evidence from the Registrar.

He also states he changed the registrant from NameIsForSale.com when he learned of the error in January. The evidence shows otherwise. It shows that Complainant’s
counsel wrote to Mr. Wick at NameIsForSale.com on December 17, 1999, demanding immediate abandonment of the domain name. There was no response to this letter,
but by December 23, 1999, the registrant had been changed to Ban, Don & Dunes, at the same Post Office and email addresses. Moreover, Mr. Wick deleted his name as
the "administrative contact" in the registration information and substituted the name "Contact, Billing." It was only after complainant’s follow-up letter of December 23, 1999, again demanding abandonment, that the registrant was changed from Ban, Don & Dunes to DefaultData.com. 

Additional evidence indicates that the Respondent has registered a large number of domain names associated with the marks or trade names of third parties in which it has
no legitimate interest and that following further communication from the Complainant’s attorney by the letter on December 23, 1999, Applicant is alleged to have
established a disparaging web page at the domain name danconapflaum.com (the Complainant’s attorneys are the law firm of D’Ancona & Pflaum LLC). This was said to
retaliate against the Complainant’s attorneys for seeking to enforce the rights of the Complainant. The Response does not address nor dispute these allegations.

Considering all of the evidence presented by the parties, I find that the Respondent did both register and use the domain name in bad faith. Therefore, the requirement of
Paragraph 4(a)(iii) of the Policy has been proved by the Complainant.

V. Safe Harbor Under the Anticybersquatting Consumer Protection Act of 1999

Respondent asserts that Congress provided that the Anticybersquatting Consumer Protection Act ("ACPA") provides a safe harbor for conduct that the defendant
subjectively believed was not unlawful. It specifically cites 15 U.S.C. § 1125(d)(1)(B)(ii), which provides: 

"bad faith intent described under subparagraph (A) shall not be found in any case which the court determines that the person believed or had reasonable grounds to believe
that use of the domain name was fair use or otherwise lawful."

Based on all of the evidence in this case as set forth above, I do not find Respondent believed that it was engaging in fair use or in otherwise lawful conduct.

Additionally, I do not believe this section protects any and all subjective beliefs, no matter how unreasonable or bizarre. Indeed, the case cited by Respondent imports the
notion of reasonableness when assessing subjective belief. 

"ACPA specifically precludes a finding of bad faith where a domain name holder reasonably believes that the registration of the domain name was fair use or otherwise
lawful." Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936 (S.D.N.Y. 2000). (Emphasis added)

Finally, I note that this United States statute provides a remedy in a civil action in the United States Courts for certain activities. The statute does not apply to these
proceedings.

For all of the above reasons, I find that this statute does not immunize or otherwise provide a safe harbor to Respondent’s activities in this arbitration.

7. Decision

Claimant has proved the necessary elements that the names are identical or confusingly similar, that Respondent has no rights or legitimate interests in the domain name
and that Respondent registered the domain name in bad faith and is using it in bad faith. Therefore, the remedy requested by Complainant is granted. Respondent is
required to transfer the domain name bandondunes.com to Complainant.
  Thomas L. Creel
Presiding Panelist
Dated: July 13, 2000


Domain Name Transferred