[Indexed as: Rollerblade v. CBNO]
[Indexed as: ROLLERBLADING.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No: WIPO D2000-00427
Commenced: 12 Mayl, 2000
Judgement: 24 August, 2000
Presiding Panelist: Mark V.B. Partridge
Domain name - Domain name dispute resolution policy - Trademark -
Famous marks -
Bad faith registration - Bad faith use - Generic term - Warehousing.
Complainant is the owner of the trademark for the name Rollerblade and is engaged in the manufacture and sale of in-line skates. Respondent registered the domain name rollerblading.com and operates a web page dedicated to the sport of in-line skating.
Held, Name Not Transferred.
Rule 12 of the Policy permits the Panel in its sole discretion to request further statements or documents from either party. The Panel denies Complainants request to file a reply. The Policy and Rules demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances. The breadth of Respondents response does not constitute extraordinary circumstances.
The domain name rollerblading.com is confusingly similar to Complainants trademark Rollerblade.
Respondent has not converted a famous mark into a verb to benefit
from association with the mark. Instead, the public has created a generic
term derived from Complainants mark, and Respondent has used that term
in a manner consistent with common public use. The Panel finds that the
requirement that respondent has no rights or legitimate interest in the
domain name has not been proved by Complainant.
Intent is a critical aspect of the claim of bad faith registration
and use. The term rollerblading is now commonly used by third parties
as a generic term for the sport of in-line skating. Respondent registered
and used the name rollerblading.com in an intentional attempt to attract
Internet users by using a common name for a popular sport, not by creating
confusion with Complainants mark.
Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy, adopted October
24, 1999
Cases referred to
Windsurfing International, Inc. v. AMF, Inc., 613 F. Supp 933 (S.D.N.Y. 1985)
Panel decisions referred to
Cedar Trade Associates, Inc. v. Ricks, ICANN FA0002000093633
(National Arbitration Forum).
Aero-Turbine, Inc. v. Mcayman, Ltd., ICANN FA000200093675 (National Arbitration Forum).
Travel Services, Inc. v. Tour COOP of Puerto Rico, ICANN FA0001000092524 (National Arbitration Forum).
Heelquick!, Inc. v. Goldman, et al., ICANN FA0001000092527 (National Arbitration Forum).
Easyjet Airline Co., Ltd. v. Steggles, ICANN D2000-0024 (WIPO).
J.P.Morgan v. Resource Marketing, ICANN D2000-0035 (WIPO).
Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc., ICANN D2000-0166 (WIPO).
Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN D2000-0270 (WIPO).
1. The Parties
Complainant is Rollerblade, Inc., a Delaware corporation located in
Bordentown, New Jersey.
Respondent is CBNO and Ray Redican Jr., located in Lowell, Massachusetts.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is <rollerblading.com>
The registrar is Network Solutions, Inc., Herndon, Virginia, USA
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain
Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and
the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated
October 24, 1999 ("the Rules").
The complaint was filed on May 12, 2000. The response was filed on
June 24, 2000. Complainant requested leave to file a Reply on June 24,
2000. An unsolicited Reply was filed on July 31, 2000, and Respondent has
objected.
On August 7, 2000, the matter was referred for decision to a three-member
panel consisting of Mark V.B. Partridge, presiding panelist, Dennis A.
Foster and Edward G. Poplawski. After the referral, the Panel concluded
that additional time was required to complete the decision due to exceptional
circumstances in accordance with Paragraph 15 of the Rules.
4. Factual Background
Complainant is engaged in the manufacture and sale of in-line skates
and related products and services. It is the owner of several federal registrations
for the trademark ROLLERBLADE. The earliest registration was issued on
March 19, 1985.
Respondent registered the domain name <rollerblading.com> and operates
a web site at that address relating to the sport of in-line skating. The
content of the web site does not originate with Complainant. Respondents
web site seeks subscribers and investors, but there is no indication that
Respondent seeks to sell the domain name for profit. See Complaint, Exhibit
A.
Complainant claims that Respondent uses ROLLERBLADE as a "metatag"
to attract Internet users to its site, but Complainant has not submitted
any evidence of the html source document for Respondents site.
Complainant also claims that Respondents application to register
ROLLERBLADING.COM as a trademark was rejected by the U.S. P.T.O. due to
conflicts with Complainants prior registrations for ROLLERBLADE.
Respondent has submitted evidence of third-party use of "rollerblading"
as a term for the sport of in-line skating. See Response, Exhibit F.
5. The Parties Contentions
Complainant contends that the disputed domain name is virtually identical
to the substantive part of its famous mark, that the Respondent has no
rights or legitimate interests in the domain name, and that the domain
name is registered and used in bad faith in an intentional attempt to attract
Internet users to Respondents web site for commercial gain.
Respondent contends that "rollerblading" is a generic term of the sport
of in-line skating, that the domain name and trademark are not the same,
that Respondent operates a legitimate business at its web site, and that
there is no showing that Respondent registered and used the domain name
in bad faith.
6. Discussion
The first issue is whether the Panel will grant Complainants request
to file a reply. Complainant argues that it should be permitted to respond
to Respondents attack on the validity of its mark, which it could not
have anticipated in its complaint.
Rules 10(a) and (b) requires that the proceeding be conducted in accordance
with the Policy and Rules and that each party is given a fair opportunity
to present its case.
Rule 12 permits the Panel in its sole discretion to request further
statements or documents from either party.
Although the Rules do not provide for a reply as of right, some Panels
have considered unsolicited replies. See, e.g., Cedar Trade Associates,
Inc. v. Ricks, ICANN Case No. FA0002000093633; Aero-Turbine, Inc. v. Mcayman,
Ltd., ICANN Case No. FA000200093675; Travel Services, Inc. v. Tour COOP
of Puerto Rico, ICANN Case No. FA0001000092524; Heelquick!, Inc. v. Goldman,
et al., ICANN Case No. FA0001000092527. Other Panels have refused to
consider such submissions. See, e.g. Easyjet Airline Co., Ltd. v. Steggles,
ICANN Case No. D2000-0024; J.P.Morgan v. Resource Marketing, ICANN Case
No. D2000-0035; Plaza Operating Partners, Ltd. v. Pop Data Technologies,
Inc., ICANN Case No. D2000-0166; Document Technologies, Inc. v. International
Electronic Communications, Inc., ICANN Case No. D2000-0270.
We side with the decisions that have not considered additional submissions,
and deny Complainants request to file a reply. The Policy and Rules demonstrate
a strong preference for single submissions by the parties absent extraordinary
circumstances. We believe this is a wise procedure given the nature of
these proceedings. Although Complainant may have been surprised by the
breadth of Respondents response, we do not find this to be an extraordinary
circumstance.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution
Policy, Paragraph 4(a) of the Policy requires the complainant to prove
each of the following:
(i) the domain name registered by the respondent is identical or confusingly
similar to a trademark or service mark in which the complainant has rights;
and
(ii) the respondent has no rights or legitimate interest in the domain
name; and
(iii) the domain name has been registered and used in bad faith.
A. Similarity Between Domain Name and Trademark
In this case, we find that the domain name <rollerblading.com> is
confusingly similar to Complainants mark ROLLERBLADE. This comparison
is based merely on the terms at issue, without considering the manner in
which they are actually used.
Although Complainants trademark rights in ROLLERBLADE long predate
this dispute, respondent argues that Complainant lack rights in the mark
because it has become generic. Indeed, genericness, if established, will
defeat a claim of trademark rights, even in a mark which is the subject
of an incontestable registration. See Windsurfing International, Inc. v.
AMF, Inc., 613 F.Supp 933 (S.D.N.Y. 1985), affd in part and reversed
in part 782 F.2d 995 (Fed. Cir. 1986). However, because of our findings
below, it is not necessary for us to determine whether or not Complainants
mark has become generic. Instead, we focus on the domain name itself, <rollerblading.com>,
which is similar but not identical to Complainants mark.
B. Respondents Legitimate Interest In The Domain Name.
Under Paragraph 4(c) of the Policy, any of the following circumstances,
if found by the Panel to be proved based on its evaluation of all evidence
presented, shall demonstrate a registrants rights to and legitimate interest
in the domain name:
(1) demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services prior to the dispute;
(2) an indication that the registrant has been commonly known by the
domain name even if it has acquired no trademark rights; or
(3) legitimate noncommercial or fair use of the domain name without
intent to divert consumers or to tarnish the trademark.
Here, Respondent has operated as a business and paid for advertising
under the name RollerBlading.com (CIS) since 1997, well prior to this dispute.
Response, Exhibit G.
Complainant contends that Respondents use cannot be bona fide because
it is derived from and trades upon Complainants famous mark. However,
the evidence appears to support Respondents claim that it is merely seeking
to trade on the popularity of a term used generically by many people for
a popular sport. This is not a case where the defendant has converted a
famous mark into a verb to benefit from association with the mark. Instead,
this appears to be a case where the public created a generic term derived
from Complainants mark, and Respondent has used that term in a manner
consistent with common public use.
Based on the evidence, we find that the requirement of Paragraph 4(a)(ii)
of the Policy has not been proved by Complainant.
C. Bad Faith Registration and Use
Under Paragraph 4(b) of the Policy, evidence of bad faith registration
and use includes:
(1) circumstances indicating the domain name was registered for the
purpose of resale to the trademark owner or competitor for profit;
(2) a pattern of conduct showing an attempt to prevent others from
obtaining a domain name corresponding to their trademarks;
(3) registration of the domain name for the purpose of disrupting the
business of competitor; or
(4) "by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your web site or other
on-line location, by creating a likelihood of confusion with the Complainants
mark . . ."
Here, there is no evidence that Respondent registered and used the
domain name to profit from resale. Respondents use of the domain name
to find investors for its business does not satisfy this element.
There is also no evidence that Respondent has engaged in a pattern
of conduct of warehousing the names of others or has registered the disputed
domain name to disrupt the business of a competitor.
The claim of bad faith registration and use rests on the claim that
Respondent has intentionally attempted to attract for commercial gain Internet
users to its site by creating a likelihood of confusion with the Complainants
mark. The element of intent is a critical aspect of this claim. The mere
presence of a likelihood of confusion or dilution is not sufficient to
find bad faith under the Policy. Based on the evidence presented, we do
not believe that Complainant has met its burden on this point. Although
it is apparent that the term "rollerblading" is a derivative of Complainants
mark ROLLERBLADE, Respondent has presented ample evidence that the term
"rollerblading" is now commonly used by third parties as a generic term
for the sport of in-line skating. Thus, the evidence supports a finding
that Respondent registered and used the domain name <rollerblading.com>
in an intentional attempt to attract Internet users by using the common
name for a popular sport, not by creating confusion with Complainants
mark.
Complainant suggests that Respondent has improperly used Complainants
mark in metatags for its site. Although such evidence could be relevant
to determining Respondents intent in selecting its domain name, we have
no specific evidence before us. Further, the use anothers mark in metatags
is beyond the scope of issues this Panel is authorized to address in this
proceeding.
For these reasons, we find that the requirement of Paragraph 4(a)(iii)
of the Policy has not been proved by Complainant.
We note that this decision should not be interpreted as stating that
Complainants mark is generic or that Respondents use is not likely
to dilute or cause confusion with Complainants mark. Those issues are
beyond the scope of this proceeding and would require resolution by a court
based on a full record of the evidence.
7. Decision
For the reasons stated above, we find in favor of the Respondent regarding
the domain name <rollerblading.com> and deny the relief requested in
the Complaint.
Mark V. B. Partridge
Presiding Panelist
Dennis A. Foster Edward G. Poplawski
Panelists
Date: August 24, 2000
Domain Name Not Transferred