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Oceanwalk Properties Ltd. v. Virtual Reality Mall Inc. [2000] GENDND 814 (2 August 2000)

National Arbitration Forum

DECISION

Oceanwalk Properties, Ltd. v. Virtual Reality Mall Inc.

Claim Number: FA0006000095044

PARTIES

The Complainant is Oceanwalk Properties Ltd., Daytona Beach, FL, USA ("Complainant"). The Respondent is Virtual Reality Mall Inc., Daytona Beach, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "OCEANWALK.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/19/2000; The Forum received a hard copy of the Complaint on 06/19/2000.

On 06/26/2000, NSI confirmed by e-mail to The Forum that the domain name "OCEANWALK.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (Policy).

On June 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/17/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On July 19, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The domain name "Oceanwalk.com" registered by Respondent is confusingly similar to the trademarks "Ocean Walk Resort" and "Ocean Walk Village" owned and registered by the Complainant, Ocean Walk Properties, LTD.

2. Respondent has no rights or legitimate interest in the domain name at issue. Respondent was not using the domain name prior to the filing of the Complaint herein, and its precipitous use thereafter has no relationship whatever to the domain name.

3. The domain name in issue was registered and is being used in bad faith.

B. Respondent

1. The domain name at issue is generic and geographic, and is not entitled to trademark protection. Many enterprises in Florida and elsewhere use the name "Ocean Walk" or a derivation thereof.

2. The domain name was registered with the thought of productive use, and will be utilized in promoting charitable events throughout the United States as well as promotional products. It has nothing whatever to do with real estate. Thus, Respondent has the right and a legitimate interest in the domain name in issue.

3. The domain name at issue was not registered and/or being used in bad faith.

FINDINGS

1. The Complainant, Ocean Walk Properties, Ltd., registered with the United States Patent and Trademark Office the marks "Ocean Walk Village" and "Ocean Walk Resort" on March 20, 1998, and April 12, 1999, respectively. The marks also have been registered with the State of Florida.
2. The goods and services represented by the marks are real estate development and hotel services.
3. Complainant is the leader of a $200 million redevelopment project of the blighted ocean front of the City of Daytona Beach, Florida. The proposed project included a parking garage, hotels, restaurants and the expansion of the Daytona Beach Convention Center.
4. The proposed project is called "Ocean Walk" and it has received wide publicity by name through a newspaper, The Orlando Sentinel, Volusia Edition.
5. Respondent, Virtual Reality Mall, Inc., is a Florida corporation, which operates an internet company established for the development and marketing of various products for retail sale.
6. Respondent planned to use and is now using the website with the domain name in issue for the marketing of envelopes and postal directives, and plans are in process for the development of shirts and other apparel under the domain name in issue. Respondent also plans to organize charitable events throughout the country to promote its products using the "Ocean Walk" name.
7. Respondent does not dispute that it was familiar with the Ocean Walk development plans of the Complainant before registering the domain name at issue.
8. Respondent has not attempted to sell the domain name at issue to Complainant, although Complainant has offered to buy the domain name from Respondent.
9. There are numerous websites and Florida Secretary of State filings which use the name "Ocean Walk," many of which, unlike Respondent, deal with real estate.

DISCUSSION

Paragraph 4(a) of the ICANN Policy directs that the complainant must prove each of the following three elements to support a claim 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.

On this issue, Complainant prevails. While it has been found that the term "Ocean Walk" and its variants often have been used by various enterprises, in the present context, it did not remain generic or geographically descriptive. This is because in the area where the term is to be utilized, it has acquired a secondary meaning which is entitled to protection. (See, Pebble Beach Co. v. Tour 18, I, Ltd. (U.S.D.C., S.D. Texas, Houston Div., 1996) 942 F.Supp. 1513, 1539, affi’d as modified (4^th Cir. 1998) [1998] USCA5 1844; 155 F.3d 526, 48 U.S.P.Q. 1065, holding that the service mark "Harbour Town" is not geographically descriptive and is protectable.)

On this issue also, Complainant must prevail. Respondent admittedly registered the domain name at issue knowing that it was substantially similar to Complainant’s marks. Respondent claims that the domain name at issue will be used for a purpose dissimilar to Complainant’s real estate project. It asserts that the domain name will be used for nationwide charitable events and to promote the sale of its products and will have no relevance to real estate. These claims, however, particularly the potential charitable events, are vague and speculative, and have no relationship to Respondent’s present activities.

It is clear that the action of Respondent in knowingly adopting a domain name similar to Complainant’s marks creates a presumption that the public will be deceived. (See AMF, Inc. v. Sleekcraft (19^th Cir. 1979) [1979] USCA9 691; 599 F.2d 341, 354; E & J Gallo Winery v. Gallo Cattle Co. (9^th Cir. 1992) [1992] USCA9 1762; 967 F.2d 1280, 1293.)

Finally, on this issue, Complainant also must prevail.

Section 4b of the Policy sets forth circumstances in particular, but without limitation, which would be evidence of bad faith registration and use of a domain name in bad faith. The circumstances are:

(i) circumstances indicating that a Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) a Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that a Respondent has engaged in a patter of such conduct; or

(iii) a Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, a Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location of a product or service on the Complainant’s website or location.

Paragraph (iv) of the Policy is directly on point and is particularly apt when the words "source," "sponsorship," "affiliation," or "endorsement" are considered. People in the Daytona Beach area will identify Respondent with Complainant’s cause. Respondent’s use of the domain name, accordingly, is not a "fair use" within the meaning of 15 U.S.C. §1125(d)(B)(ii).

Here, again, a presumption of deception also militates against Respondent.

In Interstellar Starship Services, Ltd. v. Epix, Inc. (9^th Cir. 1999) [1999] USCA9 357; 184 F.3d 1107, 1111, it was said:

However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’ Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive. See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, [1993] USCA9 3170; 6 F.3d 1385 (9^th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354. [Emphasis in original.]

It is concluded, accordingly, that Respondent registered and is using the domain name in bad faith. It has not overcome the presumption.

DECISION

Based on the above findings, conclusions and pursuant to Rule 4(i), it is decided that the domain name "OCEANWALK.COM" registered by Respondent Virtual Reality Mall, Inc. be transferred to Complainant Oceanwalk Properties, Ltd.

Judge Irving H. Perluss (Retired)

Dated: August 2, 2000

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