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Generic Top Level Domain Name (gTLD) Decisions |
Mio, Inc.
d/b/a Keels and Wheels v. Showplace Publications, Inc. d/b/a By the Sea d/b/a
Boat Shopper Magazine d/b/a boatsho.com
Claim Number: FA0305000157296
PARTIES
Complainant is Mio, Inc. d/b/a Keels and
Wheels, Sarasota, FL (“Complainant”) represented by Barbi Feldman Meyer. Respondent is Showplace Publications, Inc. d/b/a By the Sea d/b/a Boat
Shopper Magazine d/b/a boatsho.com,
Toms River, NJ (“Respondent”) represented by Timothy D. Lyons, of Giordano
Halleran & Ciesla PC.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <keelsandwheels.com>, registered
with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she
has acted independently and impartially and to the best of his or her knowledge
has no known
conflict in serving as Panelist in this proceeding.
Jacques
A. Léger, Q.C., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on May 12, 2003; the
Forum received
a hard copy of the Complaint on May 12, 2003.
On May 15, 2003, Network Solutions, Inc.
confirmed by e-mail to the Forum that the domain name <keelsandwheels.com> is registered with it and that the
Respondent is the current registrant of the name. Network Solutions, Inc. has
verified that Respondent
is bound by the Network Solutions, 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 May 30, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of June 19, 2003 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts,
and to postmaster@keelsandwheels.com
by e-mail.
A timely Response was received and
determined to be complete on June 19, 2003.
On June 26, 2003,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jacques A. Léger, Q.C. as Panelist.
On December 20, 2002 Complainant
filed an electronic complaint with the Forum relating to the rightful ownership
of “keelsandwheels.com”,
which was assigned a case number FA021000137672.
On December 30, 2002 the Forum
e-mailed a notification of: "Hard Copy of Complaint Not Received – Mio,
Inc. d/b/a Keels and Wheels
v By the Sea, FA0212000137672.” The e-mail had two informative and
necessary actions on the part of Complainant to undertake by Jan 6, 2003 or the
case would be dropped. Immediately
following receipt of the e-mail, Complainant
sent a return communication asking for clarification as to requested procedures
and filing fees. On December 31, 2002,
the Forum gave clarification to Complainant.
In any event, Complainant did
not successfully timely complete the required actions and on January 7, 2003 a
Withdrawal of Complaint
form was e-mailed to Complainant, without prejudice for
any future filing.
In 1984, Complainant
incorporated under the name Mio, Inc. with ownership of the business known as Keels and Wheels— which was first established in 1978 with its first publication in
Manatee and Sarasota Counties, Florida.
In 1988, Complainant
purchased a similar publication in Fort Myers, Florida, and subsequently
renamed it Keels and Wheels. The name, Keels and Wheels, has been used as a publication advertising cars, boats, trucks, motorcycles
and recreational vehicles for sale and purchase through this time period.
Complainant first began its activity on the Internet in 1996. When
Complainant registered for its first URL the web hosting company
explained how
useful the name “keels-n-wheels.com”
would be. The hyphens were explained, as valuable attributes not a
deterrent. As time passed the use of
and the effectiveness of a Web presence had hardly been observed by Complainant.
On April 5, 2001 Complainant registered the URL “keels-and-wheels.com” with a view to
more clearly identify its publication.
In November
of 2002, Complainant realized the value of its namesake, “keelsandwheels.com”, without the hyphens, as a URL. However, not
knowing how to obtain the identity of, or the procedures to attempt
re-assignment of the
ownership of this URL, but did not pursue any further action regarding it, although it did
register the name keelsandwheels.net, which was not as valuable as
a “dot com”. In furtherance of
protecting its namesake Complainant has registered the following domain names:
Keels-and-wheels.com, keels-n-wheels.com,
keelsnadwheels.net, and
keelsandwheelsmagazine.com.
Respondent has
also published from 1988 to 1990 a magazine entitled Keels and wheels in New Jersey, Pennsylvania and New York, which presented
listings of boats, automobiles and recreational vehicles. Respondent today
offers on its web site “boatsho.com” recreational vehicles and boats to
consumers.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Keels and Wheels is
a free distribution magazine with two publications primarily serving the
Southwest Florida market, as well as
the entire state of Florida and some out of state markets. The magazine provides photo advertising for
sale and purchase of cars, boats, trucks, motorcycles and recreational vehicles. Name recognition throughout the Keels and Wheels market is high and
complaints regarding the domain name in dispute have already been received.
Complainant
published its first issue in 1978 and distributed throughout Manatee and
Sarasota Counties. Thereafter,
Complainant filed for incorporation under the name Mio, Inc., d/b/a Keels and Wheels on December 28, 1984
and was given the FEI #592548324. Complainant currently owns the name Keels and Wheels under the Florida
Fictitious name registry and application for both State and Federal Trademark is pending.
Keels and Wheels has
consistently used its name as its service and common law mark as well as
product and company name since 1978.
Since its inception, 24 years ago,
Keels and Wheels has never
varied its offering to the public. It
has always included both marine (keels) and automotive (wheels) merchandise
within its pages, hence its namesake. Keels
and Wheels has a unique niche in the marketplace locally, regionally and
nationally as very few publications serve multiple category markets
within the
same publication. Therefore, the Namesake Keels and Wheels has appropriate meaning in the marketplace as well
as name recognition with its patrons.
Identical or confusingly similar
Keels and Wheels has excellent name recognition and the use of the
domain name by Respondent,
which is identical to Complainant’s rightful
ownership of this service and common law mark, can create
confusion in the market place. Customers have already complained about the
confusion.
Rights or legitimate interest
Firstly,
Respondent’s use of the domain name “keelsandwheels.com” is a direct violation
of Federal Trade Mark law and the Anticybersquatting
Consumer Protection
Act.
Secondly,
Respondent has no products or services that directly relate to the usage of the
term “keelsandwheels” since it only offers
boats for sale (and merely provides
links with respect to other vehicles) and hence is utilizing the name to
prevent the Complainant
from use pursuant to its ownership rights according to Policy
4 (b) (i) and therefore the domain name is not used in connection with
a bona fide offering of goods and services.
Thirdly,
Respondent is not commonly known by any name similar to “keelsandwheels” pursuant
to Policy ¶ 4(c)(ii) and has no commercial
interest in the domain name “keelsandwheels”
as it has no products or services that directly relate to such a name as a
namesake.
Bad faith
Respondent
intentionally and with bad faith registered the domain name with full knowledge
that the name is owned by Complainant,
its competitor, and further has that URL
redirected to its own web site “boatsho.com”
with the intent to confuse and
possibly divert Complainant’s customers and advertisers who mistakenly use the domain name for
their own publication and web site. Complainant believes this is a clear
indication of Respondent’s intention to utilize its namesake in a manner
contrary to its benefit
and in so doing confuse the marketplace regarding
Complainant’s products and rightful position in the marketplace of its product
Keels and Wheels and its name
recognition.
Respondent’s
actions have infringed upon Complainant’s right to utilize the name Keels and Wheels in accordance with and
furtherance of its business as well as improperly
interfered with Complainant’s clients’ business.
Respondent
intentionally attempted to attract, for commercial gain, internet users to
their other online location by creating a likelihood
of confusion with the Keels and Wheels mark as their source.
Further,
Respondent’s redirection of the domain name to its own web site “boatsho.com” is an intentional bad faith
interference with Complainant’s business rights thereby creating rights to
damages as well. Complainant
believes this is a clear indication of its competitor’s intention to utilize
the Keels and Wheels namesake in a
manner contrary to its owner’s benefit and in so doing confuse the marketplace
regarding Complainant’s. products and
rightful position in the
marketplace.
B. Respondent alleges that:
Complainant’s
right in the Mark
Respondent disputes Complainant’s
assertion of exclusive trademark rights in the Keels and Wheels name.
Specifically, Complainant does not have exclusive ownership of the Keels and Wheels name throughout the
country. Indeed, Complainant relies
solely on common law trademark rights in the name, which, even if proven, would
necessarily be restricted
to the State of Florida. From 1978 until 1988,
Complainant’s rights to the Keels and
Wheels name was limited to two counties in Florida. In 1988, the publication was expanded to
Fort Myers, Florida, thus, encompassing two more counties in Florida.
By Complainant’s own admission, it was
not until 1996 that Complainant, arguably engaged in any interstate commerce by
conducting
business on its website keels-n-wheels.com. This entry into interstate commerce was a
full eight years after Respondent had initially published its Keels and Wheels printed publication in
New Jersey, Pennsylvania and New York listing boats and recreational vehicles
for sale (the “keels” and “wheels”).
Moreover, Complainant has failed to
provide copies of all registrations and applications for trademark protection
as required by ICANN
Rule 3(b)(xv).
Perhaps the reason that Complainant failed to supply these documents is
that the applications were not filed with the United States
Patent and
Trademark Office until May 8, 2003, a day after the first complaint was
filed against Respondent, which leads Respondent to suspect that Complainant
merely filed for such protection
to bolster its flimsy complaint.
Respondent does not dispute that the
domain name is identical to Complainant’s publication title Keels and Wheels.
Pursuant to ICANN Rule 3(b)(ix)(2),
Complainant has an affirmative duty to set forth the reasons why the domain
name holder has no
rights or legitimate interest in the domain name, and Complainant has failed to meet its burden.
While Complainant has set forth
background of its own marks and the claimed rights in the Keels and Wheels name, it simply leaped to the conclusion that
Respondent’s registration and use of the domain name is not legitimate without
any
evidentiary support.
The complaint betrays the fact that
Respondent has a legitimate purpose to the use of the domain name, namely, to
provide listings
of boats, automobiles
and recreational vehicles for sale.
As such, the name is used in connection with Respondent’s business.
Moreover, Respondent has common law
rights in the Keels and Wheels
trademark dating back to January 1988, the time when it began publication of a
magazine entitled Keels and Wheels.
Indeed, the Keels and Wheels magazine
published by Respondent contained listings of boats, automobiles, and recreational
vehicles for sale. At the time the publication
title was adopted, Respondent
was unaware of the existence of Complainant or its publication since Respondent
was doing business
in New Jersey, Pennsylvania and New York, three geographic
areas in which Complainant was not conducting business since at that time, Complainant’s business was restricted to a few counties in
Florida.
In 1990, due to business reasons,
Respondent suspended the distribution of Keels
and Wheels; however it continued to publish a different boat magazine under
the name Boat Shopper and an
automobile magazine under the name Auto
Shopper. In 1997, Respondent registered the domain name boatsho.com which was related to its
then existing publications.
In February 2002, Respondent decided to
revive the Keels and Wheels printed
publication for distribution to customers in Delaware and Maryland, where
Respondent had already conducted businesses with
its other boat and car
publications and recognized a new valuable market for one publication to
address both needs, i.e., Keels and
Wheels its former brand.
In anticipation of publication of Keels and Wheels, Respondent obtained
the registration for the domain name.
Respondent therefore claims it had a legitimate business reason for the
adoption of this domain name as it was the name of its old
print publication
that it was bringing back to the marketplace. Respondent has denied that there
was any consideration, or indeed
knowledge of Complainant at that time, or at
any time prior to the commencement of this action by Complainant.
The reason for the redirection of traffic
is simple; while the website for Keels
and Wheels is under construction to coincide with the release of the
revamped Keels and Wheels magazine,
Respondent decided to build its market for boat sales and car sales by relying
on its other website and related publication.
The domain name leads the
consumer to boat listings and has links to listings for autos and recreational
vehicles.
The release of the Keels and Wheels publication was forced into limbo due to the
changed economic conditions in late 2002 – 2003 however Respondent continues to
develop
the Keels and Wheels
publication in Maryland and Delaware.
Respondent did not intentionally try to create confusion in the
marketplace, nor did it act in bad faith when it linked the two domain
names
that it owns.
Furthermore, Respondent should not be
held responsible for Complainant’s poor business decision making. In both 1996 and again in 2001, Complainant
knowingly selected hyphenated domain names.
Therefore, when Respondent sought to revive the Keels and Wheels publication and register its title as a domain
name, the domain was available for Respondent.
Respondent finally states that if Complainant was so concerned with the
value of its domain name, it easily could have obtained the domain name back in 1996 or again in 2001, but it willingly,
intentionally, and knowingly chose not to register the keelsandwheels.com domain name and therefore can not now be heard
to complain against Respondent.
Lastly, Respondent claims that its
selection, purchase and development of the website in connection with the
domain name was for the
bona fide
offering of recreational vehicles and boats to consumers in the same manner as
the printed publication Keels and Wheels. This use by Respondent extends back to 1988.
Complainant has failed its obligation
pursuant to ICANN Rule 3(b)(ix)(3) which requires a Complainant to show why the
domain name
has been registered and is being used in bad faith. In the complaint, there are numerous bold
assertions to this effect made by Complainant that have no factual
support. Instead, Complainant attempts
to attribute a bad faith motive to the fact that Respondent directs the domain
name traffic to its boatsho.com web
site which lists boats for sale. However, this use of the domain name in
connection with Respondent’s pre-existing business is
a legitimate use.
Moreover, Complainant’s assertions of bad
faith assume that Respondent had any knowledge, let alone full knowledge of
Complainant,
its business and its use of the Keels and Wheels name.
Complainant does not make any factual showing whatsoever that
Respondent had full knowledge of Complainant’s existence and supposed trademark
rights. At no time prior to the
commencement of this action was Respondent aware of Complainant’s claim to the Keels and Wheels name. In response to
such naked assertions, Respondent submits that Complainant’s unsupported claims
show bad faith on the part of
Complainant.
Respondent has registered the domain name
for the sole purpose of conducting its business of listing recreational
vehicles and boats
for sale.
Respondent’s services of providing a forum for boat, auto and recreational
vehicles owners to list their items for sale directly related
to the domain
name as it is the name of the printed publication of the same name owned and
distributed by Respondent.
Respondent directed traffic from keelsandwheels.com to its other domain
name for the purpose of conducting business while the Keels and Wheels publication and new web site is under
construction.
Respondent did not register the domain
name with any intention to prevent Complainant from using its common law
trademark on the Internet. Respondent
simply intended to capitalize on Respondent’s own rights to the Keels and Wheels mark.
Respondent in no way intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s web
site or other on-line
location, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site. Respondent did not attempt to create confusion
between the two websites. Contrary to
Complainant’s assertions, Respondent does have a legitimate commercial use of
the Keels and Wheels name.
Since 1990, Respondent has used the Keels and Wheels name in connection with
a printed publication. Simply because
Complainant may have used the same publication name in another state does not foreclose
Respondent’s rights in and
to the same trade mark in a different geographic
location, namely New Jersey, New York, Pennsylvania, Delaware and
Maryland. While it may be unfortunate,
and yet coincidental, that both Respondent and Complainant selected an
identical publication name and
subsequently registered similar domain names, it
is not bad faith on Respondent’s part and it certainly does not amount to
infringement
and cybersquatting as Complainant alleges.
DISCUSSION AND FINDINGS
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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 4(a) of the Policy requires
that the Complainant must prove cumulatively each of the following three elements if it is to succeed in
obtaining an order for the transfer or cancellation of the domain name:
(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.
Complainant maintains that it has
established common-law rights in the KEELS AND WHEELS mark through continuous
use and promotion
of the mark in commerce since 1978, as well as through
pending trademark applications for the mark. The Panel agrees that the ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has
rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will
suffice” to support a domain name
Complaint under the Policy (see McCarthy
on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) wherein it was found that the Rules do not require that the Complainant's trademark or
service mark be registered by a government authority or agency for
such rights
to exist. Rights in the mark can be
established by pending trademark applications.
However, as
directed by the Policy, the Panel cannot rely on the mere assertions set forth
in a complaint. There needs to be evidence
on which Complainant can sustain its
allegations in order to establish that it has rights in the mark. In the case
at hand, the Panel
finds that Complainant has failed to prove that it has
enforceable rights in the Keels and
Wheels mark since the only material submitted are two photocopied front
pages of the Keels and Wheels
magazine, both dated May 6, 2003, which fall short of the standard of proof.
While Complainant has asserted it has a fictitious name
registration in Florida
as well as State and Federal pending applications, it has failed to submit any
relevant document in order
to lend weight to such a contention. See
Amsec Enterprises. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) wherein it was
stated that Complainant’s pending trademark applications do not establish any
enforceable
rights to the mark until a trademark registration is issued; see also Powrachute Inc. v. Buckeye Indus.,
AF-0076 (e-Resolution, May 30, 2000) wherein the Complaint was dismissed
because Complainant failed to contend, provide evidence,
or give arguments to
the effect that it had either a registered trademark or service mark in
POWRACHUTE or any similar name, or that
it had a common law trademark in the
name. In that case, the only evidence that had been provided, that it was
incorporated under
the name, was held insufficient to create a trademark right.
In the present case, given that
Complainant has failed to provide sufficient evidence in order to ascertain its
rights in the mark,
it follows that the burden to show rights in a mark has not
been met which relieves the Panel from conducting any further analyses
with respect
to the other two substantial elements
of the complaint.
As to Respondent’s contention that the
complaint was brought up in bad faith, entitling Respondent to costs, it should be noted that the evidentiary
burden which rests on its shoulders is very high. Concerning this
claim, the Panel shares the opinion of the presiding panel in Koninklijke
KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001), which found that to prevail on such a claim,
Respondent must (i) show that Complainant brought the claim in bad
faith, despite its knowledge that Respondent has an unassailable right or
legitimate
interest in the disputed domain name; (ii) show that Respondent
lacks the necessary bad faith registration and illegitimate use of
the disputed
domain name. Furthermore, the Panel shares the opinion expressed by the
panel in Smart Design LLC v. Hughes,
WIPO Case No. D2000-0993, that, "reverse Domain Name hijacking…encompasses
both intent and recklessness or knowing disregard
of the likelihood that the
Respondent possessed legitimate interests".
In the matter at issue, it is apparent that Respondent other than simply
stating that the complaint was brought up in bad faith, has
not established any
of the above-mentioned criteria and/or provided evidence in support of said
request. Consequently, it has failed
to relieve itself of its burden of proof
regarding this notion and no finding of Reverse Domain Name Hijacking, against
Complainant,
will be made. See for instance Donald
J. Trump and Trump Hotels
& Casino Resorts, Inc. v. Nikolai Golovenkov d/b/a RusskayaReklama.com,
Inc. (Nat. Arb. Forum, FA0109000099705, October 31, 2001).
DECISION
By Complainant’s failure to meet its
evidentiary burden under one of the elements, i.e. its rights in the mark under
ICANN Policy,
the Panel concludes that relief shall be DENIED.
The request for costs by Respondent is
dismissed.
Jacques A. Léger, Q.C., Panelist
Dated: July 10, 2003
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