DECISION

Navigator Yachts, Inc. v. TD Curran

Claim Number: FA0401000226452

PARTIES

Complainant is Navigator Yachts, Inc. (“Complainant”), represented by H. Joseph Calmbach, of Nelson - Hesse, 2070 Ringling Blvd., Sarasota, FL 34237.  Respondent is TD Curran (“Respondent”), represented by Gregory L. Kosanke, P.O. Box 632, Lynden, WA 98264.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <navigator-yachts.com>, <navyachts.biz>, and <navyachts.net>, 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.

Edmund P. Karem as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 15, 2004; the Forum received a hard copy of the Complaint on January 15, 2004.

On January 20, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <navigator-yachts.com>, <navyachts.biz>, and <navyachts.net> are registered with Network Solutions, Inc., 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 January 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 11, 2004 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@navigator-yachts.com, postmaster@navyachts.biz, and postmaster@navyachts.net by e-mail.

A timely Response was received and determined to be complete on February 6, 2004.

On February 19, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edmund P. Karem as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain names registered by Respondent, <navigator-yachts.com>, <navyachts.biz>, and <navyachts.net> are confusingly similar to its registered trademark NAVIGATOR YACHTS, INC and the domain name <navyachts.com> in which Complainant has rights.  Complainant also contends that Respondent, TD Curran, purchased a pleasure craft manufactured by Complainant and, when a dispute regarding the warranty for the yacht did not resolve to Respondent’s satisfaction that Respondent improperly created and registered the domain names at issue. 

It is Complainant’s further contention that Respondent should be considered as having no rights or legitimate interests in respect to the domain names because the domain names were not intended to be used with a bona fide offering of goods or services but rather solely for the purpose of publishing Respondent’s dissatisfaction with the warranty service and the condition of the yacht. 

Navigator Yachts, Inc. also asserts that Respondent has not commonly been known by either of the three domain names at issues and that the Respondent, TD Curran, has also registered the domain name <tdcurran.com>, which is appropriately associated with Respondent. 

Complainant also contends that Respondent is not making a legitimate non-commercial or fair use of the domain names but rather are using them to tarnish Complainant’s trademark and reputation. 

The registrations and use Complainant contends are in bad faith because the registration was primarily for the purpose of disrupting the business of Complainant and the domain names are not being used in the ordinary course of trade or business or to facilitate any exchange of goods, services, information or property.  It is Navigator Yachts, Inc.’s position that Respondent is intentionally attempting to attract internet users in order to disrupt the business of the Complainant and to publicize Respondent’s personal views regarding Complainant’s warranty.  The last claim of Complainant is that Respondent registered the domain names for the purpose of selling or otherwise transferring them to the Complainant alleging that a specific telephone conversation took place between TD Curran and F. Steven Herb, a representative for Complainant, on or about December 19, 2003 in which an offer to sell and transfer the domain name was made.               
 

B. Respondent

Respondent asserts that the domain name <navigator-yachts.com> would never be confused with Complainant’s domain name <navyachts.com>.  This assertion is based on the fact that neither the word “navigator” nor the hyphen is included in the Complainant’s domain name.  Further Respondent asserts “navigator” and “yachts” are commonly used words on the internet, and “Navy” is a common nautical term associated with virtually every seafaring nation on earth.  Respondent claims it’s a common practice in domain names to join names such as “Navy” and “Yachts” and to drop a consonant in the joinder.  With regard to rights or legitimate interests the Respondent, Troy Curran, claims he purchased a 53 foot yacht from the Complainant Navigator Yachts, Inc. for $583,600.  It was a new vessel and represented to be sea-worthy and free of defects.  Respondent was told by the broker that the warranty service of the dealer was excellent, that the seller was reputable and took care of its customers. 

Respondent states that following delivery of the vessel numerous defects were determined to exist and were of such severity as to render the vessel un-seaworthy. 

Respondent wrote to the owner of Navigator Yachts, Inc. listing his complaints to which it is contended there was no response.  The Respondent then had his attorney write a letter to the sales brokers who it is claimed made verbal representations which have not been kept. 

Respondent then retained a marine surveyor who, in connection with a surveyor retained by the broker prepared a marine survey report identifying significant problems with the yacht which, Respondent claims, have not been resolved. 

Respondent alleges Navigator Yachts, Inc. told him or his representatives that their yachts do not suffer from the type of problems that the Respondent was incurring.  The Respondent felt that could not be so given the background of his vessel.  The Respondent began to search for other Navigator owners and located the owners of a Navigator 56’ and a Navigator 42’.  These owners shared similar experiences Respondent asserts and Respondent believes that therefore there were other Navigator yacht owners that would have similar problems and that he registered the domain names with the legitimate purpose of seeking information from other Navigator Yacht owners to help get problems addressed.

Respondent says he has no intention of using the domain for commercial gain or to misleadingly divert consumers or to tarnish Complainant’s domain name. 

Lastly, Respondent acknowledges there was a telephone conversation with F. Steven Herb but denies offering him the domain names for sale.  Respondent in fact asserts he told Mr. Herb that he had spent quite a bit of money registering these domain names and was quite serious about the issues with his boat. 

Respondent claims not to have registered the sites for the purpose of interfering with Navigator Yachts, Inc.’s business but to gain information incident to a legitimate dispute with Navigator Yachts.                    
      

DISCUSSION

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 each of the following three elements to obtain an order 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.

FINDINGS AS TO:

Identical and/or Confusingly Similar

Complainant has rights in the NAVIGATOR YACHTS, INC. mark.  Complainant registered the Navigator mark with the United States Patent and Trademark office on May 5, 1998.  The Registration Number is 2,154,763 (Complainant’s Exhibit 1). 

Registration of a mark is prima facie evidence of validity, creating a rebuttable presumption that the mark is inherently distinctive.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).  One of the domain names in issue, <navigator-yachts.com> is confusingly similar to Complainant’s registered mark.  The only difference in the two names is the addition of a dash and the omission of “Inc.”  These differences are not significant enough to distinguish the <navigator-yachts.com> domain name from the NAVIGATOR YACHTS, INC. mark.  See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000).  See also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001).   The differences between the other domain names at issue, <navyachts.net> and <navyachts.biz> from Complainant’s mark are slight.  The primary difference is the abbreviation of the word “navigation” to “nav” in the domain name.  The other differences include the concatenation of the words “nav” and “yachts” and the omission of the word “Inc.”  The abbreviation, concatenation, and omission are not significant enough to distinguish <navyachts.net> and <navyachts.biz> from Complainant’s NAVIGATOR YACHTS, INC. mark.  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) which found the domain name downeastmagazine.com confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE.            

The arbitrator also notes that the Respondent did not address the issue of confusion with the registered mark but rather addressed its response to the fact that Respondent’s domain name of <navigator-yachts.com> would never be confused with Complainant’s domain name <navyachts.com>.  

Rights or Legitimate Interests

Respondent asserts and the arbitrator finds that it is using the domain name to gain information incident to a dispute with Complainant and that is a legitimate non-commercial or fair use pursuant to policy section 4(c)(iii).  Most of Respondent’s evidence is intended to persuade the arbitrator that there is in fact a legitimate dispute with Complainant concerning the condition of the vessel purchased.  That evidence does lead the arbitrator to conclude that there is a legitimate controversy between Respondent and Complainant regarding the condition of the newly acquired yacht, its seaworthiness and the warranty service received by Respondent. 

“The goals of the policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain,” Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002).  In addition, see Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) which found that Respondent had rights and legitimate interests in the domain name incorporating Complainant’s name at which commentary and criticism of Complainant are offered and which users are free to post messages about Complainant.     

Registration and Use in Bad Faith

Respondent, while acknowledging a phone conversation took place between he and F. Steven Herb, denied offering the disputed domain names for sale.  Respondent’s claim is it is using the domain name to gain information incident to its dispute with Complainant.  In Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000), the Panel found that considering or offering to sell a domain name is insufficient to amount to bad faith under the policy.  The domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out of pocket expenses.  The totality of the evidence leads the arbitrator to conclude that the primary purpose of the registration was not to offer the name for sale to the Complainant for an amount in excess of out of pocket expenses.      

DECISION

           

The Complainant failed to establish the three elements required under the ICANN policy and the panel concludes that therefore relief should be DENIED.  

Accordingly, it is Ordered that the complaint herein be dismissed and that there be no transfer of the domain names <navigator-yachts.com>, <navyachts.biz>,  and <navyachts.net>.

Edmund P. Karem, Panelist
Dated: March 4, 2004

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