DECISION

Deschutes Angler Fly Shop c/o John Hazel v. Jodie Bischof

Claim Number: FA0404000260667

PARTIES

Complainant is Deschutes Angler Fly Shop c/o John Hazel (“Complainant”), Post Office Box 190, Maupin, OR 97037.  Respondent is Jodie Bischof (“Respondent”) is represented by Gregory P. Lynch of Hurley, Lynch & Re P.C., 747 SW Mill View Way, Bend, OR 97702.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <deschutesanglers.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Honourable Sir Ian Barker, QC, Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 23, 2004; the Forum received a hard copy of the Complaint on April 27, 2004.

On April 23, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <deschutesanglers.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 24, 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@deschutesanglers.com by e-mail.

A Response was received on May 24, 2004.  Respondent did not send this document in electronic format as required by Rule 5 of the ICANN Rules.  Despite this deficiency, the Panel has decided to consider the Response, in the exercise of the Panel’s discretion.  To refuse to consider it could cause an injustice, inconsistent with the principles of due process.

On June 4, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sir Ian Barker, QC as Panelist.

RELIEF SOUGHT

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

FACTUAL BACKGROUND

On January 18, 2002 an entity called Deschutes River Anglers, allegedly controlled by Respondent’s husband, registered the domain name <deschutesriveranglers.com>.  A website was developed at this domain name.  The business name ‘Deschutes River Anglers’ had been registered on December 12, 2001.

In April 2002 Complainant opened a fly-fishing retail store in the small community of Maupin, Oregon where fly-fishing is the main tourist attraction.  It registered a business name of ‘Deschutes Angler Limited Partnership’ with the relevant authority in the State of Oregon.  A further registered name ‘Deschutes Angler a Fly Shop’ was added at a later date.  The copy of the documents attached to the Complaint do not establish with certainty the actual dates of filing or registration.

Under the business name of ‘Deschutes Angler Limited Partnership’ Complainant sought a trademark registration from the State of Oregon, Number TS36611, for the mark “Deschutes Angler Fly Shop’.  The goods or services with which the mark was to be used were stated as “Rods, Reels, Flies and Clothing”.  There is no date of registration stated on the certificate annexed to the Complaint, but the date of April 5, 2002 is given as the date when the mark was first used anywhere by the applicant or by any predecessor.  The document on file is not signed by any official but only by the applicant.  No evidence was produced as to the requirements for an Oregon State trademark.  In particular, the Panel is uninformed as to the provision in Oregon Law for objections to registration or as to what rights registration gives.

On February 22, 2002, Complainant registered the domain name <deschutesangler.com> and established an associated website.

The disputed domain name, <deschutesanglers.com>, was registered by Respondent on April 8, 2003.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s domain name <deschutesanglers.com> differs from Complainant’s domain name <deschutesangler.com> by only one letter. In most states, trademark law and laws pertaining to registered business names, state that making a name plural does not make it significantly different.  ICANN Rules agree with this law:  The domain name, which merely adds an “s” to the Complainant’s domain name is sufficiently similar so to cause a likelihood of confusion among the users of Complainant’s services.  The domain name in dispute <deschutesanglers.com> is similar in sound, appearance, and connotation to the domain name of Complainant’s <deschutesangler.com>.

Respondent purposely created a new domain name, <deschutesanglers.com>, in order to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with Complainant’s website <deschutesangler.com>.  The two websites are similar in that they both advertise fly-fishing guide services on the Deschutes River. 

Both Complainant’s business names “Deschutes Angler” and “Deschutes Angler a Fly Shop” are registered names under the state of Oregon’s Corporation Division. Both registered names represent the same business.  Deschutes Angler Fly Shop is a trade and service mark registered by the state of Oregon’s Corporation Division.

The fly-fishing business is small.  Word-of-mouth reference is everything to a fly shop or outfitting business.  Complainant has spent twenty-six years developing an outfitting business on the Deschutes River in Maupin.  Complainant has a reputation for running an excellent guide service and has guided anglers from all over the world, including many world-famous celebrities.  If a small outfitting business in this industry, such as Respondent’s, was able to confuse its guide service with Complainant’s guide service, it would undoubtedly benefit Respondent.  Simply to confuse a handful of people each year could benefit Respondent’s business by exposure through confusion to thousands of dollars in guide trips that Respondent would not have booked without the confusion.

The names of Complainant’s and Respondent’s respective businesses are similar enough:

Deschutes Angler Fly Shop  (Complainant)

Deschutes River Anglers  (Respondent)

Respondent has intentionally cut one word out of her business name: “River” in order to create a domain name, <deschutesanglers.com> which will confuse customers who are seeking out Complainant’s web site.  

Respondent has no rights or legitimate interests in respect of the disputed domain name. 

Respondent had operated a website for fifteen months with the one domain name: <deschutesriveranglers.com> and that name is a true reflection of his registered business name.  Complainant has no problem with Respondent’s use of <deschutesriveranglers.com> – that is not the domain name in dispute.  Complainant believes that Respondent registered the additional domain name, <deschutesanglers.com> with the intention of distracting and confusing potential customers of Complainant. 

Respondent’s business is known by the business name Deschutes River Anglers, and has not been commonly known as Deschutes Angler.

Respondent has operated a functioning website under the domain name <deschutesriveranglers.com> from January 18, 2002 to the present.  Respondent added the disputed domain name on April 8, 2003.  Respondent’s website offers services that directly compete with the services offered on Complainant’s website.

Complainant’s domain name was registered on February 22, 2002.  Only after Complainant installed an extensive website for which Complainant had spent significant time and resources to promote, did Respondent start using the domain name in dispute.  Respondent is using the domain name in dispute in bad faith in order to try to skim customers from Complainant’s site through confusion.

Complainant believes that Respondent acted in bad faith based on the timing involved in her registration of a confusingly similar domain name.  Respondent did not register the disputed domain name until after Complainant had established a website under a trademarked business name. Complainant spent thousands of dollars in advertising to promote its domain name <deschutesangler.com>, only to have a competitor try to skim customers away from the website through the confusion caused by the plural form of the domain name.

By using the domain name, <deschutesanglers.com>, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

Review of the facts:

· February 22, 2002: Complainant launches a web site under domain name <deschutesangler.com>.

· April 8, 2003: Respondent, a local competitor for the same customer pool, adds an additional domain name to link potential customers to their existing web site.  That domain name <deschutesanglers.com> is confusingly similar to the registered domain name and the registered trademark of Complainant.

· Deschutes Angler is a registered legal business name in the State of Oregon, which belongs to Complainant.

· Deschutes Angler a Fly Shop is a registered legal business name in the State of Oregon that belongs to Complainant.

· Deschutes Angler Fly Shop is a registered trade and service mark in the State of Oregon that belongs to Complainant.

· Because Respondent had operated for over a year with a domain name of <deschutesriveranglers.com>, the additional domain name <deschutesanglers.com> was created with the intention of distracting or confusing customers who were intending to visit the website of Complainant.

· Complainant and Respondent are direct competitors for the same customer base.  Each has a guide service that operates out of the same town and utilizes the same territory.  Because Complainant has a solid client base and a great reputation in the industry, it benefits Respondent to attempt to confuse their business with Complainant’s more successful business.

B. Respondent

(1)            Sunriver Guides & Outfitters, Ltd. (“Sunriver Guides”), has been engaged in providing flyfishing guide services on the Lower Deschutes River, including the Maupin area, since 1987.  Sunriver Guides is owned by Bruce and Jodie Bischof and has employed their son Brandon Bischof as a Deschutes River guide since 1997.

(2)            During the fall of 2001, Sunriver Guides and Brandon Bischof relocated to Maupin (population 450) from the Sunriver area, thereby reducing Mr. Bischof’s commute time substantially, because a majority of his clients preferred to fish out of the Maupin area.

(3)            When Brandon Bischof purchased a home in Maupin on December 11, 2001, he knew of Mr. Hazel only by name as one of approximately 120 licensed guides who operate on the Lower Deschutes River, which runs through the town of Maupin.

(4)            Mr. Hazel neither owned nor operated any type of retail or commercial fly shop when Brandon Bischof purchased his home in Maupin on December 11, 2001.  Mr. Hazel, prior to April 2002, marketed his guide services as “John Hazel & Company”.

(5)            On December 12, 2001 (the day following the purchase of Brandon Bischof’s house), Sunriver Guides obtained and registered the name “Deschutes River Anglers” with the Oregon Secretary of State.  It thereafter spent approximately $4,000 revising its website incorporating “Deschutes River Anglers.”  The site was launched on January 18, 2002, which was approximately three months prior to the time Mr. Hazel opened his fly shop in April 2002 under the name “Deschutes Angler Fly Shop.”

(6)            At the time Sunriver Guides and Deschutes River Anglers registered and launched its new website on January 18, 2002, John Hazel was still operating solely under the name “John Hazel & Company, Inc.”  Mr. Hazel then had no fly shop nor had he registered the name “Deschutes Angler Fly Shop” or “Deschutes Angler.”

(7)            Although Mr. Hazel registered the domain name <deschutesangler.com> in February 22, 2002, Deschutes River Anglers and Jodie Bischof had no knowledge of Hazel’s use of the name “Deschutes Angler” until Mr. Hazel opened a fly shop in April 2002 under the name “DESCHUTES ANGLER FLY SHOP.”

(8)            Sometime in April 2002, Mr. Hazel began marketing his guide service under “DESCHUTES ANGLER Fly Shop & Guide Service” with an emphasis on “DESCHUTES ANGLER”.

(9)            Given the fact that Respondent’s “Deschutes River Anglers” had been operating for three months with a new website, Respondent became concerned that Mr. Hazel’s new name “Deschutes Angler” was confusingly similar to “Deschutes River Anglers.”

(10)            Deschutes River Anglers contacted the Corporation Division and learned that Mr. Hazel did not have the name “Deschutes Angler Fly Shop” registered with the Oregon Corporation Division as a business name.  The legal business name “Deschutes Anglers Fly Shop” is currently owned by Lynn E. Guenther of Hood River, Oregon, who has given his express consent to Jodie Bischof and Deschutes River Anglers to use the domain name <deschutesanglers.com>.  It is Respondent’s understanding that a trademark registration, as provided by Complainant, does not supersede a registered business name in the state of Oregon.  Moreover, a review of federal trademark registrations reflects that Mr. Hazel has no U.S. trademark filing for “Deschutes Angler”.

(11)            In April 8, 2002, Respondent registered the disputed domain name <deschutesanglers.com> to minimize future confusion between “Deschutes River Anglers” and Complainant’s “Deschutes Angler” given the fact that the name is more similar to <deschutesriveranglers.com> than is Complainant’s “DESCHUTES ANGLER Fly Shop”.

(12)            In April 2002, a John Smeraglio, who has owned the first and only fly shop in Maupin, Oregon, for approximately nineteen years (Deschutes Canyon Fly Shop), informed Brandon Bischof that flyfishing suppliers were mixing deliveries, shipping orders and invoices with Complainant’s new shop, Deschutes Angler Fly Shop.  The problems Smeraglio encountered as a result of the confusion prompted Jodie Bischof to secure the disputed domain name to avoid similar confusion in the guide business.

            Conclusion

Respondent respectfully submits that it is John Hazel on behalf of Complainant, not Respondent, who has created the problems in the small community of Maupin.  He claims to have guided on the Lower Deschutes River for twenty-four years using the name “John Hazel & Company.”  Upon discovering the Deschutes River Anglers website in January 2002, he thereafter decided to create a name for his guide service designed to be confusingly similar to “Deschutes River Anglers.”  Foregoing twenty-four years of name recognition as “John Hazel & Company,” Mr. Hazel suddenly changed all his marketing to “Deschutes Angler” in order to mislead clients seeking to do business with “Deschutes River Anglers.”  It is logical to conclude that, in the absence of “Deschutes River Anglers” opening its Maupin operation and new website in January 2002, Mr. Hazel would still be operating as John Hazel & Company as he had for the previous twenty-four years.  If Mr. Hazel’s claim that he has a client base of thousands and a world-wide reputation, it is clear that Deschutes River Anglers would not have been any type of threat.

Complainant’s attempt to obtain the disputed domain name is transparent.  Complainant should not be rewarded for creating a name deceptively similar to Respondent’s three months after “Deschutes River Anglers” began full-time guiding operations in Maupin.  Complainant’s self-proclaimed world-wide reputation and client base of twenty-four years should not have been effected in the least by the arrival of Deschutes River Anglers and, therefore, there was no legitimate business reason for him to have adopted the name “Deschutes Anglers” three months after the fact other than to intentionally deceive the public by capitalizing on Respondent’s name.

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.

Identical and/or Confusingly Similar

Complainant asserts that it has established rights in the DESCHUTES ANGLER FLY SHOP mark through registration of the mark with the Oregon Secretary of State’s Office.  It holds State of Oregon registrations for the DESCHUTES ANGLER FLY SHOP trademark, Reg. No. TS36611, DESCHUTES ANGLER A FLY SHOP business name, Reg. No. 19155-90, and, DESCHUTES ANGLER LIMITED PARTNERSHIP business name, Reg. No. 07342-99 filed April 5, 2002. 

Complainant has rights in the State-registered DESCHUTES ANGLER FLY SHOP mark.  (See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) See also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (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.)  Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.

Complainant alleges that the disputed domain name <deschutesanglers.com> is confusingly similar to the DESCHUTES ANGLER FLY SHOP mark.  The only differences are the addition of the letter “s” and the omission of the generic words “fly” and “shop”.

There are some cases that the use of part of a trademarked firm trading name in a domain name has been held to create confusing similarity (e.g. Hammond Studdards Edge v Westwood Guardian Ltd (WIPO D2000-1235)).  The Panel there held that the words ‘Hammond Studdards’ identified the name of a well-known British legal firm without the addition of the third word of the partnership name.

The situation here is different.  ‘Deschutes’ refers to a well-known fishing river and ‘Anglers’ to those who participate in the sport of fishing.  There are 120 registered fishing guides in the small town of Maupin which is a fishing center on the Deschutes River.  The term ‘Deschutes Anglers’ could refer not just to a fly shop, but to guiding services for anglers, to shops providing anglers’ needs (other than just flies) or to general information about Deschutes river fishing generally or to an angler’s organization or club. 

Any rights which Complainant may have in the DESCHUTES ANGLER FLY SHOP mark cannot allow it to exclude all uses of the words.  See Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of Complainant because the use of Complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of Respondent's business, and the domain name is unlikely to cause confusion with Complainant's business).

There is insufficient evidence to establish that Complainant has any common law rights in a mark identical or confusingly similar to the disputed domain name.  See Weatherford Int’ll, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principles outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if the Complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services”).    

Although the WHOIS registration shows the date of April 8, 2003, Respondent asserts that the disputed domain name was registered on April 8, 2002.  If this was so, Complainant’s claim should be denied because Respondent registered the domain name prior to the date in which Complainant established rights in the mark.    However, in the absence of anything more than a bare assertion, the Panel is not prepared to hold that the WHOIS registration records are incorrect.

Another problem arises from the lack of information provided by Complainant concerning Oregon State trademark applications.  They do not appear to have to undergo the same rigorous requirements, as do applications for Federal trademark registration.  The only document displayed shows no official approval or registration of the trademark by any official of the Oregon Government. 

The real confusion in this case is between Complainant’s domain name <deschutesangler.com> and the disputed domain name <deschutesanglers.com>.  However, Complainant has not established any common law mark attaching to its domain name.  It has no registered mark that is confusingly similar to the disputed domain name.

It is unfortunate that there are these two competing domain names, each relating to a different business connected with the fly fishing industry in a small community.  One would hope that commonsense and mutual self-interest would dictate some solution.  However, the Policy cannot help Complainant unless Complainant can demonstrate that any trademark (registered or common law) and the domain name are confusingly similar.  The Panel has been unable to so find. 

Accordingly, the first criterion has not been proved.  It is unnecessary to consider the other two criteria and the Complaint must be denied. 

DECISION

Complainant having failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be denied.

Hon. Sir Ian Barker, QC Panelist
Dated:  June 18, 2004

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