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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Infinity Surfboards Inc. v. Ethan Akins
Case No. D2007-0177
1. The Parties
The Complainant is Infinity Surfboards Inc., Dana Point, California, United States of America, represented by Friedman Stroffe & Gerard, PC, Irvine, California, United States of America.
The Respondent is Ethan Akins, Ventura, California, United States of America.
2. The Domain Names and Registrar
The disputed Domain Names <infinitysurfboards.com> and <infinitysurfboards.net>
are registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2007. On February 13, 2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain names at issue. On February 13, 2007, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2007. The Response was filed with the Center on March 24, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 2, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel requested additional information from the
Respondent by Procedural Order No. 1 on April 17, 2007, allowing the Complainant
an opportunity to reply by April 27, 2007. The Respondent submitted additional
materials in response to the Procedural Order on April 22, 2007. The Complainant
replied on May 1, 2007.
4. Factual Background
The Complainant Infinity Surfboards Inc. is a California corporation formed in 1979. The corporation or its principals, championship surfers Steven (“Steve”) and Barrie Boehne, have operated one or more shops named “Infinity Surf Shop” in Southern California continuously since 1971. The Complainant manufactures and sells customized, hand-crafted surfboards. Its surf shops also sell surfing accessories such as automobile surfboard racks, deck pads, surfboard leashes, waterproof watches, and clothing.
The Complainant advertises its surf shops and products online and in surfing magazines. It advertises and offers certain products for sale on a website to which the domain names <infinitysurf.com> and <infinitysurfboard.com> both resolve. Both of these domain names bring Internet users to a landing page that allows visitors to click on a photograph of surfboards with the superimposed words “ENTER INFINITY SURF.” According to the relevant registrar’s WHOIS database, the domain name <infinitysurf.com> was registered on November 9, 1998, and the domain name <infinitysurfboard.com> was registered on November 18, 2002.
The Complainant furnished copies of print advertisements for every year from 1972 through 2005. These also appear on its website, along with more recent advertising and both historical and contemporary photographs of its shops. Together, these establish that the Complainant has used the names “Infinity Surfboards” and “Infinity Surf” in labeling its shops and in advertising its products continuously since 1971, along with a graphic logo featuring the word “Infinity” in a figure-eight band suggestive of the mathematical symbol for infinity.
The INFINITY trademark was registered as a design mark by the United States Patent and Trademark Office (USPTO) on January 20, 1998, United States Trademark Registration No. 2129685. The registration was issued to Steven Boehne as an individual, and the USPTO online database shows no subsequent assignment. The mark’s first use in commerce is given as September 27, 1971.
The USPTO database does not show that the Complainant or Steven Boehne have obtained United States trademark registrations for INFINITY, INFINITY SURF, INFINITY SURFBOARDS, or WWW.INFINITYSURFBOARD.COM as standard character marks. The record also does not indicate that the Complainant or Steven Boehne have registered any of these marks in the State of California.
The Respondent Ethan Akins of Ventura, California identifies himself as the president of SaltWaterDreams, Inc., which uses the Domain Names in its business. According to the online business entities database operated by the California Secretary of State, SaltWaterDreams, Inc. is a California corporation formed in April 2003. Ethan Akins registered the Domain Name <infinitysurfboards.com> on April 11, 2000, and the Domain Name <infinitysurfboards.net> on November 13, 2000, before the corporation was formed, and he remains listed as the registrant of the Domain Names.
The Respondent states that the Domain Names were “immediately developed into functional websites” as “online destination[s] to view and/or place orders for our extensive collection of surfboards and surfing related accessories that we sell via the World Wide Web.”
The Domain Name <infinitysurfboards.com> resolves to a website headed “SURF PRODUCTS DELIVERED TO YOUR DOOR FOR LESS THAN GOING TO THE STORE.™” The home page features photographic links for surfboards and surf accessories. At the bottom of the page appears a graphic logo, SALTWATERDREAMS, followed by an “R” indicating that it is a registered mark. Visitors clicking on the product links are redirected to pages on the website of the Respondent’s company at “www.saltwaterdreams.com,” where SaltWaterDreams offers an array of surfing accessories from a variety of manufacturers.
The SaltWaterDreams website is clearly more than an advertising directory. As indicated above, the website provides electronic order processing for most of the advertised products. The website includes information for advertisers about designing a retail “store” and engaging the “SWD Network” to provide advertising, web hosting, and order fulfillment. SaltWaterDreams claims a staff of “real human beings” and provides live customer support, as well as mail order processing, merchandise warehousing, and automated inventory control.
In addition to links to pages on the SaltWaterDreams website, the website associated with the Domain Name <infinitysurfboards.com> displays text including the following:
“For the past eight years we have been selling top quality surfboards at SaltWaterDreams. Choose from a variety of shortboards, funboards, and longboards. These boards are excellent for any size, shape, or wave conditions.”
“You’ll appreciate the superior design of our surfboards offered here. If you are not sure which surfboard you are seeking, we are always adding to our endless collection to stand by our name of www.InfinitySurfboards.com.”
Despite this text advertising an “endless” collection of surfboards, it does not currently appear to be possible to purchase a surfboard online through SaltWaterDreams. The surfboards page lists thirteen surfboard manufacturers (which do not include the Complainant) under the heading “Surfboards in Stock.” However, no models or prices are given, and there are no links to sources where the surfboards can actually be obtained. Many other surfing-related products can be purchased currently through the SaltWaterDreams website, but not surfboards.
The Domain Name <infinitysurfboards.net> resolves to a website similar to the one associated with <infinitysurfboards.com>. However, the advertised products are limited to surfboard racks designed for transporting surfboards on vehicles, and the text refers only to surfboard racks. Photographs of surfboard racks link to pages on the SaltWaterDreams website offering the corresponding models.
The Panel notes that a resumй of the Respondent Ethan Akins is published online at “www.freebsdadministrator.com,” on a page displaying the SALTWATERDREAMS logo. This web page indicates that the Respondent operates more than 400 “active websites” and owns more than 1500 domain names. At least some of these, such as “www.swd.com,” “www.surfboardracks.com,” “www.sufboardcases.com,” “www.surfboardleashes.com,” “www.surfboardrepairs.com,” and “www.swellforecast.com,” resolve to website landing pages similar to those associated with the Domain Names. These pages similarly advertise surfing-related products with photographs that serve as links to the relevant pages of the SaltWaterDreams website.
The Complainant’s president Steven Boehne states in his Declaration that in early 2005 “customers began complaining to me that they could not locate the Infinity website,” telling Boehne that “they found a website that sold surf products, but it was not the Infinity Surf Shop.” Bill Attinger, a friend of Steven Boehne, contacted the Respondent in January 2005, claiming that the Domain Names infringed and diluted the Complainant’s marks. Attinger followed up with an email and a cease-and-desist letter dated February 13, 2005, demanding transfer of the Domain Names. The email alludes to two earlier conversations with the Respondent, in one of which, according to Attinger, the Respondent suggested that he might be willing to sell the Domain Names for “a market price.”
The Respondent did not comply with the demand to transfer the Domain Names and apparently did not name a price for which he would consent to transfer them. He did add the following disclaimer at the top of the website to which the Domain Name <infinitysurfboards.com> resolves: “www.InfinitySurfboards.com is in no way affiliated with, representing, associated, or sponsored by Steven P. Boehne and/or Infinity SurfShop” (emphasis in original). No such disclaimer currently appears on the website associated with the other Domain Name, <infinitysurfboards.net>, although the Response states that the disclaimer was placed on both websites.
Attinger reported in an email dated March 3, 2005, that the Respondent acknowledged, presumably in one of the earlier conversations, that he owned “hundreds of domains pointing to saltwaterdreams and he had not performed a trademark search for any of the domains.” Attinger also indicated in the same email that the Respondent had, since their conversations, added references to surfboards on its websites, but it was not possible to purchase a surfboard on those websites. (Two years later, that appears still to be the case.)
The Complainant subsequently retained legal counsel, who sent the Respondent another cease-and-desist letter dated September 9, 2005. This letter asserted infringement of the Complainant’s registered INFINITY design mark and the trade name “Infinity Surfboards,” again demanding transfer of the Domain Names. The Respondent replied in a letter dated September 20, 2005, denying any awareness of the Complainant at the time the Domain Names were registered. The Respondent pointed out that the Complainant had not obtained a registered trademark for “Infinity Surfboards” and did not display a “TM” symbol visibly asserting common law trademark rights. The Respondent advised the Complainant as follows: “Although we may have an interest in an arrangement satisfactory to both parties, we are not cyber-squatting and have no intention of merely transferring ownership of this legitimate domain name. . . .”
There is no further evidence in the record of communications between the parties or their representatives until the Complaint was filed in February 2007.
In its Procedural Order No. 1, the Panel requested evidence that the Respondent or his company used the Domain Names before February 2005 in connection with the bona fide offering of surfboards. The Respondent provided in response a 2001 surfboard price list, a 2002 surfboard order form, and a copy of a surfboard sales flyer for a 2002 “March Madness Surfboard Sale,” stating that the latter was printed and distributed in 2002.
The first of these documents, headed “Surfboard Price List.” cites “www.infinitysurfboards.com” and lists ten types and size ranges of surfboards, with prices given for each.
The second document, the 2002 order form, includes lines to insert the desired sizes and features of a surfboard and a mailing address for “INFINITYSURFBOARDS.COM & .NET.” A line at the bottom of the form reads, “Property of InfinitySurfboards.com & InfinitySurfboards.net 2002.”
The third document provided by the Respondent in response to the Panel’s Procedural Order is a copy of an uncut printed page of sales flyers headed “2002 MARCH MADNESS SURFBOARD SALE!!” These advertise three kinds of surfboards (“shortboards,” “funboards,” and “big guns”). It lists sales prices during the month of March 2002 according to size ranges, mentioning several different manufacturers. The flyers encourage customers to “Phone, Fax, mail, or E-mail your order in today,” with contact details including “InfinitySurfboards.com & .net.”
The Complainant replied to the Respondent’s supplemental filing on May
1, 2007, pointing out that the documents submitted by the Respondent in response
to the Panel’s Procedural Order could have been recent fabrications.
5. Parties’ Contentions
The Complaint is based on the registered INFINITY design mark and common law trademark rights asserted for INFINITY SURFBOARDS and WWW.INFINITYSURFBOARD.COM. The Complainant contends that the Domain Names are confusingly similar to these marks.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Names, as he is not known by a name corresponding to the Domain Names and does not sell products labeled with a name corresponding to the Domain Names. The Complainant infers that the Respondent registered and used the Domain Names in bad faith, in an effort to mislead Internet users for commercial gain.
The Respondent, who is not represented by counsel in this proceeding, disputes the Complainant’s claims to relevant trademarks.
The Respondent asserts that he registered the “very generic” Domain Names “to help expand our web-presence showcasing an extensive collection of surfboards that we offer for sale,” as currently suggested in the text on the website associated with <infinitysurfboards.com>: “we are always adding to our endless collection to stand by our name of www.InfinitySurfboards.com.”
The Respondent denies prior knowledge of the Complainant and asserts good-faith reasons for registering the Domain Names and using them in his company’s business for the past seven years.
Finally, the Respondent asks the Panel, “if
it is possible,” to disable or transfer to SaltWaterDreams, Inc. the Complainant’s
own domain name, <infinitysurfboard.com>, to avoid confusion among the
Respondent’s customers or potential customers.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainant must demonstrate each of the following:
(i) the Domain Names are 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 interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant’s trademark claims are problematic in some respects and require detailed analysis.
The Panel rejects the registered
INFINITY design mark as a basis for the Complaint. The Complainant is not the
registered owner of that mark. Even assuming that the Complainant has an interest
in the mark through an express or implied licensing agreement with the individual
to whom the mark is registered, Steven Boehne (identified in his Declaration
as the Complainant’s president), the design mark at issue in the present
case would in the Panel’s view be insufficient to satisfy paragraph 4(a)(i)
of the Policy, without further evidence that the word elements in question have
acquired distinctiveness on their own. While in some cases a word or words combined
with other elements, such as the figure-eight band in the Complainant’s
logo, may be distinctive and protectable, the words alone (as found in a domain
name) may not. See Sidamsa-Continente Hipermercados, S.A. v. Rose
Communications, S.L., WIPO Case No. D2000-1748.
The Complainant does not possess a registered standard character mark for the English word “infinity,” and it has not furnished evidence that it has used that word alone to such an extent that the word is entitled to common law protection as having acquired distinctiveness in referring to the Complainant’s products. The USPTO database reveals that the word “infinity” appears in numerous United States registered design marks and at least one registered standard character mark, United States Registration No. 3219422 (for an atmospheric science museum). The word could conceivably become an arbitrary appellation for a brand of surfboards. But all of the examples of use furnished by the Complainant pair the word “infinity” either with the figure-eight design element or with other words or phrases such as “surf,” “surf shop,” or “shortboards.” Thus, the Panel finds for purposes of this proceeding that the Complainant has not established trademark rights in the word “infinity” alone.
The Complainant also claims a common law trademark in one of the domain names it uses for its website, “www.infinitysurfboard.com.” A domain name normally functions as an address, not a brand. See, e.g., 1 J. McCarthy, Trademarks And Unfair Competition § 7:17.1 (4th ed. 1998). A trademark serves as an indication of the origin of goods or services. A domain name might serve that purpose if, for example, it were the only or prominent name that appeared on product labeling, signage, or advertising. In other cases, it may be no more a trademark than the provider’s telephone number or street address. There is no evidence in the record here supporting common law protection for the Complainant’s domain name by demonstrating that it has appeared in advertising or labeling as anything but an address for the Complainant’s website.
The Complainant more plausibly asserts common law rights in INFINITY SURFBOARDS as a trademark. Although both are English words, the term “infinity” is not normally descriptive of “surfboards,” so the claimed mark would probably be classified as an arbitrary mark under United States trademark law. See, e.g., Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340 (US App. Fed. Cir. 2004) (an arbitrary mark is “a known word used in an unexpected or uncommon way,” which is typically a strong mark entitled to protection).
The mark is not registered, and the words appear on the Complainant’s website and in print advertising without a “TM” symbol manifesting asserted common law trademark rights. Moreover, as the Respondent points out, the Complainant’s website and advertising, as well as recent search engine queries, indicate that the Complainant has used a variety of unregistered names in connection with its shops and products. These include “Infinity Surf” (advertising and website), “Infinity Surf Shop” (advertising, website, and signage), “Infinity Boardshop” and “Infinity Board Shop” (signage and advertising for the Complainant’s Dana Point and San Diego shops), and “Infinity Shortboards” (on the “Contact” page of the Complainant’s website).
Nevertheless, the Policy by its terms is not limited
to protecting registered marks. The key to establishing rights in any particular
unregistered mark for purposes of paragraph 4(a)(i) of the Policy is to demonstrate
that the mark has, through its use, attracted significant goodwill and reputation
associated with the Complainant in a definable market. See, e.g., Imperial
College v. Christophe Dessimoz, WIPO Case
No. D2004-0322. Here, the Complainant has furnished
substantial evidence of using INFINITY SURFBOARDS to identify the Complainant
as a source of surfboards and related products in its advertising and signage
since 1971 and on its website in recent years. Search engine queries reveal
that this name appears as well in media and retailer references to the Complainant
and its hand-crafted surfboards, especially in Southern California where its
shops are located. The Panel therefore accepts that the Complainant has established
common law trademark rights for purposes of the UDRP in the INFINITY SURFBOARDS
mark, at least in the Southern California markets that the Complainant predominantly
At least one of the Respondent’s websites displays a disclaimer of affiliation
with the Complainant, but this is immaterial in evaluating the first element
of the Policy. An identical or confusingly similar domain name may still create
“initial interest confusion” among some Internet users and thereby
divert traffic to the Respondent’s or a third party’s websites.
See, e.g., CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul,
WIPO Case No. D2004-0988, and cases cited
therein (“The content of the respondent’s website is not material
to the question of confusing similarity for purposes of Paragraph 4(a)(i)”;
“The disclaimer on the Respondent’s website does nothing to dispel
initial interest confusion”); Arthur Guinness Son & Co. (Dublin)
Limited v. Dejan Macesic, WIPO Case No.
D2000-1698 (“The use to which the site is put has no bearing upon
the issue whether the domain name is confusingly similar to the trademark, because
by the time Internet users arrive at the Website, they have already been confused
by the similarity between the domain name and the Complainant’s mark into
thinking they are on their way to the Complainant’s Website”).
The Domain Names must be deemed identical to the Complainant’s common law INFINITY SURFBOARDS mark, since the domain name system does not accommodate spaces between words, and the top-level domain indicators “.com” and “.net” are a necessary part of the address and not distinctive for trademark purposes. The Panel concludes, therefore, that the Complainant has satisfied the first element of a UDRP Complaint with respect to the mark INFINITY SURFBOARDS.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trademark or service
mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish
the trademark or service mark at issue.”
The Respondent implicitly relies on paragraph 4(c)(i), arguing that he has used the Domain Names in connection with the bona fide sale of surfboards and other surfing products. He points to his website text advertising a “huge variety” of surfboards, an “endless collection,” to explain the choice of the word “infinity” in the Domain Names. However, this text is found on the website associated with only one of the Domain Names, <infinitysurfboards.com>, and it was apparently placed there only after the Complainant contacted the Respondent. The website associated with the Domain Name <infinitysurfboards.net> does not advertise surfboards. And the website to which the Domain Name <infinitysurfboards.com> resolves does not currently facilitate the sale of any particular surfboards; it merely lists the names (without links) of several surfboard manufacturers.
The Internet Archive “Wayback Machine” at “www.archive.org/index.php” includes samples of websites to which the Domain Name <infinitysurfboards.com> resolved at various times beginning in May 2001 (there are no archived pages associated with the Domain Name <infinitysurfboards.net>). These archived web pages reveal that <infinitysurfboards.com> initially resolved to a website labeled “Bottoms Surf” offering surfing apparel and links to other surfing sites, but not to surfboard manufacturers or retailers. By 2004, the website to which that Domain Name resolved was labeled “SaltWaterDreams” and appeared similar to the current version. However, the earliest archived version of the Respondent’s website that includes the text quoted above, referring to “top-quality surfboards” and disclaiming affiliation with the Complainant, is dated May 25, 2005. This was after the Complainant’s representative contacted the Respondent concerning the Complainant’s trademark claims. The Panel notes that the March 3, 2005 Attinger email similarly refers to the Respondent having recently added text concerning surfboards to one of his websites following Attinger’s conversations with the Respondent and the first cease-and-desist letter.
Thus, there is no evidence online that the Respondent advertised surfboards on any of the websites associated with the Domain Names until after this dispute arose. The Panel has not found any past or current version of the Respondent’s websites listing prices or models for surfboards available for sale, offering a means of purchasing surfboards through the website, or even linking to the websites of third-party surfboard manufacturers or retailers.
However, in response to the Panel’s Procedural Order No. 1, the Respondent furnished advertising and order forms for surfboards, mentioning the websites associated with both Domain Names. The Respondent states that these materials were distributed in 2001 and 2002, before the dispute arose. These documents suggest that the Respondent made at least “demonstrable preparations to use” the Domain Names in connection with a bona fide offering of goods or services, before the dispute arose (Policy, paragraph 4(a)(i)).
The Respondent’s websites to which both Domain Names resolve, and the
SaltWaterDreams website to which they are both linked, are unquestionably used
in the sale and delivery of numerous surfing-related products, which is a bona
fide offering of goods or services. What is not entirely clear is why the
Respondent chose two Domain Names referring specifically to surfboards, when
there is little evidence of surfboard advertising or sales through the websites
to which the Domain Names have resolved over the years since they were registered.
If the choice was made in a bad-faith attempt to divert Internet traffic from
the Complainant, this could not be considered use of the Domain Names in connection
with a bona fide offering of goods or services. See, e.g., Owens Corning
Fiberglas Technology, Inc v. Hammerstone, WIPO
Case No. D2003-0903. However, that issue is better addressed below, in considering
the element of bad faith.
C. Registered and Used in Bad Faith
The Complaint must establish that the Domain Names have been registered and are being used in bad faith (Policy, paragraph 4(a)(iii)). The Complainant implicitly relies on paragraph 4(b)(iv) of the Policy, which describes one example of bad-faith registration and use:
“(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your 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 your website or location
or of a product or service on your website or location.”
The Complainant infers, without any direct evidence, that the Respondent both registered and used the Domain Names to create a likelihood of confusion among Internet users familiar with the Complainant’s marks and thereby divert them to the Respondent’s website for commercial gain.
The Respondent expressly denies any prior knowledge of the Complainant or its website at “www.infinitysurfboard.com,” which the Complainant registered after the Respondent registered both of the disputed Domain Names.
The Respondent’s stated reason for registering the Domain Names is to advertise and sell an “infinite” or “endless” variety of surfboards and related products. As detailed above in discussing the Respondent’s rights or legitimate interests in the Domain Names, surfboards are not currently advertised or sold on the website to which the Domain Name <infinitysurfboards.net> resolves. Based on available archived pages, surfboards were not featured on the website to which the Domain Name <infinitysurfboards.com> resolves, nor on the websites at “www.bottomssurf.com” and “www.saltwaterdreams.com” to which it has linked, until after the Complainant asserted trademark infringement. Even now it does not appear to be possible to purchase a surfboard from the Respondent through the websites associated with the Domain Names. The sudden appearance of text about surfboards, with the claim that the Respondent has an “endless collection” of surfboards on offer, may reflect deceitfulness. This conduct might also simply represent a misguided effort to strengthen the Respondent’s defense in a UDRP proceeding or to counter potential legal claims of trademark infringement or dilution.
In any event, the documents provided by the Respondent in response to the Panel’s Procedural Order No. 1 indicate that the Domain Names were used in 2001 and 2002 in connection with offers to sell surfboards, several years before the dispute arose. The Complainant questions whether these documents were actually prepared and used in 2001 and 2002. It is not possible on the existing record to confirm that the documents were, in fact, distributed to the public at that time. However, the uncut printed page with multiple instances of a “2002 March Madness” advertising flyer is an unusual form of evidence of advertising and seems, therefore, unlikely to be a recent fabrication. Moreover, the three documents appear to reflect plausible surfboard products and pricing for the time period at issue, based on archived pages from the Complainant’s own website from that period, and the Respondent unquestionably sold, and continues to sell, a variety of surfing-related products. Therefore, the Panel accepts these three documents as evidence of the Respondent’s efforts in 2001 and 2002 to sell a wide variety of surfboards as well as surfing accessories through the websites associated with the Domain Names. This evidence supports the Respondent’s asserted good-faith reason for registering and using the Domain Names. The extent to which the Respondent’s efforts to sell surfboards have met with commercial success is not material to his intent in registering and using the Domain Names.
Considering the Complainant’s challenge to the authenticity of the Respondent’s
documentary evidence, the Panel observes that this is an issue that could be
better resolved in a judicial proceeding, which is not foreclosed by a UDRP
decision. Without persuasive indicia of deception – such as significant
internal inconsistencies in the evidence or a history of abusive domain registrations
– it is difficult for a UDRP panel to determine that a respondent has,
more likely than not, fabricated evidence. In court, a judge or jury typically
has the opportunity to assess the credibility of a witness in person, often
aided by cross-examination of the witness, and experts may be called upon to
examine challenged documents. This is not possible in an online UDRP proceeding,
which is designed to provide quick relief against egregious cases of cybersquatting.
See, e.g., Metropolitan Life Insurance Company v. HLP General Partners
Inc., WIPO Case No. D2005-1323; Countrywide
Financial Corporation, Inc. v. Aziz Popal, WIPO
Case No. D2005-0295.
Moreover, although the Complainant and the Respondent are both evidently involved
in the Southern California surfing subculture, there is insufficient evidence
of the fame of the Complainant’s common law INFINITY SURFBOARDS mark to
conclude that the Respondent “must have known” of the mark and targeted
it by registering and using the Domain Names. The Respondent denies such knowledge
and offers a different reason for choosing the Domain Names, supported by pre-dispute
evidence. Notably, the Complainant did not obtain its own domain name similar
to the disputed Domain Names until after the Respondent registered them, so
this is not a case in which the Respondent registered a variation of a domain
name already used by the Complainant, which would justify a greater suspicion
of prior knowledge. In short, there is little evidence supporting the contested
inference of deliberate targeting. See Diknah, S.L. v. WebQuest.com Inc.,
WIPO Case No. D2005-0573, and Builder’s
Best, Inc. v. Yoshiki Okada, WIPO Case
No. D2004-0748 (in order to find bad faith, “there must be some evidence
of knowledge that the Respondent knew the domain name was identical or similar
to the Complainant’s mark”).
The Complainant has the burden of persuasion on the issue of bad faith in a UDRP proceeding, and the Panel concludes that the Complainant has not met this burden.
D. Request to Transfer Complainant’s Domain Name
The Respondent requests the deletion or transfer of the Complainant’s
domain name, <infinitysurfboard.com>, to avoid confusion in the marketplace.
That request is not within the scope of this proceeding, which is confined to
the two Domain Names that are the subject of the Complaint. The Respondent may,
of course, submit his own complaint under the Policy with respect to the Complainant’s
domain name, if he believes he holds rights in an identical or confusingly similar
trademark and can satisfy the other elements of a UDRP complaint.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: May 2, 2007