ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: SMOKY MOUNTAIN KNIFE WORKS
Respondent: DEON CARPENTER
Cases Numbers: AF-230a;
AF-230b
Contested Domain Names: AF-230a: smokymountainknife.net;
AF-230b: smokymountainknives.com
Panel Member: Jonathan S. Bain, Esq.
 

 

1. Parties and Contested Domain Name

This proceeding is the result of a complaint by Smoky Mountain Knife Works (the "Complainant") against Deon Carpenter (the "Respondent") pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN"). The domain names which are the subject of this dispute are smokymountainknives.com and smokymountainknife.net (collectively, the "Contested Domain Names"). The relief sought by the Complainant is the transfer of the Contested Domain Names from the Respondent to the Complainant.

2. Procedural History

The procedural history of this case is set forth in detail in the June 20, 2000 letter from the Clerk of the Disputes.org/eResolution Consortium ("DeC") to this Panel, a copy of which is attached hereto as Exhibit A.

3. Factual Background

Complainant operates a retail store in Sevierville, Tennessee, U.S.A., that specializes in fine knives and related accessories. Complainant also operates an online catalog at www.smokymountainknife.com that offers similar merchandise. Complainant has used the trademark SMOKY MOUNTAIN KNIFE WORKS since 1978, and has obtained at least three federal trademark registrations for various variants of this mark, the earliest in 1989.

Respondent operates an online catalog at www.worldofweapons.com that specializes in fine knives and related accessories.

On May 17, 1999, Complainant registered the domain smokymountainknife.com with Network Solutions, Inc. ("NSI"). On August 27, 1999, Respondent registered the domain smokymountainknives.com with NSI. On September 1, 1999, Respondent registered the domain smokymountainknife.net with NSI. Finally, while both parties neglected to mention it in their pleadings, the Panel takes judicial notice of the fact that Respondent registered the domain smokymountainknifeworks.com with NSI on May 13, 2000. (The latter domain is not subject to this proceeding).

Several months ago, Respondent was party to another proceeding brought pursuant to the Policy.1 According to the decision rendered in that case, Respondent registered the domain blueridgeknife.com on September 6, 1999. The panel in Martin v. Carpenter held that this domain was confusingly similar to the trademarks of the complainant, Blue Ridge Knives, that Respondent had no legitimate interest in the domain, and that Respondent had registered the domain in bad faith, and the panel ordered that the domain be cancelled.

At the time that Respondent filed its response in the instant proceeding, both of the Contested Domain Names resolved to www.christianity.com, a web site which has not fully launched, but which appears to be a special-interest portal and/or community site for Christian churches and ministries. Respondent does not appear to be the owner or sponsor of this site, or to have any other formal affiliation with it. Sometime after June 21, 2000 and prior to the date of this decision, however, the Contested Domain Names were redirected to point to Respondent's commercial site at www.worldofweapons.com. The record before this Panel does not indicate what site(s), if any, the Contested Domain Names resolved to prior to Respondent receiving notice of this dispute.

4. Parties' Contentions

a. Complainant

The Complainant asserts that the Contested Domain Names are confusingly similar to Complainant's trademarks, tradename and domain name, and that prospective buyers are likely to be misled into a mistaken belief that Respondent's web site is affiliated with or has been licensed or approved by Complainant. Complainant further asserts that Respondent "has made a business of registering the trademarks of other companies and individuals in the knife industry with the intent to reap short term profits before being required to terminate such infringement", and cites the Blue Ridge Knife proceeding as evidence thereof. Finally, Complainant asserts that Respondent was given the opportunity to "voluntarily transfer" the Contested Domain Names to Complainant, but declined to do so.

b. Respondent

Respondent asserts that the Contested Domain Names are not confusingly similar to Complainant's trademarks, since Complainant does not have specific trademark registrations for "Smoky Mountain Knife", " Smoky Mountain Knife Sales", or "Smoky Mountain Knives". Respondent further asserts that he intends to use the Contested Domain Names in connection with "my company Smoky Mountain Knife Sales".

Respondent characterizes the result in the Blue Ridge Knife proceeding as a default judgement due to a late response2. He also accuses Lalos & Keegan (Complainant's counsel in the instant case) of inducing companies with domains similar to Respondent's to engage in reverse-hijacking of Respondent's domains.

Finally, Respondent asserts that, since the Contested Domain Names are not linked to any online store, and are linked to a Christian site3 , this constitutes a legitimate use, since Respondent is "an ordained minister and the name [sic] are being used to promote Christianity."

5. Discussion and Findings

Section 4(a) of the Policy sets forth the three elements which must be proven by a complainant seeking relief under the Policy:

(a) The domain name in dispute must be "identical or confusingly similar to a trademark or service mark in which the complainant has rights";

(b) The respondent must have "no rights or legitimate interests in respect of the domain name"; and

(c) The domain name must have "been registered and is being used in bad faith".

We shall address each element in turn.

a. Confusing Similarity

Since neither of the Contested Domain Names are identical to either of Complainant's trademarks, the first question before us is to determine what standard of inquiry to apply in determining whether the Contested Domain Names are "confusingly similar" to Complainant's trademarks. The classic test for trademark infringement is likelihood of confusion4 ; the question is whether "confusingly similar" means something different than "likely to cause confusion". The Anticybersquatting Consumer Protection Act5 ("ACPA"), which is intended to address abusive domain registrations which are in many ways similar to those governed by the Policy, also uses the phrase "confusingly similar". At least one court6 has held that the phrase "confusingly similar", at least in the context of the ACPA, implies a narrower test than is required to establish full-blown likelihood of confusion: Rather than performing a detailed analysis of the totality of the circumstances in the relevant markets, a trier of fact need merely perform a lexical or alphabetic comparison of the domain name and the trademark in question7 . As a matter of policy, this Panel believes that, since the Policy, like the ACPA, is intended to reach a limited class of abusive domain registrations, including those where the respondent simply "parks" a domain without using it in commerce8, it would be inappropriate to require complainants to make a full showing of likelihood of confusion9. It is not necessary to reach that issue in the instant dispute, however, since Respondent's use of the Contested Domain Names appears to satisfy even the more stringent test of likelihood of confusion.

Not only are the Contested Domain Names virtually identical to Complainant's trademarks10, but Respondent and Complainant sell closely related goods, through very similar channels, to very similar buyers11. Furthermore, as discussed below12, Respondent's intent in registering the Contested Domain Names was, at least in part, to cause confusion with Complainant's trademarks.

Based on the foregoing factors, we find that the Contested Domain Names are not only confusingly similar to the trademarks and tradename of Complainant, but are highly likely to cause confusion with such marks.

b. Legitimate Interest

Respondent has asserted that he intends to use the Contested Domain Names in connection with a business called "Smoky Mountain Knife Sales". Under Section 4(c)(i) of the Policy, the use of a domain name in connection with a bona fide business (or demonstrable preparations for such use), if it occurs prior to notice of a dispute, can constitute grounds for a finding of a legitimate interest in the domain name. Respondent, however, has proffered no credible evidence of such usage or demonstrable preparations for such usage. On the record before us, it would appear that Respondent's principal business identity is World of Weapons, and that Respondent intends to use the Contested Domain Names as aliases for the web site associated with this tradename.

Respondent further asserts that his use of the Contested Domain Names is legitimate, since (at least at the time that Respondent filed his response), the Contested Domain Names resolved to as www.christianity.com. While a site such as www.christianity.com, in and of itself, could certainly constitute non-commercial or fair use which would fall within the safe harbor set forth in Section 4(c)(iii) of the Policy, we must examine the nature of Respondent's relationship with this site. First of all, Respondent has demonstrated no particular affiliation or relationship with www.christianity.com, other than as a site which he presumably approves of. Second, there is no lexigraphic, mnemonic or other connotative nexus between the Contested Domain Names and www.christianity.com; this is not a case where a domain registrant chooses a domain name that is confusingly similar to a registered trademark so as to provide political commentary, satire, or other fair-use communications associated with the owner of such trademark13. Given the wide range of available domain names which have strong connotations with Christianity, Respondent has shown no particular reason why he was compelled to select two domain names that are confusingly similar with one of his competitors in the weapons trade as the aliases for a Christian web site. And finally, even if Respondent's use of the Contested Domain Names as links to www.christianity.com did constitute fair use, Respondent has ceased such use, and now uses the Contested Domain Names as aliases to www.worldofweapons.com, Respondent's commercial site.

In light of (i) the lack of any credible evidence that the Respondent did business under the name "Smoky Mountain Knife Sales" (or undertook any demonstrable preparations to do so) prior to notice of this dispute, (ii) the predominance of Respondent's existing business identity www.worldofweapons.com, and (iii) the vacillating association of the Contested Domain Names, first with a Christian site unrelated to Respondent or his business, then with Respondent's commercial www.worldofweapons.com site, we find that Respondent has no rights or legitimate interests in respect of the Contested Domain Names.

c. Bad Faith

Section 4(b) of the Policy sets forth the following non-exclusive indicia of bad-faith registration and/or use:

(i) The respondent registered the domain name for the purpose of selling it to the complainant or a competitor of the complainant;

(ii) The respondent has engaged in a pattern of registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name;

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

(iv) The respondent has intentionally attempted to attract users to its web site by using the domain name to create a likelihood of confusion with the complainant's trademark.

While the absence of one or all of these indicia, without more, does not necessarily demonstrate good faith, the presence of one or more of them is strong evidence of bad faith.

(i) Registering for the Purpose of Selling

Complainant has offered no specific evidence that would suggest that Respondent registered the Contested Domain Names primarily for the purpose of selling or otherwise transferring them to Complainant.

(ii) Preventing a Trademark Owner from Reflecting the Mark

Section 4(b)(ii) of the Policy is intended to prevent a domain registrant from abusing the limited number of names available in the domain name-space to block a trademark owner from obtaining a domain name that corresponds to its trademark. Thus, liability can attach even if the domain registrant has simply "parked" the domain, and is making no active use of it. Due to the ease with which an innocent domain registrant can create an inadvertent collision with an existing trademark, however, the Policy requires a pattern of such conduct in order to establish bad faith.

Such a pattern of abusive domain registrations can occur along two distinct dimensions:

First, a domain registrant can operate "horizontally", targeting multiple entities, perhaps in multiple industries14.

Second, a domain registrant can operate "vertically", targeting a single entity, but registering multiple domains which reflect either different aspects of the target's business, or different alphabetic variations of the target's trademark15.

In the instant case, Respondent has engaged in both types of conduct.

Respondent's pattern of horizontally abusive registrations is illustrated by its earlier registration of the domain blueridgeknife.com. The Panel in that case was unequivocal in finding that Respondent had acted in bad faith, notwithstanding the presence of several mitigating circumstances which are absent in the instant case16, and even though it acted without the benefit of the further course of conduct in respect of Smoky Mountain Knife Works which is before this Panel.

Many cases involving horizontally abusive registrations have featured a much larger number of targets17 than the two competitors which Respondent has targeted. This raises the question: Are two entities sufficient to establish a pattern of horizontally abusive registrations? A pattern of registering even a very large number of domains which are confusingly similar to registered trademarks may well be innocent, particularly where the trademarks in question are generic words, and the domain registrant is not a participant in the industry in which the generic word has acquired secondary meaning18. A domain registrant should be held to a higher standard, however, when it registers multiple domains which target a single industry as to which the domain registrant has a sophisticated understanding19. In the instant case, not only does the Respondent presumably have a sophisticated understanding of the cutlery industry, but Respondent has actively targeted several of its most prominent direct competitors. We find this pattern of conduct, even without more, to be persuasive evidence of bad faith.

In addition to a pattern of horizontally abusive registrations, however, Respondent has also engaged in a pattern of vertically abusive registrations. On September 1, 1999, Respondent registered the domain smokymountainknife.net. This registration is particularly significant, as commercial entities are encouraged to, and typically do, favor the *.com gTLD, only using the *.net gTLD for duplicative registrations. One would expect an innocent registrant who wished to use the name smokymountainknife to have first registered it in the *.com gTLD - but of course an innocent registrant would have encountered Complainant's registration of smokymountainknife.com, which was registered on May 17, 1999. In point of fact, it seems apparent that Respondent encountered Complainant's registration on August 27, 1999, when Respondent initially registered smokymountainknives.com; Respondent was forced to change "knife" to "knives" in order to create an alphabetically distinct domain that was still as similar to Complainant's domain as possible. Five days later, when Respondent registered its smokymountainknife.net domain, rather than retaining the plural form, as it would have been expected to do if the *.net version were intended as a good-faith duplicate of its *.com domain, Respondent reverted from the plural to the singular, so as to create a *.net domain that was as similar as possible to Complainant's domain.

Given this pattern of minor alphabetic variations on Complainant's domain name, we find it an eminently reasonable inference that Respondent had actual notice of Complainant's registration of the smokymountainknife.com domain as early as August 27, 1999. Such a pattern of registrations, without more, might be sufficient to support a finding of bad faith. Respondent, however, did not stop there: On May 13th, 2000, Respondent registered the domain smokymountainknifeworks.com.

This latest registration is particularly apposite to the question of bad faith. If we view the evidence in the light most favorable to the Respondent and assume, arguendo, that prior to receiving notice of this dispute, Respondent was operating a bona-fide business under the name "Smoky Mountain Knife Sales", or had bona-fide plans to do so, it is possible that Respondent's domain registrations on August 27, 1999 and September 1, 1999 were innocent. Even if, as we infer, Respondent had actual notice of Complainant's domain registration at this point in time, and even if, as we further infer, Respondent was also aware of Complainant's related trademarks (whether common-law or registered), Respondent may have had a good-faith belief that, as Respondent argues in his pleadings, smokymountainknives.com and smokymountainknife.net are not confusingly similar to any of Complainant's trademarks. The fact that this belief is erroneous does not, in and of itself, constitute bad faith. If we continue to assume, arguendo, that Respondent was acting in good faith, it's reasonable to suppose that Respondent might have wished to register a longer version of his two previously registered domains so as to distinguish Respondent's business from that of Complainant, since both Complainant's tradename and Respondent's putative tradename share the first three out of their four words, and both businesses use a concatenation of these three words to form their domain names. Had Respondent done so in good faith, however, one would have expected Respondent to register a domain such as smokymountainknifesales.com; instead, Respondent registered smokymountainknifeworks.com, which not only creates a more awkward domain name that moves further afield from Respondent's putative tradename, but also happens to be identical to Complainant's registered trademark.

It is evident to this Panel that Respondent, not content with registering a series of domains which "fenced in" Complainant's existing domain, also undertook to preclude Complainant from using the domain as to which Complainant arguably has the strongest rights of all: Namely, a verbatim, letter-for-letter transcription of Complainant's full, four-word trademark. Such a pattern of systematically registering multiple variants of Complainant's trademark is a paradigmatic example of bad-faith registrations intended to foreclose Complainant from reflecting the mark in a corresponding domain name20.

(iii) Disrupting the Business of a Competitor

While the registration of multiple domains for the purpose of preventing Complainant from reflecting its trademarks in a corresponding domain name certainly has the effect of disrupting Complainant's business, and Complainant is certainly a competitor of Respondent, Complainant has offered no specific evidence that would independently satisfy the test set forth in Section 4(b)(iii) of the Policy.

(iv) Likelihood of Confusion

The test for bad faith set forth in Section 4(b)(iv) of the Policy has three elements:

1. A respondent must intentionally attempt to attract visitors to its web site,

2. For commercial gain,

3. By creating a likelihood of confusion with the complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the respondent's web site or the products offered there.

As discussed above21, we find that the Contested Domain Names are highly likely to cause confusion as to the owner or source of Respondent's web site. The remaining question, then, is whether Respondent is intentionally exploiting this confusion to attract visitors to its web site for commercial gain. Had Respondent simply parked the Contested Domain Names, or pointed them at a non-commercial site (such as www.christianity.com), its actions might not have satisfied this test; but given that Respondent is currently using the Contested Domain Names to direct traffic to its online store, we find that Respondent's actions constitute bad faith under Section 4(b)(iv) of the Policy, as well.

(v) General

We find that Respondent's conduct satisfies the specific tests for bad-faith registration and use set forth in Sections 4(b)(ii) and 4(b)(iv) of the Policy. More generally, even if Respondent's conduct did not literally satisfy any of the specific (and non-exclusive) tests set forth in the Policy, we find there to be ample evidence, based upon the totality of the circumstances, that Respondent's registration and use of the Contested Domain Names has been undertaken in bad faith.

6. Conclusions

We find each of the three elements necessary to sustain a successful claim under the Policy to be present in the instant case. Furthermore, Respondent has failed to assert any credible defenses to such a claim, including without limitation those enumerated in Section 4(c) of the Policy.

Accordingly, the Complainant's request is granted, and in accordance with Section 3(c) of the Policy, this Panel orders that the domain names smokymountainknives.com and smokymountainknife.net be transferred to Complainant Smoky Mountain Knife Works.

Entered and signed on the 3rd day of July, 2000, in Gloucester, Massachusetts, U.S.A. by Jonathan S. Bain, Esq.

(s) Jonathan S. Bain

Presiding Panelist

1) Phillip S. Martin, d/b/a Blue Ridge Knives v. Deon Carpenter, NAF-FA0002000094311 (NAF, April 25, 2000).

2) The published decision in Martin v. Carpenter does not support this contention: While the decision mentions a late response by Respondent, it is also clear that the Panel accepted Respondent's response and gave it due consideration.

3) As noted in Section 3, supra, this was true at the time that Respondent filed its pleadings, but appears to have changed during the pendency of this decision.

4) Polaroid Corp. v. Polarad Elecs. Corp, 287 F.2d 492 (2d Cir. 1961), cert. denied, 368 U.S. 820 (1961).

5) 15 U.S.C. 1125(d).

6) Northern Light Technology, Inc. v. Northern Lights Club, No. CIV A. 99-11664-DPW (D. Mass., March 21, 2000).

7) One way of articulating this distinction between "confusingly similar" and "likelihood of confusion" is that the former looks to whether "people will confuse the marks", while the latter looks to whether "the marks will confuse people." In re. West Point-Pepperell, Inc., 468 F.2d 200 (C.C.P.A. 1972).

8) Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO, February 18, 2000).

9) In appropriate cases, of course, complainants may elect to prove likelihood of confusion as a necessary predicate for the bad-faith test set forth in Section 4(b)(iv) of the Policy, but they should not be required to do so in all cases.

10) Respondent makes much of the fact that both the Contested Domain Names and Complainant's existing domain name are substrings of Complainant's registered trademarks. It is a common practice however, in naming domains, to truncate or abbreviate a portion of the domain owner's tradename, particularly when that tradename is lengthy or contains largely descriptive components. Such abbreviations have generally not been held to substantially affect the analysis of confusion under the Policy. Royal Bank of Canada v. D3M Domain Sales, AF-0147 (DeC, May 1, 2000) (respondent's domain, "royalbankfinancial.com", is confusingly similar to complainant's trademark "Royal Bank Financial Group", notwithstanding the omission of the word "Group").

11) While a sophisticated buyer of knives will probably realize eventually, based on the differences in the professionalism of the two sites, that Respondent's web site is not sponsored by Complainant, Complainant may still lose some number of sales to initial-interest confusion. Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir., April 22, 1999).

12) Section 5(c)(4), infra.

13) Compare Bally Total Fitness Holding Corporation v. Andrew S. Faber, 29 F. Supp. 2d 1161 (C.D.Cal., November 23, 1998). Note, however, that even in such cases, courts have been loath to subordinate a plaintiff's trademark-infringement and unfair-competiton claims to a defendant's First Amendment or fair-use rights: Cf. Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J., March 6, 1998); Planned Parenthood Federation of America v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y., March 19, 1997).

14) Panavision v. Toeppen, 141 F.3d 1316 (9th Cir., April 17, 1998).

15) Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49 F.Supp.2d 496 (E.D. Va., May 19, 1999).

16) Respondent appears to have been acting as a distributor or reseller for Blue Ridge Knives, among other things.

17) E.g., Panavision v. Toeppen, 141 F.3d 1316 (9th Cir., April 17, 1998).

18) Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir., August 23, 1999).

19) Potomac Mills, L.P. v. Gambit Capital Management, D2000-0062 (WIPO, 2000) (shopping malls); Adobe Systems v. Domain OZ, D2000-0057 (WIPO, March 22, 2000) (computer industry).

20) Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49 F.Supp.2d 496 (E.D. Va., May 19, 1999); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., D2000-00133 (WIPO, April 13, 2000).

21) Section 5(a), supra.

Exhibit A

Procedural History

Name: Jonathan Bain

Re: "smokymountainknife.net"
"smokymountainknives.com"
DeC AF-230 (a,b)
_________________________

Sir,

You will find herein all the documentation related to the above-described matter. Furthermore, here is a summary and procedural history of the case in which you have agreed to act as lead panelist:

Summary:

File number: AF-230 (a,b)
Complainant: Smoky Mountain Knife Works
Respondent: Deon Carpenter
Panel: 1 Member Panel
Remedy sought: Transfer

Procedural History:

The electronic version of the Complaint form was filed on-line through eResolution's Website on May 23, 2000. The hardcopy of the Complaint Form was received on May 30, 2000. Payment was received on the same date.

Upon receiving all the required information, eResolution's clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information but the billing contact, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on May 23, 2000. The requested information was received May 29, 2000.

The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 31, 2000. That date is the commencement date of the administrative proceeding.

On May 31, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

On June 14, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on June 19, 2000.

On June 20, 2000, the Clerk's Office contacted Mr. Jonathan Bain, and requested that he acts as panelist in this case.

On June 20, 2000, Mr. Bain, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On June 20, 2000, the Clerk's Office forwarded a user name and a password to Mr. Jonathan Bain, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On June 20, 2000, the parties were notified that Mr. Jonathan Bain had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 3, 2000.

Should you have any questions, please do not hesitate to contact your Case Administrator.