Complainant is Yosemite / Bass Lake Activities, Inc., United States of America (“United States”), represented by McCormick Barstow LLP, United States.
Respondent is Miller’s Landing Resort, Inc., United States, represented by Cohen Business Law Group, P.C., United States.
The disputed domain name <basslakewatersports.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2020. On March 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2020. The Center received an email communication from Respondent on April 20, 2020. On April 20, 2020, the Center instructed Complainant that it could seek a suspension of the proceeding pursuant to paragraph 17 of the Rules, if the Parties were interested in exploring settlement options.
On April 24 and 25, 2020, the Center received email communications from Respondent and Complainant, respectively, instructing the Center to proceed with the administrative proceeding. Respondent did not formally respond to the Complaint. On April 27, 2020, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed to panel appointment.
The Center appointed Robert A. Badgley, Carol Anne Been, and Lorelei Ritchie as panelists in this matter on May 11, 2020. The Panel finds that it was properly constituted. Each member of 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.
Complainant rents boats and water sport equipment (such as jet skis, paddle boards, kayaks, canoes, etc.) on a California lake called Bass Lake. Complainant has been doing so since, it appears, 1996. Effective February 10, 2020, Complainant obtained a trademark registration from the State of California for BASS LAKE WATERSPORTS (Reg. No. 02004477). Complainant had applied for this mark 11 days before, on January 30, 2020. The geographic descriptor “Bass Lake” is disclaimed. The date of first use was stated to be May 1, 1996. The California trademark registration was issued on March 5, 2020.
For many years, Complainant’s main website has been at the address <basslakeboatrentals.com>. Annexed to the Complaint are various screenshots of that website at various points in time, compiled in the first instance as evidence presented to the California Secretary of State in March 2020 that the mark BASS LAKE WATERSPORTS had acquired distinctiveness. The Secretary of State issued the state trademark registration, and Complainant asserts that the fact of issuance indicates that the Secretary of State necessarily found that the mark had acquired distinctiveness. In any event, the evidence presented by Complainant in this compilation for the Secretary of State, and most particularly the screenshots of Complainant’s website, shows a mixed bag of how the claimed mark was actually used over time.
The 1996 claimed first use appears to derive from the fact that Complainant made some tee-shirts for its employees which contained, among other content, the terms “Bass Lake Watersports” in all capital letters. For years, however, it appears, based on the evidence it presented to the California Secretary of State and again to the Center in this proceeding, that Complainant used, at various times, “Bass Lake Boat Rentals”, “Bass Lake Boat Rentals & Water Sports” [note that “water sports” is two words, not one], “Bass Lake Water Sports”, and “Bass Lake Water Sports and Marina” to identify its business and its services.
Indeed, the screenshot of Complainant’s website as of January 30, 2003 – the last screenshot in the record prior to Respondent’s registration of the Domain Name on March 20, 2005 – shows that Complainant used the phrases “Bass Lake Water Sports” and “Bass Lake Water Sports and Marina”. According to the record in this case, the first time the terms “Bass Lake Watersports” in all capital letters [with “watersports” as a single word] appeared on Complainant’s website was July 2, 2006, more than a year after the Domain Name was registered.
Screenshots from Complainant’s website in 2009, 2010, and 2012 consistently show Complainant referring to its business as “Bass Lake Water Sports” [two words]. According to Complainant, back in 2005, when the Domain Name was registered, dictionaries did not recognize the word “watersports.” Complainant asserted this to the California Secretary of State in support of its claim that its alleged mark BASS LAKE WATERSPORTS had acquired distinctiveness.
Respondent has operated a resort since 1982, several miles down the shore of the same Bass Lake on which Complainant operates. Respondent’s main website is located at <millerslanding.com>. That website states, in part: “Our Marina offers a variety of exciting water sports activities with the best boat rentals on Bass Lake.”
The Domain Name was registered on March 20, 2005. As of February 2, 2011, the Domain Name resolved to a website advertising Respondent’s resort, and advising that boating, kayaking, and other activities were favorite activities on Bass Lake.
As of May 25, 2013, the Domain Name resolved to a website featuring the banner: “Thank you for inquiring about WATER SPORTS ON BASS LAKE.” Below some photos of people boating, presumably on Bass Lake, Respondent’s site said: “BEST BOATS, BEST PRICES, BEST CUSTOMER SERVICE ON BASS LAKE.” The page also stated: “To purchase this domain please contact Kevin Miller [followed by a phone number].”
As of May 16, 2014, the Domain Name resolved to a blank page. As of the filing of the Complaint in this proceeding, it resolved to a parking page apparently set up by the Registrar. The parking page contained various hyperlinks, including “Boat Rental” and “Pines Resort Bass Lake.”
On March 14, 2011, Complainant’s counsel sent Respondent a cease-and-desist letter, stating in part as follows:
“Our client first registered dba ‘Bass Lake Water Sports’ as a fictitious business name with the County of Madera in 2003 and since then has continuously operated under it. The name has acquired a distinctive character uniquely associated with our client’s business located at the Pines Resort Marina and is well known among visitors to the greater Yosemite area, both nationwide and internationally, Such name is also a trademark and service mark (the ‘mark’) under the federal Lanham Act (aka the Trademark Act, 15 U.S.C. §§1051-1141), which provides protection to ‘identify and distinguish’ unique goods and services of one person or business from those of another. By utilizing the above-referenced domain name, you are illegally creating consumer confusion and infringing upon our client’s protected mark.”
There is no reference in this letter to any use by Complainant of the claimed trademark going back to 1996, as would be stated in Complainant’s California trademark application nine years later. Rather, Complainant asserts in this letter that it has used “Bass Lake Water Sports” as a business name since 2003.
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent sent two email messages to the Center on April 20 and 24, 2020 regarding the proceeding and requesting a finding of Reverse Domain Name Hijacking, but did not formally respond to Complainant’s allegations.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Normally speaking state trademark registrations are not granted the same deference as national trademark registrations. As laid out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.2, “When considering UDRP standing, panels tend to carefully review certain types of automatic/unexamined registered trademarks such as US state registrations (as opposed to US federal registrations); these are not accorded the same deference and may not on their own satisfy the UDRP’s ‘rights in a mark’ standing test.”
Be that as it may, given that the parties are seemingly involved in a broader (trademark, unfair competition) dispute and clearly are aware of each other (note also the finding below concerning distinctiveness when the Domain Name was registered), the Panel is prepared to find that for purposes of standing to bring the present proceeding, that Complainant has rights in the mark BASS LAKE WATERSPORTS through registration with the State of California. The Panel also finds that the Domain Name is identical to that mark.
Complainant has established Policy paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel need not decide this element, given its ruling on the “bad faith” element below.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Complainant has not carried its burden of proving that Respondent registered and used the Domain Name in bad faith within the meaning of the Policy. Complainant’s mark BASS LAKE WATERSPORTS is a descriptive state trademark only and therefore a weak mark entitled to little deference in the circumstances of this case. The Panel here has no reason to question, and need not make a finding as to the decision by the California Secretary of State to issue a registration for that mark three months ago, but it is far from clear that the mark had acquired distinctiveness as of March 20, 2005, when Respondent registered the Domain Name. The record here at least shows that, prior to the date of Domain Name registration, Complainant rarely used BASS LAKE WATERSPORTS as a trademark. There is little or any evidence of record that consumers at the time uniquely or even predominantly associated that mark exclusively with Complainant’s services, if such evidence exists. This is hardly surprising, given that Complainant’s business is renting water sports equipment for use on Bass Lake.
The Panel also notes that Respondent rents water sports equipment for use on Bass Lake, and hence Respondent’s use of the Domain Name, at various points over time, in a descriptive sense toward that goal appears to be more legitimate than suspicious, even though the Parties are competitors.
In sum, this appears to be a dispute ill-suited for disposition of the UDRP, which is best applied to clear cases of cybersquatting. Whether Complainant could make out a case for trademark infringement against Respondent in a court of law or other forum is not for the Panel to say. In any event, the record here does not reflect a clear case of cybersquatting.
Complainant has not established Policy paragraph 4(a)(iii). The Complaint fails.
At the same time, regarding Respondent’s claim for Reverse Domain Name Hijacking, the Panel would note that Respondent – a competitor of Complainant – trades as Miller’s Landing Resort, so it does not exactly seem to have found its way into this dispute with clean hands; that request by Respondent is therefore denied.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Carol Anne Been
Date: May 25, 2020
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