Weather Underground, Incorporated v. Navigation Catalyst Systems, Incorporated et al
Filing
189
MOTION for Partial Summary Judgment by Weather Underground, Incorporated. (Attachments: # 1 Index of Exhibits, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit N, # 12 Exhibit P, # 13 Exhibit Q, # 14 Exhibit R, # 15 Exhibit Y, # 16 Exhibit AA - Part 1, # 17 Exhibit AA - Part 2, # 18 Exhibit BB, # 19 Exhibit CC, # 20 Exhibit EE, # 21 Exhibit GG, # 22 Exhibit HH, # 23 [PLACED UNDER SEAL PURSUANT TO 192 ] Exhibit II, # 24 Exhibit JJ, # 25 Exhibit KK, # 26 Exhibit LL - Part 1, # 27 Exhibit LL - Part 2, # 28 Exhibit MM, # 29 Exhibit NN) (Schaefer, Enrico) Modified on 8/2/2011 (DWor).
DECISION
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NATIONAL ARBITRATION FORUM
DECISION
The Weather Underground, Inc. v. Navigation Catalyst Systems, Inc
Claim Number: FA0808001221002
PARTIES
Complainant is The Weather Underground, Inc. (“Complainant”), represented by Brian A.
Hall, Michigan, USA. Respondent is Navigation Catalyst Systems, Inc (“Respondent”),
California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are , ,
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, , and , registered
with Basic Fusion, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August
18, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 19,
2008.
On August 25, 2008, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum
that the , , ,
, , ,
, , ,
, , ,
, , ,
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, , ,
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, , ,
, , ,
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, , ,
, and domain names are registered with Basic
Fusion, Inc. and that Respondent is the current registrant of the names. Basic Fusion, Inc. has
verified that Respondent is bound by the Basic Fusion, 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 September 2, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of September 22, 2008 by
which Respondent could file a response to the Complaint, was transmitted to Respondent via email, post and fax, to all entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@qwunderground.com,
postmaster@swunderground.com, postmaster@udergroundweather.com,
postmaster@undegroundweather.com, postmaster@undergoundweather.com,
postmaster@undergroudweather.com, postmaster@undergroundwaether.com,
postmaster@undergroundwweather.com, postmaster@undergrounweather.com,
postmaster@watherunderground.com, postmaster@weaherunderground.com,
postmaster@weahterunderground.com, postmaster@weartherunderground.com,
postmaster@weatehrunderground.com, postmaster@weatgerunderground.com,
postmaster@weathernuderground.com, postmaster@weatherunbderground.com,
postmaster@weatherundergound.net, postmaster@weatherundergriund.com,
postmaster@weatherundergrouind.com, postmaster@weatherundergroumd.com,
postmaster@weatherundergrounf.com, postmaster@weatherunderround.com,
postmaster@weatherundergrpound.com, postmaster@weatherundewrground.com,
postmaster@weatherundreground.com, postmaster@weathrunderground.com,
postmaster@weatherunferground.com, postmaster@wewatherunderground.com,
postmaster@wetaherunderground.com, postmaster@wundertground.com,
postmaster@wunederground.com, postmaster@wunnderground.com,
postmaster@wweatherunderground.com, postmaster@winderground.com,
postmaster@wumderground.com, postmaster@wundeerground.com,
postmaster@wunderfround.com, postmaster@wundergtound.com,
postmaster@wundergroundr.com, and postmaster@wwwund.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the
parties a Notification of Respondent Default.
On September 30, 2008, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
On October 10, 2008, Respondent submitted an untimely Response indicating that it “was not
aware of complainant’s trademarks” and “agreed to transfer over all domains in dispute.” The
Panel, in its discretion, will consider Respondent’s Response.
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Having reviewed the communications records, the Administrative Panel (the "Panel") finds that
the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules
for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent."
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s , ,
, , ,
, , ,
, , and domain
names are confusingly similar to Complainant’s WUNDERGROUND.COM mark;
Respondent’s , ,
, ,
, ,
, ,
, ,
, ,
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, ,
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, ,
, ,
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, , and
domain names are confusingly similar to
Complainant’s THE WEATHER UNDERGROUND mark; and Respondent’s
domain name is confusingly similar to Complainant’s WUND.COM
mark.
2. Respondent does not have any rights or legitimate interests in the
, , ,
, , ,
, , ,
, , ,
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, ,
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, ,
, ,
, , and
domain names.
3. Respondent registered and used the ,
, , ,
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domain names in bad faith.
B. Respondent has agreed to transfer over all the disputed domain names.
FINDINGS
Complainant provides online weather services under the THE WEATHER UNDERGROUND,
WUNDERGROUND.COM, and WUND.COM marks. Complainant registered the THE
WEATHER UNDERGROUND mark with the United States Patent and Trademark Office
(“USPTO”) on December 7, 1999 (Reg. No. 2,297,683). Complainant registered the
WUNDERGROUND.COM mark with the USPTO on February 29, 2000 (Reg. No. 2,324,272).
Complainant has used the THE WEATHER UNDERGROUND and WUNDERGROUND.COM
marks continuously in commerce since at least 1995, when Complainant started offering real-time
weather condition reporting to users around the world. Complainant has used the WUND.COM
mark continuously in commerce to market its weather services since at least May 29, 2003, when
it registered the mark as a domain name. The website at is now used by over
108,000 people each month.
Respondent registered the disputed domain names between the dates of July 6, 2004, and January
15, 2008. Respondent maintains websites at the disputed domain names that features links to
websites offering the services of Complainant’s competitors.
DISCUSSION
Paragraph 15(a) of 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
Complainant must prove each of the following three elements to obtain an order that a domain
name should be cancelled or transferred:
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(1) the domain name registered by Respondent is identical or confusingly similar to a trademark
or service mark in which Complainant has rights; and
(2) 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
The Panel finds that Complainant has established rights in the THE WEATHER
UNDERGROUND and WUNDERGROUND.COM marks for purposes of Policy ¶ 4(a)(i)
through its trademark registrations with the USPTO. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights
in the mark.”).
Complainant contends that it has established common law rights in the WUND.COM mark
pursuant to Policy ¶ 4(a)(i). Complainant registered “WUND.COM” as a domain name on May
29, 2003, and has used that domain name to bring its weather condition reporting services to
Internet customers continuously for over five years. The Panel finds that Complainant’s use of
the WUND.COM mark has given that mark secondary meaning and therefore has established
Complainant’s common law rights in that mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose
v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was established); see also S.A.
Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding
that the complainant established rights in the descriptive RESTORATION GLASS mark through
proof of secondary meaning associated with the mark).
Complainant contends that Respondent’s , ,
, , ,
, , ,
, , and domain names are
confusingly similar to its WUNDERGROUND.COM mark. These disputed domain names differ
from Complainant’s WUNDERGROUND.COM mark in two main ways: (1) either a letter has
been added to the mark, or the mark has been misspelled; and (2) the generic top-level domain
(“gTLD”) “.com” has been added. Neither the addition of a letter to a mark nor the misspelling of
a mark sufficiently distinguish a domain name from an incorporated mark for the purposes of
Policy ¶ 4(a)(i). The addition of a gTLD also does not reduce the likelihood of confusion between
the domain name and the mark because every domain name must contain a gTLD. The Panel
finds that Internet visitors are still likely to confuse these disputed domain names with
Complainant’s WUNDERGROUND.COM mark despite these changes, and that Respondent’s
, , ,
, , ,
, , ,
, and domain names are therefore not sufficiently
distinguished from Complainant’s WUNDERGROUND.COM mark pursuant to Policy ¶ 4(a)(i).
See Am.Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16,
2000) (finding that the respondent’s domain name, , is confusingly similar
to the complainant’s famous AMERICA ONLINE mark); see also Toronto-Dominion Bank v.
Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names
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and are virtually identical to the complainant’s TD
WATERHOUSE name and mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330
(Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant contends that Respondent’s ,
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