WIPO Domain Name Decision: D2007-1106

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Tulalip Tribes of Washington v. Apple Investment, Patrick Johnson

Case No. D2007-1106

1. The Parties

Complainant is The Tulalip Tribes of Washington (“Complainant” or the “Tribe”), a federally recognized Indian Tribe located in Tulalip, State of Washington, United States of America.

Respondent is Apple Investment, Patrick Johnson (“Respondent”), an individual residing in Marysville, State of Washington, United States of America.

2. The Domain Names and Registrar

The domain names at issue are <tulaliphotel.com> and <tulalipresortcasino.com> (the “Disputed Domain Names”). The registrar is Register.com (“Registrar”) located in New York, State of New York, United States of America.

3. Procedural History

On July 27, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On July 31, 2007, the Center received hardcopy of the Complaint. On August 1, 2007 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On August 1, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Disputed Domain Names and that the Disputed Domain Names are registered in the Respondent’s name.

The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On August 8, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On August 19, 2007, the Center received the Response of Respondent via email. On August 20, 2007, the Center received the Response of Respondent in hardcopy.

On August 31, 2007 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of the Panel.

4. Factual Background

The Complainant in this action is The Tulalip Tribes of Washington which is a federally recognized Indian Tribe, 67 Fed. Reg. 46327 (July 12, 2002), and is the political successor-in-interest to the Snohomish, Snoqaulmie and Skykomish tribes and other tribes and bands signatory to the 1855 Treaty of Point Elliott with the United States of America, which established the Tulalip Reservation in the Puget Sound Region of present-day Washington State. The Tribe is governed by a Board of Directors under authority of a Constitution and Bylaws approved by the United States Commissioner of Indian Affairs and the Secretary of the Interior on January 24, 1936, pursuant to §16 of the Indian Reorganization Act of 1934, as amended (48 Stat. 984, 25 U.S.C. §476)(the “IRA”).

On May 9, 2006, shortly after announcement of Complainant’s plan to construct the new Tulalip Hotel, Respondent registered the domain name <tulaliphotel.com> and on August 3, 2006, shortly after Complainant began construction of its Tulalip Resort Casino, Respondent registered the domain name <tulalipresortcasino.com>. On April 9, 2007, outside counsel for Complainant wrote to Respondent, informing him of the Tribe’s trademark rights and demanding that Respondent transfer the Disputed Domain Names to Complainant. On April 10, 2007, Respondent sent an email inquiry to the Information Systems Director for Complainant’s casino and resort, asking if Complainant was “interested in acquiring the domain name <tulalipresortcasino.com> before we submit to Register.com’s website buy/sell network.” By letter dated April 25, 2007 to Complainant’s outside counsel, Respondent asserted that he made no offer to sell any domain names to any entity, despite the fact that he had just days earlier sent the email asking Complainant to buy the <tulalipresortccasino.com> Domain Name. There is no website connected with either of the Disputed Domain Names as of July 25, 2007.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has common law trademarks in TULALIP, TULALIP HOTEL and TULALIP RESORT CASINO. The facts Complainant contends support its claim for common law trademarks are since the earliest days of Washington statehood, the term “Tulalip” has been associated with the governmental and proprietary operations, organizations and functions of the business ventures of the Tribe. Before the Tribe’s adoption of its IRA Constitution in the 1930’s, the United States recognized “The Tulalip Indian Council” as the governing council of Indians inhabiting the Tulalip Reservation. In these formative years, the Tribe began using its name as an integral description of tribal governmental functions and operations on the Reservation, including the Tulalip Business Committee and the Tulalip Improvement Council.

In the latter half of the twentieth century, the policies of the national government shifted toward support of tribal self-determination and Indian self-government. With this shift in Indian policy, the Tribe began to diversify and associate the “Tulalip” name with more and expanded tribal social and commercial functions. The Tribe continued to use the “Tulalip” name for its expanded governmental functions, including the “The Tulalip Housing Authority” and “The Tulalip Utility Authority.” The Tribe also used the “Tulalip” name to identify its commercial enterprises. For example, in the 1980’s the Tribe began operating its “Tulalip Bingo” gaming operation. In July 1992, the Tribe opened its expanded gaming enterprise known as the Tulalip Casino.

Increased gaming revenues created opportunities to expand tribal governmental and social services on the Tulalip Reservation. In the late 1990’s the Tribe invested in infrastructure and created a new federally-chartered city – the first in Indian country - to attract private investment. In 2005, the Tribe completed construction of an expanded, state-of-the-art 227,000 square foot Tulalip Casino – a Las Vegas style gaming facility featuring over 2,000 video slot machines and 59 gaming tables, plus four separate restaurants, a tribal gift shop and live entertainment. The Tulalip Casino is marketed nationwide, not only to gamblers but to tourists and local residents interested in its entertainment and cultural offerings. In 2005 the Tribe opened the 3,000 seat “Tulalip Amphitheater,” a venue for the performing arts. And in the summer of 2006, the Tribe broke ground on a 12-story, 363 room four-star resort hotel, scheduled to open in May or June 2008.

Complainant contends that through the years, the Tulalip name has become distinctive not only for the Tribe’s cultural and political identity, but also for the Tribe’s numerous successful business ventures. The Tribe’s well-known, thriving businesses are an important part of both the Tribes’ and the local economy, offering employment to Tribe members and other area residents and entertainment options to tourists and locals alike.

Complainant asserts that the Tribe has invested millions of dollars in advertising its business ventures in print, radio, television and on the Internet under its TULALIP and TULALIP CASINO trademarks. The Tribe also operates a website at “www.tulalipcasino.com”, advertising its casino and upcoming resort. More recently, the Tribe has used the TULALIP RESORT CASINO trademark in connection with its casino and soon-to-open resort hotel. The Tribe’s business ventures have received widespread media attention referencing the TULALIP, TULALIP CASINO and TULALIP RESORT CASINO names.

Complainant contends that due to the Tribe’s extensive use and considerable investment of time and resources, the TULALIP, TULALIP CASINO and TULALIP RESORT CASINO marks have become distinctive identifiers associated with the Tribe as the source of its casino, amphitheater and soon-to-be resort, and associated gaming, entertainment restaurant and hospitality services. Complainant is in the process of applying for federal registrations of its trademarks.

Complainant cites to The Quinault Indian Nation v. RDA Management Inc., WIPO Case No. D2001-1406 (finding common law trademark rights in QUINAULT BEACH RESORT based on evidence of publicity and marketing and the Quinault Indian Nation’s long-term existence in the Olympic Peninsula, [State of Washington]).

ii. Complainant argues that the Disputed Domain Names are confusingly similar to the TULALIP and TULALIP CASINO common law trademarks, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the Tulalip name with the addition of the generic terms “hotel,” “resort,” “casino” and “.com.”

iii. Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to paragraph 4(a)(ii) of the Policy, and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Names under paragraph 4(c)(i) of the Policy because it has not made use, or demonstrable preparations to use, the Disputed Domain Names in connection with the bona fide offering of goods or services. Complainant alleges that the town of Marysville, State of Washington (where Respondent resides) is immediately adjacent to the Tulalip Reservation and contends that Respondent must be held to have knowledge of the highly-publicized commercial plans of the Tribe. In addition, Complainant further alleges that the attempt to sell the <tulalipresortcasino.com> Domain Name and the failure to place any content on a website to which the Disputed Domain Names resolve shows that no bona fide offering of goods or services has been made.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(ii) of the Policy because he is not commonly known under either of the Disputed Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the TULALIP marks in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(iii) of the Policy because it is not making a legitimate noncommercial or fair use of the Disputed Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complaint alleges that the above-referenced attempts to sell the Disputed Domain Names show that Respondent seeks to derive commercial gain and has deliberately registered the Disputed Domain Names containing the Tulalip name to attract the attention of Internet users searching for Complainant’s businesses.

iv. Complainant contends that Respondent has registered and is using the Disputed Domain Names in bad faith pursuant to paragraph 4(b) of the Policy. Complainant cites to paragraph 4(b) which allows four nonexclusive finds which demonstrate bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your website or location.”

Complainant argues that the Respondent registered the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the registrations to Complainant or one of its competitors for valuable consideration in excess of the registrant’s out-of-pocket costs. In support of this allegation, Complainant cites the email sent to its Information Systems Director. Complainant alleges that these facts satisfy paragraph 4(b)(i) of the Policy.

Complainant further argues that the actions of the Respondent after he was notified of Complainant’s claims provide further evidence of Respondent’s bad faith. Complainant alleges that Respondent through his agent lied about having offered to sell the <tulalipresortcasino.com> Domain Name which is evidence of bad faith. Complainant alleges that there is no other feasible explanation other than a desire by Respondent to create a likelihood of confusion with Complainant’s marks and to potentially attract Internet users to the Dispute Domain Names. Complainant alleges that these facts satisfy paragraph 4(b)(iv) of the Policy.

B. Respondent’s contentions

i. Respondent points out that the Tribe has no registered trademarks and does not currently operate any hotel or other facility that provides lodging.

ii. Respondent does not contest Complainant’s assertion that the Disputed Domain Names are identical or confusingly similar to the claimed common law marks TULALIP and TULALIP CASINO.

iii. Respondent asserts that his only interest is in the promotion of Snohomish County, State of Washington which is the county adjacent to the Tulalip Reservation. Respondent further asserts that he was only being flippant in response to threats of legal action when he offered to sell the Disputed Domain Name <tulalipresortcasino.com> to Complainant. Respondent argues he registered the Disputed Domain Names in an attempt to create a source for and to promote various businesses in Snohomish County, State of Washington. Respondent states that he is in the process of developing content for a website promoting Snohomish County, to which the Disputed Domain Names will ultimately resolve.

iv. Respondent denies that it registered or used the Disputed Domain Names in bad faith. Respondent reiterates that his purpose was to promote Snohomish County and that he had no intent to block Complainant’s use of the Disputed Domain Names to increase his leverage in a sale of the Disputed Domain Names to Complainant. Respondent further denies that he and Complainant are competitors because the Tribe does not currently operate any hotel or other type of lodging.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (Apr. 10, 2001).

In order to prevail, Complainant must prove that the essential elements of the claims are met. Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

ii) that Respondent has no legitimate interests in respect of the disputed domain names; and,

iii) that the disputed domain name have been registered and are being used in bad faith.

A. Enforceable Trademark Rights

Respondent correctly points out that Complainant does not have a registration on any of its purported trademarks. Complainant, however, is arguing that the Tribe has a common law trademark rights in its name TULALIP and other phrases incorporating the name TULALIP.

To establish common law rights, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source. Complainant asserts that it has engaged in years of economic activity using the name Tulalip. Respondent has not contested this historical use.

Complainant also alleges that it is currently spending millions of dollars on advertising of its casino and resort facilities which all are identified by the name Tulalip which is associated with the Tribe.

Complainant claims common law trademarks in TULALIP, TULALIP CASINO, TULALIP HOTEL and TULALIP RESORT CASINO. The principal element is each of these marks is the name Tulalip. Because of the long history of the Tribe in the State of Washington and the commercial activity of the Tribe the Panel finds that Complainant established secondary meaning in TULALIP. Therefore, for purposes of this proceeding Complainant is deemed to have a common law trademark in TULALIP (the “TULALIP Mark”).

This finding is consistent with the decision in Quinault Indian Nation v. RDA Management, Inc., WIPO No. D2001-1406 in which the Quinault Indian Nation to the west of the Tulalip Tribe in the State of Washington was found to have a common law trademark.

B. Identity or Confusing Similarity

Complainant further contends that the Disputed Domain Names are identical with and confusingly similar to the TULALIP Mark pursuant to the Policy paragraph 4(a)(i).

Complainant argues that the Disputed Domain Names are confusingly similar to the TULALIP Mark, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the TULALIP Mark with the addition of the generic terms “hotel,” “resort,” “casino” and/or “.com.”

Respondent does not contest Complainant’s assertion that the Disputed Domain Names are identical or confusingly similar to the TULALIP Mark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in a domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s trademark.

Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998). The principal element of a domain name is important in any analysis of confusing similarity. Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was “undoubtedly” confusingly similar because it incorporated the “primary, distinctive element of both of Complainant’s trademarks.”) Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9^th Cir. 1999).

The Panel finds that the entirety of the TULALIP Mark is included in each of the Disputed Domain Names and that the additional language of “hotel” and “resortcasino” is descriptive and not distinctive. The addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name.

Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the TULALIP mark pursuant to the Policy paragraph 4(a)(i).

C. Rights or Legitimate Interests.

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Complainant argues that Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Names under paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Disputed Domain Names in connection with the bona fide offering of goods or services. Complainant alleges that the town of Marysville, State of Washington is immediately adjacent to the Tulalip Reservation and contends that Respondent must be held to have knowledge of the highly-publicized commercial plans of the Tribe. In addition, Complainant further alleges that the attempt to sell the <tulalipresortcasino.com> Domain Name and the failure to place any content on a website to which the Disputed Domain Names resolve shows that no bona fide offering of goods or services has been made.

Respondent counters that his only interest is in the promotion of Snohomish County, State of Washington and that he never intended to engage in any negotiations to sell either of the Disputed Domain Names to Complainant. Respondent argues he registered the Disputed Domain Names in an attempt to create a source for information to promote various businesses in Snohomish County, State of Washington. Respondent dismisses the remark in his email to Systems Information Director as a flippant remark in response to the threats of legal action he was receiving from the Tribe. Respondent states that he is in the process of developing content for a website promoting Snohomish County.

The Panel finds that Respondent did not need to choose the TULALIP Mark as part of the Disputed Domain Names if his sole purpose was to promote Snohomish County. The Panel further finds that Respondent lives in the town of Marysville which is adjacent to the Tulalip Reservation and had access to the public announcements of the commercial plans of the Tribe. Finally the Panel finds that the Respondent has placed no content on a website to which the Disputed Domain Names resolve. Therefore, Respondent has not made use or demonstrable preparations to use the Disputed Domain Names in connection with the bona fide offering of goods or services, pursuant to paragraph 4(c)(i) of the Policy.

The Panel finds that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(ii) of the Policy because he is not commonly known under either of the Disputed Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the TULALIP Mark in a domain name or in any other manner.

The Panel further finds that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain names, pursuant to paragraph 4(c)(iii) of the Policy, because he had actual knowledge of the commercial plans of the Tribe at the time that he registered the Disputed Domain Names.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).

D. Registered and Used in Bad Faith.

Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

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

Complainant argues that Respondent registered the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant for valuable consideration in excess of the registrant’s out-of-pocket costs. In support of this allegation, Complainant cites the email sent to its Information Systems Director.

The actions of Respondent after it was notified of Complainant’s claims provide further evidence of Respondent’s bad faith. Complainant alleges that Respondent through his agent lied about having offered to sell the Disputed Domain Names which is evidence of bad faith.

Complainant alleges that there is no other feasible explanation other than a desire by Respondent to create a likelihood of confusion with Complainant’s TULALIP Mark and to potentially attract Internet users to the Disputed Domain Names.

The Panel finds that Respondent did offer to sell the Disputed Domain Name <tulalipresortcasino.com> to Complainant and does not need to use the TULALIP Mark to promote Snohomish County. Therefore, based on the record, the Panel concludes that Respondent registered and used the Disputed Domain Names in bad faith, pursuant to paragraphs 4(b)(i) and 4(b)(iv) of the Policy.

Based on the foregoing, this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Disputed Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Disputed Domain Names <tulaliphotel.com> and <tulalipresortcasino.com> are confusingly similar to Complainant’s common law TULALIP Mark, (b) that Respondent has no rights or legitimate interest in the Disputed Domain Names and (c) that Respondent registered and used the Disputed Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: September 24, 2007