Margaritaville Enterprises, LLC v. Nick Kyriakides
Claim Number: FA2112001978429
Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Nick Kyriakides (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cruisemargaritaville.com>, registered with Google LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 27, 2021; the Forum received payment on December 27, 2021.
On December 28, 2021, Google LLC confirmed by e-mail to the Forum that the <cruisemargaritaville.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cruisemargaritaville.com. Also on December 29, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent, by an email dated December 29, 2021 and addressed to the Forum has expressed a form of purported consent to transfer the <cruisemargaritaville.com> domain name to Complainant. However, after the initiation of this proceeding, Google LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel may find that in some circumstances such as this, where it is appropriate and where what is known of the history of the matter justifies it, and Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer it to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
There is no doubt, then, that this Panel has a discretionary power to forego the traditional UDRP analysis and order an immediate transfer of the <cruisemargaritaville.com> domain name. This Panel has followed a similar course in several previous proceedings.
The question, however, is whether Respondent has given an unconditional consent to the transfer of the domain name and whether there are any other circumstances that militate against the Panel foregoing the traditional UDRP analysis and ordering an immediate transfer. That is so because the “consent-to-transfer” approach has been said to be but one way for cybersquatters to avoid adverse findings against them and taking such an approach should therefore be followed only when it is justified.
In the present case, Respondent has sought to impose a condition as its email to the Forum of December 30, 2021 states “We are no longer interested in this domain. We can transfer it over once we receive the creds. Let us know the next steps”.
The Panel as presently constituted is therefore of the view that a case for the “consent-to-transfer” has not been made out and it takes a similar view as that taken by the Panel in Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), where the panel stated that:
“Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy. Therefore, the Panel decides that in all the circumstances it should analyze the case under the elements of the UDRP.”
In the exercise of its discretion, the Panel therefore finds that it is more appropriate to analyze the present case under the elements of the UDRP.
A. Complainant
Complainant made the following contentions.
Complainant, Margaritaville Enterprises, LLC, uses the MARGARITAVILLE mark for a wide variety of goods and services, including real estate services, hotel services, entertainment services, fan club services, clothing, restaurant services, bar services, and retail store services. Complainant has rights in the MARGARITAVILLE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 3,855,017, registered September 28, 2010). See Compl. Annex 4. The <cruisemargaritaville.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the descriptive word “cruise” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <cruisemargaritaville.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s MARGARITAVILLE mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain resolves to an inactive webpage.
Respondent registered and uses the <cruisemargaritaville.com> domain name in bad faith because the disputed domain name resolves to an inactive webpage. In addition, Respondent had actual knowledge of its rights in the MARGARITAVILLE mark at the time that it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides a wide variety of goods and services, including real estate, hotel, entertainment, fan club, clothing, restaurant, bar, and retail store services.
2. Complainant has established its trademark rights in the MARGARITAVILLE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 3,855,017, registered September 28, 2010).
3. Respondent registered the <cruisemargaritaville.com> domain name on November 25, 2019.
4. Respondent has caused the disputed domain name to resolve to an inactive webpage.
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:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MARGARITAVILLE mark based on registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides evidence of its registration with the USPTO for the MARGARITAVILLE mark (e.g., 3,855,017, registered September 28, 2010). See Compl. Annex 4. Therefore, the Panel finds that Complainant has rights in the MARGARITAVILLE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MARGARITAVILLE mark. Complainant argues Respondent’s <cruisemargaritaville.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added a descriptive word and a gTLD. Domain names which incorporate an entire trademark are usually considered confusingly similar while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, adding a descriptive word does not create a sufficient distinction. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Here, Respondent has incorporated the entire mark and added the descriptive word “cruise” and the “.com” gTLD. The addition of the word “cruise” may only add to the confusing similarity as it may refer to Complainant’s cruise services. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s MARGARITAVILLE mark and to use it in its domain name and adds the descriptive word “cruise” which describes one of Complainant’s activities and does not negate the confusing similarity which is otherwise present;
(b) Respondent registered the <cruisemargaritaville.com> domain name on November 25, 2019;
(c) Respondent has caused the disputed domain name to resolve to an inactive webpage;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant submits that Respondent does not have rights or legitimate interests in the <cruisemargaritaville.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s MARGARITAVILLE mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by the <cruisemargaritaville.com> domain name and no information suggests Complainant authorized Respondent to use the MARGARITAVILLE mark. Rather, the WHOIS information lists the registrant of the domain as “Nick Kyriakides.” See Amend. Compl. Annex 10. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <cruisemargaritaville.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name resolves to an inactive webpage. See CrossFirst Banks hares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, the disputed domain name resolves to an inactive webpage which displays an error message. See Compl. Annex 11. Therefore, the Panel finds that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad in bad faith).
Complainant argues that Respondent’s inactive holding of the disputed domain name is evidence of its bad faith. Failing to make an active use of a domain name is evidence of bad faith per Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Here, as discussed above, the disputed domain name resolves to a webpage which hosts no content, but rather displays an error message. See Compl. Annex 11. Therefore, as the Panel agrees, it finds that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant submits that Respondent must have had actual notice of Complainant's rights in the MARGARITAVILLE mark prior to registration of the disputed domain name based on the fame of the mark. Under Policy ¶ 4(a)(iii), actual knowledge of a complainant’s rights in a mark indicates bad faith and may be determined based on the fame of the mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Therefore, as the Panel agrees, it finds Respondent had actual knowledge of Complainant’s rights in the MARGARITAVILLE mark and finds bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MARGARITAVILLE mark and in view of the conduct that Respondent has engaged in since acquiring the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cruisemargaritaville.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 24, 2022
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