Isleworth Land Company v. Lost In Space,
SA
Claim Number: FA0208000117330
PARTIES
Complainant
is Isleworth Land Company,
Windermere, FL, USA (“Complainant”) represented by David J. Stewart, of Alston
& Bird, LLP. Respondent is Lost in Space, SA, Majorca, SOUTH
AFRICA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <isleworthcountryclub.com>,
registered with Intercosmos Media Group.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on July 31, 2002; the Forum received a hard copy of the Complaint on August 5,
2002.
On
August 1, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that
the domain name <isleworthcountryclub.com>
is registered with Intercosmos Media Group and that Respondent is the current
registrant of the name. Intercosmos
Media Group has verified that Respondent is bound by the Intercosmos Media
Group 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
August 5, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 26,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@isleworthcountryclub.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 16, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<isleworthcountryclub.com> domain name is confusingly similar to
Complainant’s ISLEWORTH mark.
Respondent
has no rights or legitimate interests in the <isleworthcountryclub.com>
domain name.
Respondent
registered and used the <isleworthcountryclub.com> domain name in
bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds registration rights in
the ISLEWORTH mark with the United States Patent and Trademark Office
(“USPTO”), specifically Reg. Nos. 1,558,016 and 2,004,329. Complainant began using the ISLEWORTH mark
at least as early as 1985. Complainant
adopted the ISLEWORTH mark for use in connection with real estate brokerage
services, golf and tennis country club and entertainment services.
In addition, Complainant has continually
used the ISLEWORTH mark to identify its residential country club services. The country club, denoted Isleworth Country
Club, is a world class luxury residential golf and country club community
located in Windermere, Florida that lays claim to an 18 hole golf course
designed by Arnold Palmer.
Complainant’s ISLEWORTH community and golf course has gained notoriety
from the renowned sports celebrities who have lived or are living in the
community, including Shaquille O’Neil, Tiger Woods, Ken Griffey, Jr. and Arnold
Palmer.
Respondent registered the <isleworthcountryclub.com>
domain name on January 17, 2002.
Respondent uses the domain name to divert Internet traffic to a website,
<temptationsatwork.com>, which contains photographs of semi-nude women in
various poses. Complainant has
discovered that Respondent has had prior UDRP actions brought against it for
the infringing registration of the <cspantv.com> and
<riohotellasvegas.com> domain names.
Respondent used the prior infringing domain names for the same or
substantially similar use as the <isleworthcountryclub.com> domain
name.
Complainant sent a cease a desist order
to Respondent and a representative for Respondent replied stating that the
domain name was registered for the owner of the Isleworth Country Club in
Isleworth, Middlesex, England.
Complainant’s subsequent investigation, however, uncovered no evidence
of such a country club in England.
Complainant sent a correspondence to Respondent’s representative that
reported Complainant’s findings.
Respondent’s representative never responded and Complainant initiated
this present action.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the 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
Complainant has established its rights in
the ISLEWORTH mark through proof of registration with the USPTO and continuous
use in connection with its country club and surrounding community.
Respondent’s <isleworthcountryclub.com>
domain name contains Complainant’s entire ISLEWORTH mark with the addition
of the phrase “countryclub” and the generic top-level domain “.com.” The phrase “countryclub” holds a direct
relationship with the services offered under the ISLEWORTH mark. Previous Panels have consistently held that
a domain name containing Complainant’s mark and a phrase that refers to
Complainant’s business operations renders the domain name confusingly similar
to the mark in question. Furthermore,
it is an well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i) analysis. Therefore, Respondent’s <isleworthcountryclub.com>
domain name is confusingly similar to Complainant’s ISLEWORTH mark. See Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity significance).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has established a prima
facie case and Respondent has not come forward in response to Complainant’s
claims. Since Complainant asserts that
Respondent has no rights or legitimate interests in the <isleworthcountryclub.com>
domain name, the burden shifts to Respondent to demonstrate such
rights. Respondent failed to satisfy
its burden, therefore, it may be presumed that Respondent has no rights or
legitimate interests in the domain name.
See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that under certain circumstances the mere assertion by Complainant that
Respondent has no right or legitimate interest is sufficient to shift the
burden of proof to Respondent to demonstrate that such a right or legitimate
interest does exist); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
Furthermore, due to Respondent’s lack of
contest, all reasonable inferences may be drawn in favor of Complainant. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”); see also
Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Respondent uses the <isleworthcountryclub.com>
domain name to link unsuspecting Internet traffic to an adult orientated
website, <temptationsatwork.com>.
The website contains images of scantily clad women in provocative
poses. Respondent’s allegation that it
registered the domain name to be used for its country club in England is
contradicted by the actual use of the domain name. Respondent’s diversionary use of the domain name does not
constitute a connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i), nor does it represent a fair use pursuant to Policy ¶
4(c)(iii). See MatchNet plc v. MAC Trading, D2000-0205
(WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or
services to use a domain name for commercial gain by attracting Internet users
to third party sites offering sexually explicit and pornographic material,
where such use is calculated to mislead consumers and tarnish Complainant’s
mark); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that infringing on another's well-known mark to provide a link to a
pornographic site is not a legitimate or fair use).
Respondent never received permission from
Complainant to use the ISLEWORTH mark in connection with any purpose. Furthermore, contrary to Respondent’s
representative’s statement that the <isleworthcountryclub.com> domain
name was registered for use in connection with an Isleworth Country Club in
England, Complainant’s investigation uncovered no evidence of the alleged
country club. Hence, there is no
evidence that Respondent is commonly known by the domain name. Thus, Respondent has no rights or legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Accordingly, the Panel finds that Respondent
has no rights or legitimate interests in the <isleworthcountryclub.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant provides evidence that
Respondent has been a party in at least two other domain name Complaints. Most specifically, Respondent lost its
registration rights in the <cspantv.com> and <riohotellasvegas.com>
domain names in prior decisions. These
cases, along with the present matter, evidence a pattern of registering domain
names for the purpose of trading off of established marks, which in turn
prevents the rightful owner of the mark from of reflecting its mark in a
corresponding domain name. In the
present case, Respondent effectively uses Complainant’s ISLEWORTH mark to prevent
Complainant from logically using the mark in a corresponding domain name. Due to Complainant’s use of the ISLEWORTH
mark to denote its Isleworth Country Club, Respondent’s <isleworthcountryclub.com>
domain name is a logical fit for Complainant.
Therefore, Respondent registered the domain name in bad faith under
Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon
others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6,
2000) (finding bad faith where Respondent engaged in the practice of
registering domain names containing the trademarks of others); see also America Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of
conduct where Respondent registered many domain names unrelated to its business
which infringe on famous marks and websites).
Respondent’s use of the domain name to
divert Internet users to a website containing adult content has a likelihood of
creating confusion as to Complainant’s affiliation. Presumably, Respondent commercially benefits from the
diversionary use of the domain name.
The use of an infringing domain name to link to adult orientated
material on the Internet is not a good faith use. Therefore, Respondent uses the domain name in bad faith pursuant
to Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO
June 27, 2000) (finding that absent contrary evidence, linking the domain names
in question to graphic, adult-oriented websites is evidence of bad faith); see
also Youtv, Inc. v. Alemdar, FA
94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent
attracted users to his website for commercial gain and linked his website to
pornographic websites); see also MatchNet
plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the
association of a confusingly similar domain name with a pornographic website
can constitute bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <isleworthcountryclub.com> be transferred from
Respondent to Complainant.
Sandra Franklin, Panelist
Dated: September 27, 2002
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