Patrick J. Kennedy v. Texas International Property Associates - NA NA
Claim Number: FA0909001283626
Complainant is Patrick J. Kennedy (“Complainant”), Texas, USA. Respondent is Texas International Property Associates - NA NA (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <watermarkgrill.com>, registered with Compana, Llc.
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 J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 10, 2009.
On September 11, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <watermarkgrill.com> domain name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 2009 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@watermarkgrill.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <watermarkgrill.com> domain name is confusingly similar to Complainant’s WATERMARK mark.
2. Respondent does not have any rights or legitimate interests in the <watermarkgrill.com> domain name.
3. Respondent registered and used the <watermarkgrill.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Patrick J. Kennedy, is the President and Chief Executive Officer of the Watermark Hotel Company, Inc., which operates the Watermark Hotel and Spa. Complainant registered the WATERMARK mark with the United States Patent and Trademark Office (“USPTO”) on June 3, 1997 (Reg. No. 2,067,410). Complainant has used the WATERMARK mark continuously in commerce to promote his hotel, restaurant, and hospitality services since at least as early as 1997. Complainant’s hotel has received national and worldwide recognition, including three consecutive years on Conde Nast Traveler’s “Gold List.”
Respondent registered the <watermarkgrill.com> domain name on November 25, 2009. The disputed domain name resolves to a parking page displaying links to third-party websites which compete with Complainant for restaurant business.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
The Panel finds that Complainant has established rights in
the WATERMARK mark for purposes of Policy ¶ 4(a)(i) through his trademark
registration with the USPTO (Reg. No. 2,067,410 issued June 3, 1997). See
Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005)
(finding that the complainant had established rights in the PAISLEY PARK mark
under [UDRP] ¶ 4(a)(i) through registration of the mark with the USPTO); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the
[complainant’s] mark is registered with the USPTO, [the] complainant has met the
requirements of Policy ¶ 4(a)(i).”).
Respondent’s <watermarkgrill.com> domain name is confusingly similar to Complainant’s WATERMARK
mark. The <watermarkgrill.com> domain name differs from Complainant’s mark in two ways:
(1) the descriptive term “grill” has been added to the end of the mark; and (2)
the generic top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that adding a descriptive
term does not sufficiently distinguish a domain name from that mark for the
purposes of Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA
257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to Complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)); see also Sutton Group
Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that
the domain name <suttonpromo.com> is confusingly similar to the SUTTON
mark because the addition of descriptive or non-distinctive elements to the
distinctive element in a domain name is immaterial to the analysis under Policy
¶ 4(a)(i)). The Panel
also finds that the addition of a gTLD is inconsequential when considering
whether a domain name is confusingly similar to a mark. See Jerry Damson,
Inc. v. Tex. Int’l Prop. Assocs., FA
916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic
top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the
Domain Name from the mark.”). Therefore,
the Panel finds that despite these changes, the <watermarkgrill.com> domain name is not sufficiently distinguished from
Complainant’s WATERMARK mark, and so
Respondent’s <watermarkgrill.com>
domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent has failed to respond to the Complaint. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known
by the disputed
domain name, nor has it ever been the owner or licensee of the WATERMARK
mark. The WHOIS record for the disputed
domain name lists Respondent as “Texas International
Property Associates - NA NA.”
Because Respondent has failed to show any evidence that Respondent has
ever been commonly known by the disputed domain name, or by any other variant
on the WATERMARK mark, the Panel finds that Respondent is not commonly known by
the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B.
v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence
in the record).
Respondent is using the disputed domain name to host a website that features links to third-party websites that offer restaurant services competing with those offered by Complainant. Complainant contends that Respondent receives “click-through” fees from those third-party websites, and therefore is commercially benefitting from the use of the disputed domain name. The Panel finds that this use by Respondent of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has previously been subjected to at least
one-hundred UDRP proceedings resulting in the transfer of the infringing domain
name to the respective complainant. See, e.g., Haas Outdoors, Inc. v. Tex. Int’l
Prop. Assocs., FA 1277431 (Nat. Arb. Forum, Aug. 12, 2009); see also Nat’l Gardening Assoc. Inc. v. Tex.
Int’l Prop. Assocs, FA 1274880 (Nat. Arb. Forum July, 31, 2009); see also Pascua Yaqui Tribe v. Tex. Int’l Prop. Assocs., FA 1267280 (Nat.
Arb. Forum June 23, 2009). Complainant thus contends that
Respondent has a longstanding history of cyber-squatting, which constitutes a
pattern of bad faith registration and use of domain names under Policy ¶
4(b)(ii). The Panel agrees and concludes that
Respondent has engaged in bad faith registration and use of the disputed domain
(registered November 25, 2009) under Policy ¶
4(b)(ii). See N.H. Sweepstakes Comm’n v. We Web
Well, Inc., FA 197499 (Nat. Arb. Forum
Nov. 3, 2003) (finding that a complainant’s submission of WHOIS evidence that
listed a respondent as the registrant of other domain names incorporating
third-party trademarks was sufficient to establish that that respondent had
engaged in a pattern of registering and using domain names in bad faith
pursuant to Policy ¶ 4(b)(ii)); see
also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb.
Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) where a
domain name prevented a complainant from reflecting its mark in a legitimate
domain name and where a respondent had several adverse decisions against it in
previous UDRP proceedings, which established a pattern of cyber-squatting).
The disputed domain name directs Internet customers to
Respondent’s website that resolves from the disputed domain name, where they
are further directed to third-party websites that offer services in the same
restaurant market as Complainant. The
Panel finds that Respondent is disrupting Complainant’s business, and
therefore, that Respondent’s registration and use of the disputed domain name
is in bad faith pursuant to Policy ¶ 4(b)(iii).
See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used the disputed domain name to operate a commercial search engine
with links to the complainant’s competitors); see
also Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is intentionally using the disputed domain name
for commercial gain by creating a likelihood of confusion with Complainant’s
mark, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the respondent engaged in bad faith registration and use by
using a domain name that was confusingly similar to the complainant’s mark to
offer links to third-party websites that offered services similar to those
offered by the complainant); see also Asbury
Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum
May 29, 2007) (finding that the respondent’s use of the disputed domain name to
advertise car dealerships that competed with the complainant’s business would
likely lead to confusion among Internet users as to the sponsorship or
affiliation of those competing dealerships, and was therefore evidence of bad
faith registration and use pursuant to Policy ¶
4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <watermarkgrill.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 28, 2009
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