Manuel Gonzales v. AWRegistry.net
Claim Number: FA1012001364473
Complainant is Manuel Gonzales (“Complainant”), represented by Edward Cottingham, South Carolina, USA. Respondent is AWRegistry.net (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tigerlilyflorist.com>, registered with TIERRANET INC. d/b/a DOMAINDISCOVER.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2010; the National Arbitration Forum received payment on December 22, 2010.
On December 21, 2010, TIERRANET INC. d/b/a DOMAINDISCOVER confirmed by e-mail to the National Arbitration Forum that the <tigerlilyflorist.com> domain name is registered with TIERRANET INC. d/b/a DOMAINDISCOVER and that Respondent is the current registrant of the name. TIERRANET INC. d/b/a DOMAINDISCOVER has verified that Respondent is bound by the TIERRANET INC. d/b/a DOMAINDISCOVER 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 January 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2011 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@tigerlilyflorist.com. Also on January 5, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tigerlilyflorist.com> domain name is identical to Complainant’s TIGER LILY FLORIST mark.
2. Respondent does not have any rights or legitimate interests in the <tigerlilyflorist.com> domain name.
3. Respondent registered and used the <tigerlilyflorist.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Manuel Gonzales, uses the TIGER LILY FLORIST mark in connection with its floral industry business. Complainant asserts that it owns Tiger Lily Florist, Inc. which is a corporation duly organized under the laws of the State of South Carolina. Complainant claims that Respondent was hired to design Complainant’s website and instead of registering it under Complainant’s name, registered it under Respondent’s name.
Respondent, AWRegistry.net, registered the disputed domain name on April 6, 1999. The disputed domain name resolves to Complainant’s own website.
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.
Complainant has not submitted evidence of any trademark registration for its TIGER LILY FLORIST mark. However, the Panel finds that a trademark registration is not necessary so long as Complainant can establish common law rights through proof that its mark has gained sufficient secondary meaning. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant provides evidence that it operates a floral business under its TIGER LILY FLORIST mark. Complainant submits a copy of the Certificate of Existence for Tiger Lily Florist, Inc., which was organized under the laws of the State of South Carolina on April 1, 2002. Additionally, Complainant submits evidence in the form of a summary of billing statements associated with the <tigerlilyflorist.com> domain name dating back to March 3, 2000 and listing Complainant and his Tiger Lily Florist company in the Customer Profile. The Panel finds that Complainant has submitted sufficient evidence of its public rights in the TIGER LILY FLORIST mark under Policy ¶ 4(a)(i) dating back to March 3, 2000. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”). Additionally, the Panel finds that as Complainant hired Respondent to design Complainant’s website, any rights that Complainant may have had in the TIGER LILY FLORIST at the time of the disputed domain name’s registration would have been known to Respondent.
Complainant asserts that Respondent’s <tigerlilyflorist.com> domain name is identical to Complainant’s TIGER LILY FLORIST mark. The disputed domain name merely removes the spaces between the terms of Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these two alterations are irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, pursuant to the requirements of Policy ¶ 4(a)(i), the Panel finds that Respondent’s <tigerlilyflorist.com> domain name is identical to Complainant’s TIGER LILY FLORIST mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden of proof will shift to Respondent to prove that it does have rights or legitimate interests in the domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has made a sufficient prima facie case, effectively shifting the burden of proof to Respondent. The Panel notes that Respondent’s failure to submit a response to these proceedings allows the Panel to infer that Respondent does in fact lack rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel elects to consider the evidence on record in light of the factors outlined in Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
The WHOIS information identifies the registrant of the <tigerlilyflorist.com> domain name as “AWRegistry.net.” The Panel finds no other evidence in the record that would allow it to conclude that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was 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’s disputed domain name resolves to Complainant’s own website which Complainant uses to promote its floral business. The Panel finds that Respondent’s use of the disputed domain name to resolve to Complainant’s own website, where Respondent clearly has no association with Complainant’s business, is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trade mark; see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. 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 faith) Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent’s disputed domain name resolves to Complainant’s own website. The Panel finds this to be sufficient evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re- direct to a website that is not that of, or associated with, the Complainant.").
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 <tigerlilyflorist.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 8, 2011
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