JS IP LLC v. Yee Sin Lau
Claim Number: FA1111001413772
Complainant is JS IP LLC (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Yee Sin Lau (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fontainebleaumiamibeach.org>, registered with GoDaddy.com, Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2011; the National Arbitration Forum received payment on November 1, 2011.
On November 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fontainebleaumiamibeach.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@fontainebleaumiamibeach.org. Also on November 2, 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 December 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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, 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 <fontainebleaumiamibeach.org> domain name is confusingly similar to Complainant’s FONTAINEBLEAU mark.
2. Respondent does not have any rights or legitimate interests in the <fontainebleaumiamibeach.org> domain name.
3. Respondent registered and used the <fontainebleaumiamibeach.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JS IP LLC, holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FONTAINEBLEAU mark (e.g. Reg. No. 1,136,482 registered May 27, 1980). Complainant licenses this trademark to the operators of the Fontainebleau Miami Beach resort in Miami Beach, Florida.
Respondent, Yee Sin Lau, registered the disputed domain name on October 11, 2011. The disputed domain name resolves to what purports to be an informational blog about Complainant’s business but which features links to third-party sites, some of which compete with Complainant.
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 claims rights in the FONTAINEBLEAU mark based on its numerous trademark registrations with the USPTO (e.g. Reg. No. 1,136,482 registered May 27, 1980). Previous panels have agreed that registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i), even despite the fact that Respondent operates in a country other than that in which Complainant holds a trademark registration. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant urges that the Panel find the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s FONTAINEBLEAU mark, adding only the geographically descriptive term “MIAMI BEACH” and the generic top-level domain (“gTLD”) “.org.” UDRP precedent is clear that neither of these changes can distinguish a disputed domain name under Policy ¶ 4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel holds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Policy ¶ 4(a)(ii) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). In the immediate case, Complainant has satisfied its burden, while Respondent has not. Some panels have viewed this as evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). For the sake of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).
In alleging that Respondent is not commonly known by the disputed domain name, Complainant states that it has never authorized, licensed, contracted, or otherwise permitted Respondent’s use of the FONTAINEBLEAU mark. The relevant WHOIS information identifies the domain name registrant as “Yee Sin Lau,” which the Panel finds bears no resemblance to the <fontainebleaumiamibeach.org> domain name. Because Respondent has failed to submit a Response, there is no other evidence in the record to support a finding that Respondent is commonly known by the disputed domain name. Based on the foregoing, the Panel must conclude that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also alleges that Respondent’s use of the disputed domain name cannot be properly considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The <fontainebleaumiamibeach.org> domain name resolves to what purports to be an informational blog about Complainant’s business but which features links to third-party sites, some of which compete with Complainant’s business. Previous panels have found this type of use to constitute neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 therefore finds that Respondent has not demonstrated a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent’s lack of rights or legitimate interests in the disputed domain name is further evidenced by its attempt to pass itself off as Complainant, through the use of Complainant’s mark and logo on its website, including a notation at the bottom of the page reading, “©Fontainebleau Miami Beach.” See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name)The Panel concludes that Respondent’s efforts to pass itself off as Complainant is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
By offering links to sites that compete with Complainant on its website, Respondent disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii). The Panel holds that Respondent’s use of a confusingly similar domain name to divert Internet users away from Complainant’s website and instead redirect them to a website that features links to competing services constitutes bad faith disruption under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); 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’s registration and use of the disputed domain name represents further bad faith under Policy ¶ 4(b)(iv). By using a confusingly similar domain name, Respondent creates confusion as to Complainant’s endorsement of, or affiliation with, the disputed domain name. Respondent relies on this confusion to drive traffic to its website, which houses links to Complainant’s competitors in the local hotel industry. Respondent presumably collects click-through fees each time one of these links is accessed. The commercial gain Respondent realizes, therefore, is dependent on the confusion it creates as to Complainant’s affiliation with the disputed domain name. The Panel holds that registration and use for this purpose represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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).
Complainant also alleges that Respondent’s website clearly intends to deceive consumers into thinking it is Complainant’s official website, which shows Respondent’s attempt to pass itself off as Complainant. The Panel concludes that Respondent’s extensive use of Complainant’s mark and the inclusion of a copyright legend (“© Fontainebleau Miami Beach”) on Respondent’s website demonstrates Respondent’s bad faith attempt to pass itself off as Complainant. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”)
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the FONTAINEBLEAU mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Complainant has proven that Respondent has actual knowledge of Complainant's mark and, therefore, that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) is 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 <fontainebleaumiamibeach.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 5, 2011
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