Ocean Edge Resort Limited Partnership v. Toby Coppel
Claim Number: FA1301001482989
Complainant is Ocean Edge Resort Limited Partnership (“Complainant”), represented by Lawrence S. Delaney of Demeo LLP, Massachusetts, USA. Respondent is Toby Coppel (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <realoceanedgeresort.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has not known conflict in serving as Panelist in this proceeding.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2013; the National Arbitration Forum received payment on January 31, 2013.
On January 31, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <realoceanedgeresort.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2013 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@realoceanedgeresort.com. Also on February 4, 2013, 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.
A timely Response was received and determined to be complete on February 7, 2013.
On February 12, 2013, Complainant submitted an Additional Submission that was deemed to be compliant with Supplemental Rule 7.
On February 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Magalhães Machado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has been in operation since 1997 under the name Ocean Edge Resort Limited Partnership, which consists of hotel, condominium, and golf facilities in Massachusetts. Complainant has been known as Ocean Edge since 1986. Complainant registered its OCEAN EDGE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,281,731 filed January 31, 2012, registered January 29, 2013). Complainant also owns a trademark registration for the OCEAN EDGE mark with the Commonwealth of Massachusetts (Reg. No CK0900110515 filed January 17, 2012, registered February 1, 2012). Complainant uses the <oceanedge.com> domain name to advertise and allow users to make reservations for its resort and vacation rental property.
Respondent is not authorized to use the OCEAN EDGE mark and does not have trademark rights in the mark. Respondent registered the <realoceanedgeresort.com> domain name, which is confusingly similar to Complainant’s OCEAN EDGE mark. Respondent maintains a website that serves as a “gripe site” directed towards Complainant’s vacation rental business, and demonstrates bad faith registration and use. Respondent is a member of the “Benzacar, Gordon, and Coppel families” (hereinafter, “the Benzacar Group”), who reserved accommodations for 21 people for five nights at Complainant’s facilities in August of 2012. The Benzacar Group, aware of Complainant’s cancellation policy, demanded a refund of $7,400.12 on August 20, 2012, and the disputed domain name was registered the next day, on August 21, 2012. Respondent uses keywords to assist Internet users in finding its website, including the words “Ocean Edge Resort, Two Star, Brewster, Cape Cod, Bar service, Jack Nicklaus, Luxury resort, weddings.” Respondent’s resolving website includes photographs of abandoned motel images, creating a false and disparaging impression of Complainant’s accommodations, and also includes links to websites at <tripadvisor.com> and <yelp.com>. Respondent does not use have rights or legitimate interests in the <realoceanedgeresort.com> domain name and does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent’s bad faith registration and use is shown by its attempt to extort a refund from Complainant.
B. Respondent
Respondent established the website resolving from the <realoceanedgeresort.com> domain name to share its experience as a 20-person family group who visited Complainant’s facilities in August 2012, and invites potential guests to read the reviews. The website does not confuse visitors into believing it to be an official website of Complainant, as it includes a disclaimer stating that it is an unofficial site. Respondent does not infringe on Complainant’s OCEAN EDGE mark, and the <realoceanedgeresort.com> domain name was chosen to reduce any confusion with Complainant’s mark. Complainant is attempting to block the right to free speech of a group of individuals.
C. Additional Submissions
Complainant submits additional statement and document (email thread) pursuant to Supplemental Rule 7 of the National Arbitration Forum (FORUM) Supplemental Rules (“Supp. Rule”).
Respondent contacted counsel for Complainant after this action was initiated claiming that certain unnamed “aggrieved parties own a number of additional domain names” which they intended to utilize “until they believe the resort [Complainant] has appropriately addressed their grievances.” Respondent offered to “act as an intermediary to [sic] this dispute.” Id.
In response to a follow-up inquiry, Respondent demanded $19,636.97 from Complainant, on behalf of the “aggrieved parties.” This demand was described as identical to an earlier request for “full refund of the payments made to Ocean Edge.” Respondent’s demand was accompanied by the threat that absent the requested payment the “aggrieved parties” will continue to publicize their dissatisfaction with Complainant using their “significant digital media expertise and resources available to them.” In his Response, Respondent alludes to this payment demand stating Complainant is attempting to block free speech, “rather than addressing the complaints of this group who had a very poor experience at its resort.”
Respondent has failed to respond specifically to the allegations of the Amended Complaint.
Complainant established that it has legal rights in the mark contained within the disputed domain name.
Complainant established that Respondent has no rights to or legitimate interests in Complainant’s mark that is used within the disputed domain name.
Respondent’s use of the disputed domain name in a coercive manner is an attempt to extract financial concessions from Complainant, which constitutes bad faith.
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.
Complainant asserts that a trademark registration with a government authority serve to establish its rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The Panel finds that the <realoceanedgeresort.com> domain name is confusingly similar to Complainant’s OCEAN EDGE mark since the changes made do not sufficiently change the domain name from the mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that while the settlement demand did not explicitly reference the transfer of the disputed domain name, the import of Respondent’s threats is clear: absent the requested payment the “aggrieved parties” “will continue to publicise [sic] their very poor experience at Ocean Edge” employing their “significant digital media expertise and resources available to them.
Complainant also asserts that the costs to Complainant of not meeting Respondent’s financial demands are spelled out: “The reputational impact on Ocean Edge may likely outweigh, by some margin, the proposed settlement amount and therefore I believe it would make economic sense to agree to this settlement.
The Panel notes that the timing of Respondent’s registration, coupled with Respondent’s linkage of payment of the disputed refund with cessation of adverse publicity, makes clear that Respondent does not have a legitimate criticism or gripe site because it is being used for commercial or financial purposes. Ginn Real Estate Co. LLC v. Wiener, FA 1211342 (Nat. Arb. Forum Aug. 20, 2008) (common ground that “genuine criticism site” not be used for commercial or financial purposes); see also Asset Loan Co. Pty Ltd v. Rogers,
D2006-0300 (WIPO May 2, 2006)(if respondent is using criticism site for commercial gain, it is contrary to Policy ¶ 4(c)(iii) and cannot give rise to legitimate interest).
The Panel also notes that Respondent failed to respond specifically to the allegations of the Amended Complaint.
The Panel finds that even though Respondent’s use of the domain name to create a website to comment and criticize the complainant’s business may be considered a legitimate noncommercial fair use under the Policy in some cases ( specially in cases involving only US parties), the undisputed facts belie that claim.
Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that the attempts to use domain names as leverage to obtain financial concessions constitute bad faith. See InMed Diagnostic Services v. Harrison, D2006-1230 (WIPO Dec. 11, 2006) (“[R]espondent registered the disputed domain name in the midst of a contract dispute with [c]omplainants and openly threatened to use, and actually used, the disputed domain name to gain leverage in that dispute. As such, while perhaps not falling neatly into one of the four non-exclusive examples of bad faith set out in paragraph 4(b) of the Policy, his conduct constitutes bad faith under a wealth of decisions.”); see also AvCraft Aviation v. Kohlschmidt, D2004-0213 (WIPO June 3, 2004) (holding respondent’s registration of the domain name for leverage in a dispute with the complainant constituted bad faith); see also Kinko’s v. eToll, FA 94447 (Nat. Arb. Forum May 27, 2000) (bad faith where respondent registered the domain name as a form of leverage to extract a business deal that was not sought by complainant).
Complainant states that Respondent’s registration and use of the disputed domain name in a coercive manner in an attempt to extract financial concessions from Complainant constitutes bad faith beyond the non-exclusive examples set forth in Policy ¶ 4(b).
The Panel finds that Respondent does not deny most of Complainant’s factual allegations, which should be deemed admitted.
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <realoceanedgeresort.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: February 28, 2013
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