First Coast Energy, L.L.P. v. JIM BAZLEY / FIRST COAST ENERGY
Claim Number: FA1404001554730
Complainant is First Coast Energy, L.L.P. (“Complainant”), represented by John C. McElwaine of Nelson Mullins Riley & Scarborough, LLP, South Carolina, USA. Respondent is JIM BAZLEY / FIRST COAST ENERGY (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <firstcoast-energy.com> and <1stcoastenergy.com> registered with Melbourne IT Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2014; the National Arbitration Forum received payment on April 17, 2014.
On April 21, 2014, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <firstcoast-energy.com> and <1stcoastenergy.com> domain names are registered with Melbourne IT Ltd and that Respondent is the current registrant of the names. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 April 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2014 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@firstcoast-energy.com, postmaster@1stcoastenergy.com. Also on April 22, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in its FIRST COAST ENERGY mark. Complainant first started doing business under the FIRST COAST ENERGY mark in 1997 in correlation with its convenience stores and gasoline service stations. Complainant has common law rights in the FIRST COAST ENERGY mark through its long standing, continuous use of the mark since 1997. Complainant now produces a sales revenue amounting to more than $1 billion. Complainant also has significant Internet presence, advertising, marketing, promotional expenditures, and presence and recognition in the community as well as its unsolicited media recognition. Complainant has continuously used the FIRST COAST ENERGY mark since 1997, which is prior to Respondent’s 2014 registration of the disputed domain name. Complainant further provides evidence of its significant growth in sales since 1997.
The WHOIS information shows the registrant as “Jerry Bazley” and the registrant organization as “First Coast Energy.” However, an unknown registrant falsely used Mr. Bazley’s and First Coast Energy’s names in the registration of the disputed domain names. Therefore, the actual Respondent is also unknown.
Respondent’s <firstcoast-energy.com> and <1stcoastenergy.com> domain names are confusingly similar to Complainant’s FIRST COAST ENERGY mark.
Respondent removes the spaces in Complainant’s mark and adds a hyphen. Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
Respondent has no rights or legitimate interests in the <firstcoast-energy.com> and <1stcoastenergy.com> domain names. Respondent has never been commonly known by the disputed domain names. The WHOIS information for the disputed domain names shows no correlation between the disputed domain names and Respondent. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent is inactively holding the disputed domain names. Respondent’s disputed domain names resolve to pages displaying the “under construction” page.
Respondent registered and is using the <firstcoast-energy.com> and <1stcoastenergy.com> domain names in bad faith. Respondent’s disputed domain names resolve to an inactive website. Respondent had actual knowledge of Complainant and Complainant’s mark when Respondent registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, First Coast Energy, L.L.P., first started doing business under the FIRST COAST ENERGY mark in 1997. Complainant owns and operates convenience stores and gasoline service stations throughout Florida. Complainant’s business has steadily grown. Complainant operates over 185 convenience stores. Complainant’s sales revenue has grown from $67 million in 1997 to over $1 billion in 2013. Over the years, Complainant has received unsolicited media attention recognizing Complainant’s growth and expansion. Complainant has expended significant revenue advertising, marketing, and promoting its FIRST COAST ENERGY mark. Complainant has a strong Internet presence.
The disputed domain names were registered on February 17, 2014. The WHOIS information shows the registrant as “Jerry Bazley” and the registrant organization as “First Coast Energy.” However, an unknown registrant falsely used Mr. Bazley’s and First Coast Energy’s names in the registration of the disputed domain names. Mr. Bazley is the accounts payable manager of Complainant. Neither Mr.Bazley nor Complainant registered the disputed domain names. Therefore, the actual Respondent is also unknown.
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.
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.”).
Complainant contends that it has rights in its FIRST COAST ENERGY mark under Policy ¶ 4(a)(i) through common law rights. Complainant does not have a trademark registration for the FIRST COAST ENERGY mark with a national trademark authority. However, trademark registration is not required for a complainant to show rights in a mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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 contends that it owns common law rights in the FIRST COAST ENERGY mark through its long standing, continuous use of the mark since 1997 with its convenience stores and gasoline service stations. A complainant has common law rights in a mark where it provides evidence of continuous and ongoing secondary meaning in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also 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). The Panel finds that Complainant has acquired distinctiveness and common law trademark rights in its FIRST COAST ENERGY mark under Policy ¶ 4(a)(i) through its long-standing, continuous use of the mark since 1997, significant advertising, marketing, and promotional expenditures, significant increase in sales revenue, Internet presence, and unsolicited media attention and recognition. See KMJ Performance v. Joseph Tomas, FA 1458288 (Nat. Arb. Forum Sept. 27, 2012) (finding the complainant had acquired a reputation and goodwill in the mark and, therefore, sufficient common law rights in the mark under Policy ¶ 4(a)(i), because the complainant provided evidence of first use of the mark and evidence of subsequent advertising and use of the mark).
Complainant claims Respondent’s <firstcoast-energy.com> and <1stcoastenergy.com> domain names are confusingly similar to Complainant’s FIRST COAST ENERGY mark. Respondent removes the spaces in Complainant’s mark. Respondent adds a hyphen to the <firstcoast-energy.com> domain name. Respondent also adds the gTLD “.com” to Complainant’s mark in both disputed domain names. Respondent’s <1stcoastenergy.com> domain name also replaces the word “first” with the number representation “1st.” The Panel finds that both of the <firstcoast-energy.com> and <1stcoastenergy.com> domain names are confusingly similar to Complainant’s FIRST COAST ENERGY mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent has no rights or legitimate interests in the <firstcoast-energy.com> and <1stcoastenergy.com> domain names. Complainant asserts that Respondent has never been commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain names shows the registrant as “Jerry Bazley” and the registrant organization as “First Coast Energy.” However, an unknown registrant falsely used Mr. Bazley’s and First Coast Energy’s names in the registration of the disputed domain names. Whoever registered the domain names used the name of Complainant’s accounts payable manager, Jim Bazley, as the name of the registrant and used the address and telephone number of one of Complainant’s convenience stores as the registrant’s contact information. Neither Jim Bazley nor anyone on his staff registered the domain names. Therefore, the actual registrant and holder of the domain name is unknown. The actual Respondent is unknown. Under these circumstances, the WHOIS information is not sufficient to show rights or legitimate interest in the disputed domain names. Therefore, the Panel will disregard the inclusion of Complainant’s company name and Complainant’s accounts payable manager’s name in the WHOIS information. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (finding 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).
Complainant contends that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant asserts that Respondent is inactively holding the disputed domain names. Complainant states that Respondent’s disputed domain names resolve to pages displaying an “under construction” message. The resolving websites feature the heading “Welcome to the future site of..” and “This site is under construction or otherwise unavailable. Please check back later.” Additionally, the websites state that “Hosting is provided by AT&T Web Solutions” and provides a link to request information about hosting products and services provided by AT&T. Because these resolving websites provide content about AT&T, the websites can be viewed as displaying advertisements. The use of a confusingly similar domain name to resolve to a website displaying advertisements unrelated to a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant contends that Respondent registered and is using the <firstcoast-energy.com> and <1stcoastenergy.com> domain names in bad faith. The registration and use of a confusingly similar domain name to resolve to a website displaying an advertisement that is not associated with a complainant constitutes bad faith. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith). The Panel presumes that the unknown registrant earns revenue from placing the AT&T hyperlink on the resolving websites. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain). The Panel finds that Respondent registered and is using the <firstcoast-energy.com> and <1stcoastenergy.com> domain names in bad faith under Policy ¶ 4(b)(iv).
The Panel also finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and, therefore, registered and uses the domain names in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Furthermore, the unknown registrant’s false registration of the domain names in the name of Complainant’s accounts payable manager constitutes bad faith and registration. See State Farm Mutual Automobile Insurance Company. v. GRACE ROBINSON, FA 1525085 (Nat. Arb. Forum Nov. 8, 2013)(finding bad faith and use when the domain name was registered fraudulently under one of the complainant’s agents and there was no indication that any legitimate use of the domain name had ever been made or even contemplated).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstcoast-energy.com> and <1stcoastenergy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 27, 2014
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