Golden Orchard Franchising, Inc. v. Al Perkins
Claim Number: FA1501001598216
Complainant is Golden Orchard Franchising, Inc. (“Complainant”), represented by David J. Meretta of Brown & Kannady, LLC, Colorado, USA. Respondent is Al Perkins (“Respondent”), represented by UDRP POLICE DBS, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goldenorchard.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2015; the National Arbitration Forum received payment on January 5, 2015.
On January 6, 2015, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <goldenorchard.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@goldenorchard.com. Also on January 6, 2015, 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 January 26, 2015.
On February 2, 2015, Complainant submitted an Additional Submission which was timely. February 3, 2015, Respondent submitted an Additional Submission which was also timely.
On February 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant uses GOLDEN ORCHARD to identify its assisted living services. The mark has been duly registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,117,219, registered Sept. 18, 2006). The <goldenorchard.com> domain name is identical to the GOLDEN ORCHARD mark.
(ii) Respondent has no rights or legitimate interests in the <goldenorchard.com> domain name. First, Respondent is not and has not been known by this <goldenorchard.com> domain name. Respondent is not authorized to use the GOLDEN ORCHARD mark in domain names. Respondent has failed to resolve the <goldenorchard.com> domain name to any active website, and instead holds it to the inactive <changeyourlife.com> domain name.
(iii) Respondent registered and is using the <goldenorchard.com> domain name in bad faith. Respondent seeks to obtain a nice profit by selling the domain name to Complainant. Respondent owns many domain names that infringe on other entity’s trademarks.
B. Respondent
(i) Respondent cites to Vitamin Shoppe Indus. v. Kosher Vitamin Express, FA 1466844, noting that the phrase “golden orchard” is so descriptive that Complainant cannot monopolize all uses of that term. When as here Respondent is not providing assisted care services, there is no unlawful infringement on such a descriptive trademark.
(ii) Respondent is in the business of buying and reselling generic and descriptive Internet domain names. When domain names are set to expire, people like Respondent bid on them so that they may sell them off later to someone interested in a particular generic or descriptive domain name. This <goldenorchard.com> domain name is a descriptive phrase and not merely a trademark. The phrase “golden orchard” means an orchard with gold-colored leaves. Searching “golden orchard” on the Internet does not even give an impression that a substantial business concern uses the phrase as a trademark. See, e.g., Resp., at Attached Ex. 2.
(iii) Respondent has not acted in bad faith. Respondent has not registered the domain name primarily for resale to Complainant, and Complainant has completely failed to illustrate that Respondent intended to register the domain name to infringe on the GOLDEN ORCHARD mark and to resell specifically to Complainant. The act of generally reselling generic or descriptive domain names is not in itself bad faith and thus does not give cause to Policy ¶ 4(a)(iii) bad faith registration or use absent a more tangential relationship. It is inconceivable that Respondent would be on notice of Complainant’s American business when Respondent resides on an island in Europe.
C. Additional Submissions
(i) Complainant
(a) Respondent has continued to engage in gamesmanship concerning the true identity of the owner of the disputed domain name. Respondent refused to identify the identity of his “client” in other matters as well. Respondent falsely asserted that a “writ” countersuing Complainant in England’s High Court of Justice was being “drawn up right now. However, it turns out there is no such High Court action. It squarely calls into question the Respondent’s credibility.
(b) Respondent concedes that the disputed domain name is identical to the Complainant’s company name and its marks, and he sees “no value” in pursuing an argument that the marks are weak. Respondent’s citations thus are of no moment. Complainant very clearly has satisfied paragraph 4(a)(i) of the Policy.
(c) Complainant’s allegations and supporting evidence establish a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. The vague and flowery descriptions offered by Respondent as to its intentions, or those of unidentified “clients” in unidentified industries, simply do not constitute “concrete evidence of its rights or legitimate interests.
(d) Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(ii), where Respondent has a pattern of registering the trademarks of others in domain names as evidenced by a wave of previous adverse UDRP decisions. The fact that Respondent has passively held the disputed domain name on an inactive website – which he claims has been done “to prevent a dispute” and “to find an amicable resolution to the matter” is further evidence of bad faith. On the issue of bad faith, Respondent attempts to recycle many of the same arguments that have previously been rejected by Panels in his many other UDRP actions.
(ii) Respondent
(a) Supplemental filings should be limited to those requested by the Panel and only be permitted in exceptional circumstances where Complainant could not have reasonably anticipated the need to incorporate the supplemental matters in the Complaint. Complainant has abused the provision of Supplemental Rule 7(c) in a desperate attempt to not only try to discredit Respondent but also his representative.
(b) Complainant has failed to rebut the Respondent’s case merely using its supplemental submission to repeat its initial submission rather than address any of the unanswered questions raised in the Response. The burden is on the Complainant to prove this fact and there is no evidence on the record to demonstrate that Respondent registered the disputed domain name with a clear-cut intention of capitalizing on the goodwill created Complainant. Complainant refers to previous cases involving Respondent however Complainant still has a case to prove and a burden to fulfill.
(c) Common words are still free for public use when not used in a way that would infringe the mark, as is the case here. Complainant cannot and does not, by virtue of its trade marks posses the right to prevent others from using dictionary words and common phrases. Respondent is not using the website and the disputed domain name to advertise products or services that compete with Complainant. The website does not intend to imitate Complainant in any way. Complainant has failed to satisfy the conjunctive requirement of Paragraph 4(a)(iii) of the Policy as the disputed domain name was registered and used in good faith.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in 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.
Preliminary Issue: as to the limitation of matters to be included in the Complainant’s Additional Submission
Respondent avers in its Additional Submission to the effect that Supplemental filings should be limited to those requested by the Panel and only be permitted in exceptional circumstances where Complainant could not have reasonably anticipated the need to incorporate the supplemental matters in the Complaint. Respondent contends that Complainant has abused the provision of Supplemental Rule 7(c) in a desperate attempt to not only try to discredit Respondent but also his representative.
According to the Supplemental Rules, there is no limitation on the matters to be included in additional submissions other than the provision “additional submissions must not amend the Complaint or Response” pursuant to Supplemental Rule 7(f). The Panel is of the view that the Complainant’s additional submission does not constitute any amendment to the Complaint but to simply supplement the Complaint and to rebut the Response, and thus finds that there is no violation of the Supplemental Rules on the part of the Complainant.
Complainant uses GOLDEN ORCHARD to identify its assisted living services. The mark has been duly registered with the USPTO (e.g., Reg. No. 3,117,219, registered Sept. 18, 2006). The Panel finds the USPTO registration to stand as sufficient evidence of Complainant’s rights, even when as here Respondent dwells elsewhere than the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <goldenorchard.com> domain name is identical to the GOLDEN ORCHARD mark. The Panel agrees that the <goldenorchard.com> domain name is identical in that it only removes the mark’s spacing and affixes the gTLD “.com.” See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
While Respondent contends that the domain name is comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel does not think that the phrase “Golden Orchard” is of common or descriptive words in respect of assisted living services of the Complainant’s marks. In addition, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not and has not been known by this <goldenorchard.com> domain name. Complainant notes that Respondent is not authorized to use the GOLDEN ORCHARD mark in domain names. The Panel notes that “Al Perkins” is both listed as the registrant of record for the domain name, as well as the admitted holder of the domain name as per the Response.
Complainant contends in its Additional Submission that the vague and flowery descriptions offered by Respondent as to its intentions, or those of unidentified “clients” in unidentified industries, simply do not constitute “concrete evidence of its rights or legitimate interests.
Respondent argues that Respondent is in the business of buying and reselling generic and descriptive Internet domain names. When domain names are set to expire, people like Respondent bid on them so that they may sell them off later to someone interested in a particular generic or descriptive domain name. This <goldenorchard.com> domain name is a descriptive phrase and not merely a trademark. Respondent contends in its Additional Submission that common words such as “Golden Orchard” are still free for public use when not used in a way that would infringe the mark, as is the case here. It goes on to argue that Complainant cannot and does not, by virtue of its trade marks posses the right to prevent others from using dictionary words and common phrases.
The Panel, however finds that Complainant well established its trademark rights on the term “Golden Orchard” as an distinctive identifier in respect of assisted living services by submitting a copy of USPTO trademark registration showing that Complainant’s mark has been duly registered with the USPTO (e.g., Reg. No. 3,117,219, registered Sept. 18, 2006). This Panel finds that Respondent did not submit sufficient evidence to show that the disputed domain name is a generic one.
The Panel agrees that Respondent does not allege to be commonly known by the domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant also claims that Respondent has failed to resolve the <goldenorchard.com> domain name to any active website, and instead holds it to the inactive <changeyourlife.com> domain name. Respondent agrees that the website has no truly active use.
The Panel agrees with Complainant that under these particular facts, there is no basis for finding that Respondent has made a Policy ¶ 4(c)(i) bona fide offering or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel recalls that Respondent argues to the effect that it is in the business of buying and reselling generic and descriptive Internet domain names. Respondent explains that when domain names are set to expire, people like Respondent bid on them so that they may sell them off later to someone interested in a particular generic or descriptive domain name.
Respondent contends in its Additional Submission that common words such as “Golden Orchard” are still free for public use when not used in a way that would infringe the mark, as is the case here. It goes on to argue that Complainant cannot and does not, by virtue of its trade marks posses the right to prevent others from using dictionary words and common phrases.
The Panel, however finds that Complainant well established its trademark rights on the term “Golden Orchard” as an distinctive identifier in respect of assisted living services by submitting a copy of USPTO trademark registration showing that Complainant’s mark has been duly registered with the USPTO (e.g., Reg. No. 3,117,219, registered Sept. 18, 2006). As already noted above, this Panel finds that Respondent did not submit sufficient evidence to show that the disputed domain name is a generic one.
Respondent goes on to argue in its Additional Submission that i) Complainant cannot and does not, by virtue of its trade marks posses the right to prevent others from using dictionary words and common phrases; ii) Respondent is not using the website and the disputed domain name to advertise products or services that compete with Complainant; iii) the website does not intend to imitate Complainant in any way; and that iv) Complainant has failed to satisfy the conjunctive requirement of Paragraph 4(a)(iii) of the Policy as the disputed domain name was registered and used in good faith.
Respondent claims it was unaware of Complainant or its “Golden Orchard” mark at the time of domain name registration, and argues that Complainant operates within a small region within the United States, while Respondent is located in Jersey. In addition, Respondent argues having utilized a conscious effort to secure a domain at great time and costs and admitted being in the "business" of acquiring descriptive and generic domain names for resale.
The Panel finds that Respondent was “willfully blind” in failing to make a quick and simple enquiry to find out if the term “Golden Orchard” belonged to third parties. The Panel finds that the Respondent may not have had actual knowledge of the Complainant, it would have been aware of the traffic that the Dispute Domain Name was generating at the time it decided to acquire the disputed domain name. It would be implausible that a professional domain name trader such as the Respondent would not have reviewed traffic details and search engines results before valuing and acquiring the disputed domain name”. See Tim Schroer v. Al Perkins, FA1597755 (Nat. Arb. Forum February 10, 2015); see also Sumol+Compal Marcas, S.A. v. BuyDomains.com, (WIPO Case No. D2013–0566).
Complainant avers that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(ii), where Respondent has a pattern of registering the trademarks of others in domain names as evidenced by a wave of previous adverse UDRP decisions. See, e.g., Teledrift Company v. Al Perkins, FA 1423203 (Nat. Arb. Forum February 23, 2012); Schwander Insurance Services, LLC c/o Michael Schwander v Al Perkins, FA 1503780 (Nat. Arb. Forum July 19, 2013); Sonny Gambhir v. Al Perkins, FA 1507793 (Nat. Arb. Forum August 15, 2013); Groupe Mutuel v. Al Perkins, WIPO D2013-1606 (WIPO November 6, 2013). The Panel finds that multiple adverse rulings ordering the transfer of domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goldenorchard.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 16, 2015
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