David Briggs Enterprises, Inc. v. MARY DANNA
Claim Number: FA1503001611862
Complainant is David Briggs Enterprises, Inc. (“Complainant”), represented by Darrell J. Stutes, Louisiana, USA. Respondent is MARY DANNA (“Respondent”), represented by Daniel M. Redmann of Duplass, Zwain, Bourgeois, Pfister & Weinstock, Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fattuesday.com>, registered with Uniregistrar Corp.
The undersigned certify that we have acted independently and impartially, and, to the best of our knowledge, have no conflict of interests in serving as Panelists in this proceeding.
Sheri L. Falco, Darryl C. Wilson and Terry F. Peppard as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 27, 2015; the Forum received payment on March 30, 2015.
On April 6, 2015, Uniregistrar Corp confirmed by e-mail to the Forum that the <fattuesday.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@fattuesday.com. Also on April 14, 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 May 4, 2015.
Additional Submissions
Complainant filed an additional submission, denominated a “Written Statement,” under date of May 8, 2015, and Respondent filed an additional submission, denominated a “Reply to Complainant’s Written Statement,” under date of May 12, 2015. Although a question has been raised as to the timeliness of Complainant’s additional submission, particularly because Respondent has not objected to the timing of that additional submission, the Panel has elected, in the interests of justice, to accept both additional submissions of the parties for whatever value they may have in assisting in the resolution of this proceeding. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was filed late, but was received before a panel was appointed).
On May 18, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Sheri L. Falco, Darryl C. Wilson and Terry F. Peppard as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
In its Complaint and additional submission, Complainant has alleged, among other things, the following:
Complainant uses the FAT TUESDAY mark to facilitate the sale and distribution of non-alcoholic drink mixes and the operation and licensing of frozen specialty cocktail beverage retail stores.
Complainant holds a registration for the FAT TUESDAY trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,895,162, Registered May 23, 1995).
After the Complaint in this proceeding was filed on March 27, 2015, and while this proceeding was pending, Respondent registered the contested domain name <fattuesday.com> on April 6, 2015, by transfer from its predecessor-in-interest, in violation of Policy ¶ 8(a).
The domain name is identical to Complainant’s FAT TUESDAY trademark.
In 2007, the domain name changed hands at a price of $16,500.00.
The website resolving from the domain name went offline in October of 2010 and continued to be offline as of the date of filing of the Complaint in this proceeding.
Respondent has failed to make any active use of the domain name.
Respondent registered the domain name for the purpose of selling it to Complainant for an asking price of $100,000.00-to-$120,000.00, which is greatly in excess of Respondent’s costs in acquiring and maintaining it.
Respondent’s suggestion that the resolving website has been offline for more than four years because it is undergoing redevelopment is specious.
Respondent has no rights to or legitimate interests in the <fattuesday.com> domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
In its Response and additional submission, Respondent has alleged, inter alia, as follows:
Respondent does not contest that Complainant has rights in the FAT TUESDAY trademark or that the <fattuesday.com> domain name is confusingly similar to Complainant’s mark.
Respondent’s predecessor-in-interest has used the domain name to provide to the public news and information associated with the annual Fat Tuesday celebrations in New Orleans, Louisiana.
Respondent’s predecessor-in-interest has registered other New Orleans-themed domain names containing informative content similar to that of the resolving website, including <crawfish.com>, <pralines.com>, <mardigras.info> and <redbeansandrice.com>.
Complainant has provided insufficient evidence to demonstrate that Respondent has no rights to or legitimate interests in the <fattuesday.com> domain name.
Respondent disclaims any responsibility for the delivery to Complainant of a purported offer from its alleged agent to sell the domain name to Complainant for a price in excess of $100,000.00.
The website resolving from the <fattuesday.com> domain name has been undergoing redevelopment for a future purpose under Respondent’s registration.
Complainant has not provided sufficient evidence to establish Respondent’s bad faith in the registration and use of the domain name.
(1) the domain name registered by Respondent is substantively identical, and therefore confusingly similar, to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Respondent does not contest that Complainant has rights in the FAT TUESDAY trademark or that the <fattuesday.com> domain name is identical or confusingly similar to Complainant’s mark, as alleged in the Complaint. Accordingly, we find, pursuant to Policy ¶ 4(a)(i), that Complainant has such rights and that the contested domain name is substantively identical, and, therefore, confusingly similar, to Complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to or legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must show prima facie that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
In the circumstances here presented, the question of Respondent’s claim of rights to or legitimate interests in the <fattuesday.com> domain name turns on a single set of facts, namely that that the registration of the domain name was transferred to Respondent by its predecessor-in-interest after the filing and service of the Complaint now before us and while this proceeding was pending. This was in direct violation of Policy ¶ 8(a), which provides in pertinent part:
You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 …. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.
Paragraph 8(a) exists to ensure the integrity and effectiveness of the Uniform Domain Name Dispute Resolution Policy (“UDRP”). It is the function of this Panel to assist in the enforcement of this vital Policy provision where the facts require it. See Policy ¶ 3(c):
We [the Internet Corporation for Assigned Names and Numbers (“ICANN”)] will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances:
* * * * *
(c) our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under the Policy…
On the facts before us, therefore, we find that Respondent’s participation in the transfer to it of the contested domain name while this proceeding was pending, in violation of Policy 8(a), deprives it of any claim of rights to or legitimate interests in the domain name under Policy ¶ 4(a)(ii).
The same facts that determine that Respondent has no creditable claim of rights to or legitimate interests in the <fattuesday.com> domain name also demonstrate that Respondent has registered and uses the domain name in bad faith. Indeed
that Respondent’s registration of the domain name was in service of an attempt to extract from Complainant a price of $100,000.00 or more from the sale of an inactive domain name, which is a price demonstrably in excess of Respondent’s proven costs in acquiring and maintaining the domain name, falls squarely within the parameters of Policy 4(b)(i), which identifies circumstances in which it may be found that a domain name has been registered and is being used in bad faith as that term is understood in the Policy. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding, under Policy ¶ 4(b)(i), that a UDRP respondent registered and used a domain name in bad faith where that respondent offered the domain name for sale for far more than the out-of-pocket costs incurred in registering it).
We therefore find that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <fattuesday.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Sheri L. Falco, Darryl C. Wilson and Terry F. Peppard, Panelists
Dated: May 26, 2015
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