Cavern City Tours, Ltd. v. John Rauch
Claim Number: FA1601001658314
Complainant is Cavern City Tours, Ltd. (“Complainant”), represented by Paul C. Rapp, Monterey, Massachusetts, USA. Respondent is John Rauch (“Respondent”), Evansville, Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is «cavernclub.com», registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2016; the Forum received payment on January 27, 2016.
On January 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name «cavernclub.com» 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 February 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2016 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@cavernclub.com. Also on February 1, 2016, 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 21, 2016.
On February 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernanto Triana, Esq. as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the marks CAVERN CLUB and THE CAVERN CLUB through the following registrations, among others:
THE CAVERN CLUB - The United Kingdom - UK00001575205 – Classes: 43 – Registration Date: 12/01/1996
THE CAVERN CLUB - The United Kingdom - UK00002040810 – Classes: 25 – Registration Date: 26/07/1996
THE CAVERN CLUB - The United Kingdom - UK00002047347 – Classes: 16,18,20,21,24,26 – Registration Date: 02/08/1996
THE CAVERN CLUB - Canada - 1194364-00 / TMA676490 – Classes: 25,41 – Registration Date: 07/11/2006
CAVERN CLUB - European Trademark Office – 10011138 – Classes: 25,35,41,43 – Registration Date: 26/12/2011
THE CAVERN CLUB - European Trademark Office – 10011195 – Classes: 25,35,41,43 – Registration Date: 26/12/2011
The Cavern Club - World Intellectual Property Organization – 1234361 – Classes: 16,25,41,43 – Registration Date: 19/08/2014
CAVERN CLUB - Mexico – 1541961 – Classes: 25 – Registration Date: 23/02/2015
THE CAVERN CLUB - Canada - 1595901-00 / TMA911475 – Classes: 6,9,14,15,16,18,21,24,26 – Registration Date: 18/08/2015
THE CAVERN CLUB LIVERPOOL Est. 1957 - European Trademark Office – 14463831 – Classes: 9,15,16,18,21,25,26,34,35,41,43 – Registration Date: 29/01/2016
The marks CAVERN CLUB and THE CAVERN CLUB identify a nightclub in Liverpool, The United Kingdom, since 1957 which has been operated by Complainant since 1991.
The Cavern Club is known as the place of birth of The Beatles, who played over 300 shows in said club and has been included in the book “100 Places that Made Britain”.
The disputed domain name «cavernclub.com» is identical to the mark CAVERN CLUB because it contains the entire mark, along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interest in the disputed domain name.
The disputed domain name redirects consumers to the website www.rockstore.com, which sells rock photography and t-shirts.
Respondent is not using the disputed domain name to identify of any goods or services. Respondent has never been commonly known by the disputed domain name «cavernclub.com».
In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain redirects users to Respondent’s commercial website, at www.rockstore.com.
Respondent uses the disputed domain name «cavernclub.com» in bad faith because it is used to capitalize on Complainant’s famous mark in order to drive traffic to Respondent’s commercial website. Respondent registered the disputed domain name «cavernclub.com» in bad faith because it did so while aware of Complainant’s rights in the mark CAVERN CLUB.
B. Respondent
Complainant does not hold rights in the mark CAVERN CLUB in the United States, where Respondent is located, and, in fact the mark is owned by a third-party. Trademark of “Cavern Club” is owned by Hard Rock Cafe International, Inc. 6100 Old Park Lane Orlando, Florida, 32835 according to the United States Patent and Trademark Office.
Respondent’s use of the disputed domain name «cavernclub.com» to redirect to a commercial website, at www.rockstore.com, is a legitimate use because it does not compete with Complainant’s operation of a live music venue in Liverpool, England.
Respondent has not engaged in bad faith use or registration because it does not compete with Complainant, and does not foster a likelihood of confusion surrounding ownership of the disputed domain name «cavernclub.com».
Respondent purchased the disputed domain name legally, and in good faith, in 1998 in the United States of America, approximately 8 years after Complainant purchased a pre-existing business in England named “The Cavern Club”.
Respondent owned the disputed domain name legally, without complaint or any accusations of infringement for 17 years, until Complainant filed this dispute.
1. Complainant owns the marks CAVERN CLUB and THE CAVERN CLUB in The United Kingdom, since before the disputed domain name was registered by Respondent.
2. Respondent was aware of the Complainant’s rights in the marks CAVERN CLUB and THE CAVERN CLUB, yet it incorporated them in the disputed domain name. Thus, Respondent used the marks CAVERN CLUB and THE CAVERN CLUB to create a likelihood of confusion aimed to divert consumers to Respondent’s offered goods.
3. Respondent has never been commonly known by the disputed domain name or the marks CAVERN CLUB and THE CAVERN CLUB.
4. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
5. Respondent uses the disputed domain name «cavernclub.com» in bad faith because it is used to capitalize on Complainant’s famous mark in order to drive traffic to Respondent’s commercial website.
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.
Doctrine or Defense of Laches
Respondent considers that since Complainant filed the Complaint 17 years after the registration of the disputed domain name, the Complaint should be precluded by laches.
Certain jurisdictions endorse the doctrine of laches which typically bars the recovery of damages incurred before the filing of a lawsuit and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief[1].
The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services[2].
The Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding.
Furthermore, lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name.
Paragraph 2 of the Policy
Differently from the laches defense, which is not part of the Policy, Paragraph 2 of the Policy indirectly regards the same elements that would be affected for the delay in filing a claim (legitimate rights or interest in the disputed domain name and bad faith), from the Respondent’s perspective, which is when the disputed domain name is registered and renewed.
A threshold issue is identifying the relevant time period to consider in evaluating Respondent’s rights and legitimate interests and whether his conduct constituted bad faith. Paragraph 2 of the Policy addresses this issue – it provides that by applying to register a domain name or by asking to maintain or renew a domain name registration, a Registrant represents and warrants that (a) the statements Registrant made in the Registration Agreement are complete and accurate; (b) to Registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) Registrant is not registering the domain name for an unlawful purpose; and (d) Registrant will not knowingly use the domain name in violation of any applicable laws or regulations. It is Registrant’s responsibility to determine whether the domain name registration infringes or violates someone else’s rights.
The obligations set forth in Paragraph 2 of the Policy apply when registering the domain name as well as when renewing it, since the Policy is meant to be fulfilled while the domain name remains registered[5].
The panel in Octogen Pharmacal Co., Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, explains Paragraph 2 of the Policy, as follows:
“As this Panel sees it, this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. This obligation is an integral part of the Policy, and it cannot be ignored. A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration”[6].
Consequently, a domain name not only must be registered as per the requirements of Paragraph 2 of the Policy, but also its renewals must comply with the same standards. Thus, the requirements of the Policy can be studied not only regarding a domain name registration but also when it is renewed.
In fact, it is very important to stress that Paragraph 2 of the Policy states that Registrant represents and warrants, when applying to register a domain name, or when requesting to maintain or renew a domain name registration, that the domain name will not infringe upon or otherwise violate the rights of any third party.
The panel in Eastman Sporto Group LLC v. Jim and Kenny, sets the scope of Paragraph 2 of the Policy, as follows:
“Paragraph 2 does not distinguish among the initial date of registration and subsequent requests for renewal – the undertaking by its terms applies as of all such dates”[7].
Furthermore, good faith registration does not mean good faith renewal as set forth by the panel in PAA Laboratories GmbH v. Printing Arts America:
“The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired””[8].
Therefore, the elements of the Policy can be studied at the time of the registration or at the time of the renewal according to the specific circumstances of the case.
Complainant contends to be the owner of the marks CAVERN CLUB and THE CAVERN CLUB in The United Kingdom, since 1996, which was initially and continuously used since 1957 to identify a nightclub.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[9] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the marks CAVERN CLUB and THE CAVERN CLUB. Exhibits 3 to the Complaint includes, among others:
THE CAVERN CLUB - The United Kingdom - UK00001575205 – Classes: 43 – Registration Date: 12/01/1996
THE CAVERN CLUB - The United Kingdom - UK00002040810 – Classes: 25 – Registration Date: 26/07/1996
THE CAVERN CLUB - The United Kingdom - UK00002047347 – Classes: 16,18,20,21,24,26 – Registration Date: 02/08/1996
THE CAVERN CLUB - Canada - 1194364-00 / TMA676490 – Classes: 25,41 – Registration Date: 07/11/2006
CAVERN CLUB - European Trademark Office – 10011138 – Classes: 25,35,41,43 – Registration Date: 26/12/2011
THE CAVERN CLUB - European Trademark Office – 10011195 – Classes: 25,35,41,43 – Registration Date: 26/12/2011
The Cavern Club - World Intellectual Property Organization – 1234361 – Classes: 16,25,41,43 – Registration Date: 19/08/2014
CAVERN CLUB - Mexico – 1541961 – Classes: 25 – Registration Date: 23/02/2015
THE CAVERN CLUB - Canada - 1595901-00 / TMA911475 – Classes: 6,9,14,15,16,18,21,24,26 – Registration Date: 18/08/2015
THE CAVERN CLUB LIVERPOOL Est. 1957 - European Trademark Office – 14463831 – Classes: 9,15,16,18,21,25,26,34,35,41,43 – Registration Date: 29/01/2016
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited marks and the exclusive right to use them in connection with the stated goods and services. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[10].
Thus, Complainant established its rights in the marks CAVERN CLUB and THE CAVERN CLUB[11].
Therefore, the Panel concludes that Complainant has demonstrated rights in the marks CAVERN CLUB and THE CAVERN CLUB for purposes of Paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar to its marks CAVERN CLUB and THE CAVERN CLUB.
On the first place, before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s marks CAVERN CLUB and THE CAVERN CLUB, the Panel wants to point out that the addition of generic top-level domain (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[12]. Neither the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD has a distinctive function[13].
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
Furthermore, the Panel considers that the reproduction of the marks CAVERN CLUB and THE CAVERN CLUB, by the disputed domain name, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[14]. Especially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the same as the night club owner.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[15].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[16]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name because of the following: i) Respondent is not commonly known by the disputed domain name; ii) Respondent registered and uses the disputed domain name to trade off Complainant’s good will; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain name redirects to Respondent’s commercial site; iv) Respondent should have been well aware of Complainant’s famous mark; and v) Respondent is profiting from Complainant’s reputation.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Firstly, Respondent asserts that Hard Rock Cafe owns the trademark registration for CAVERN CLUB in the United States of America and that Complainant lost a case against Hard Rock Cafe regarding the mark CAVERN CLUB.
It is important to clarify that Hard Rock Cafe is neither part of this proceeding nor has any proved commercial relationship with Complainant and/or Respondent. Consequently, all allegations regarding Hard Rock Cafe are absolutely irrelevant for this case. Respondent cannot prove legitimate rights or interest in a disputed domain name based upon third parties trademarks.
Secondly, from the Response is clear that Respondent knew since at least 2011 of Complainant rights in its mark CAVERN CLUB as the information provided in the Response dates back to 2011, specially the alledged case between Complainant and Hard Rock Cafe; notwithstanding, he continue renewing the disputed domain name which he does not use but to redirect to his actual domain name, against the representations and warrants of Paragraph 2 of the Policy.
Thus, Respondent resigned to its laches defense with each renewal of the disputed domain name.
Thirdly, Respondent did not provide any evidence to prove that Complainant knew of the existence of the disputed domain name since its registration (to substantiate his laches defense). In fact, the only evidence there is in the file regarding Complainant’s knowledge of the disputed domain name are the negotiations initiated by Complainant in 2015, which is only months ago.
Furthermore, Respondent affirms the negotiations are still in course, which is not an impediment for Complainant to file this proceeding.
Finally, Respondent states that he operates a small business called “Rockstore, Inc.” by means of which he sells rock and roll related photography. That Complainant does not own a trademark registration in the United States of America and that Complainant has reached him to purchase the disputed domain name.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain name. In his Response, Respondent simply listed the items he sells, which is not evidence of Respondent’s rights or legitimate interest in them. Moreover, the Policy does not require for the mark registration to be located where Respondent has his business, the Policy merely requires for Complainant to have a mark registration, which in this case has been proven.
Respondent did not file any evidence that has been commonly known by the disputed domain name. On the contrary, Respondent uses the disputed domain name to redirect users to his website www.rockstore.com.
Consequently, Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, because he is using the disputed domain name to divert rock interested consumers to his commercial site in which he is offering rock related merchandise.
Respondent use of Complainant’s mark is directed to capitalize Complainant’s marks CAVERN CLUB and THE CAVERN CLUB goodwill by attracting internet users to its disputed domain names where Respondent sells rock related items[17]. Complainant asserts that The Cavern Club is famous and that can be evidenced from Exhibit 2 to the Complaint, in which a book called “100 Places that Made Britain” states:
“The Cavern Club must be one of the most famous music venues in the world. It was the place that launched the Beatles from Liverpool on to the world, and today it helps bring the world to Liverpool, as a place of pilgrimage for fans of the Fab Four.
(…)
If you take the view that music was a spark to the wider cultural and social changes of the 1960s, the Cavern Club is the place to go to see where it all began. After all, this was where, in 1961, the man who was to become the Beatle’s visionary manager, Brain Epstein, first saw them play, and it was where they built up their fan base and honed their skills”.
Hence, the Panel concludes that in fact Complainant’s trademarks are well-known as they are a reference as a tourist site for music fans.
Thus, the use of the disputed domain name cannot be qualified as being in connection with a bona fide offering of goods or services.
Consequently, the second requirement of paragraph 4(b) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts and Respondent accepts that the disputed domain name is merely use to redirect consumers to the website: www.rockstore.com. Not using the disputed domain name, allows the Panel to conclude that Respondent has registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name.
The fact that Respondent chose the expression “cavern club” to make up the disputed domain name is in this Panel’s view evidence per se of his bad faith.
The Panel finds this selection was deliberate and not product of chance, given the extent of the mark CAVERN CLUB’s well-known character since 1957 and/or its registration in 1996. Respondent simply could not have been unaware of it.
Thus, the Panel finds Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it. The mere fact of knowingly incorporating a third-party’s well-known mark in a domain name constitutes registration in bad faith[18]. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, Respondent is using the disputed domain name redirecting to a commercial website in which rock related items are sold. Thus, Respondent chose the mark CAVERN CLUB in order to generate traffic to a commercial site.
The Panel finds that Respondent must have known that the mark CAVERN CLUB within the disputed domain name would attract Internet users seeking Complainant’s mark, to the website from which he or she expected to make money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark.
Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes an attempt to use Complainant’s trademark to attract Internet users to its site for commercial gain which constitutes evidence of bad faith usage under paragraph 4(b)(iv) of the Policy.
Therefore, the three elements of the Policy 4(a) are satisfied in the present case in respect to Respondent of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain name «cavernclub.com» be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: March 7, 2016
[1] Mile, Inc. v. Michael Burg, D2010-2011 (WIPO, February 7, 2011) (The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace). See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35 and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company, supra (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); see also cases cited in the Index of WIPO UDRP Panel Decisions, sec. III(G)(1)(c)).
[2] See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Indus., WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).
[3] See City Bank v. Domain Admin / Inavit, Inc. FA1406001564337 (NAF July 21, 2014).
[4] See Mile, Inc. v. Michael Burg. D2010-2011 (WIPO February 7, 2011): (“The Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches”).
[5] See Big 5 Corp. v. EyeAim.com / Roy Fang. FA1308001513704 (NAF October 11, 2013).
[6] See Octogen Pharmacal Co., Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009).
[7] See Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010).
[8] See PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004).
[9] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[10] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[11] See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum November 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum August 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[12] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Nat. Arb. Forum May 18, 2012).
[13] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011)
[14] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[15] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[16] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[17] See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum March 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
[18] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, D2012-0474.
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