The Beach People International Pty Ltd v. SIEBERT REALTY
Claim Number: FA1605001675767
Complainant is The Beach People International Pty Ltd (“Complainant”), represented by Jay Schloff, Michigan, USA. Respondent is SIEBERT REALTY (“Respondent”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebeachpeople.com>, registered with Network Solutions, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2016; the Forum received payment on May 19, 2016.
On May 19, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <thebeachpeople.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 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@thebeachpeople.com. Also on May 23, 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 June 17, 2016.
On June 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Since 2013, Complainant has offered a wide variety of consumer products for sale in the field of beachwear and other related goods under the THE BEACH PEOPLE mark.
2. Complainant has registered the THE BEACH PEOPLE mark with the Australian Government Intellectual Property Office (Reg. No. 1,544,600, registered Sept. 4, 2013) and other trademarks registered in Australia and the United States.
3. Respondent’s <thebeachpeople.com> domain is identical to Complainant’s THE BEACH PEOPLE mark as it incorporates the entire mark while merely removing the spaces between the words of Complainant’s mark.
4. Respondent has no rights or legitimate interests in the <thebeachpeople.com> domain name. Respondent is not commonly known by the disputed domain name. The <thebeachpeople.com> domain name, leads to a parked webpage with links to third-party competitors of Complainant.
5. Respondent is using the disputed domain name in bad faith. Respondent is intentionally using the disputed domain name to attract Internet users to its resolving webpage through confusion as to the source, sponsorship, affiliation, or endorsement of the webpage for commercial gain.
B. Respondent
Respondent made the following contentions
1. Respondent has been using the THE BEACH PEOPLE mark since 1991 to promote its business offering real estate and vacation rental services.
2. Respondent registered the <thebeachpeople.com> domain name on August 6, 1999 in furtherance of this business purpose. Respondent’s use of the THE BEACH PEOPLE mark predates Complainant’s filing and registration dates of the mark with trademark authorities, and Complainant does not assert common law rights to the THE BEACH PEOPLE mark that predate Respondent’s use of the mark.
3. Complainant has failed to meet its prima facie burden that Respondent has no rights or legitimate interests in the <thebeachpeople.com> domain name. Respondent has used the THE BEACH PEOPLE mark since 1991, and it is, and has always been, Respondent’s intention to use the disputed domain name to further promote Respondent’s services; Respondent has yet to publish its website posted to the disputed domain name.
4. Respondent has not registered or used the <thebeachpeople.com> domain in bad faith. Respondent’s registration of the disputed domain name predates Complainant’s first use by nearly 14 years. Further, as aforementioned, Respondent has yet to publish its website posted to the disputed domain, so Complainant has failed to meet its burden of showing that Respondent registered and is using the domain in bad faith.
C. Additional Submissions
Complainant
1.Complainant reiterates its submission that Respondent has no rights or legitimate interest in the disputed domain name.
2. In support, it submits that Respondent has had the domain name for 17 years but has not used it for a legitimate use with a website.
3. This is significant as during this time it has maintained an active website using another domain name.
4.The disputed domain name is used to display links to competitors of Complainant and Respondent is responsible for those links.
5. Complainant had also brought to the notice of Respondent the sort of goods in which it trades.
1. Complainant is an Australian company engaged in the business of providing a wide variety of consumer products for sale in the field of beachwear and other related goods.
2. Complainant has registered the THE BEACH PEOPLE mark with the Australian Government Intellectual Property Office (Reg. No. 1,544,600, registered Sept. 4, 2013) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,906,863, registered Mar. 1, 2016).
3. Respondent registered the disputed domain name on August 6, 1999 and thus well prior to the registration of complainant’s trademarks.
4. The disputed domain name resolves to the website of the registrar of the domain name which carries links to Complainant’s competitors.
5. As Respondent registered the disputed domain name prior to the registration of Complainant’s trademarks, Respondent did not register the domain name in bad faith and the proceeding fails for that reason.
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.
The first question that arises is whether Complainant has a trademark on which it can rely. Complainant submits that it can rely on four registered trademarks for THE BEACH PEOPLE, one in the US and three in Australia. Since 2013, Complainant has offered a wide variety of consumer products for sale in the field of beachwear and other related goods under the THE BEACH PEOPLE mark. Complainant has provided the Panel with evidence of its registration of the THE BEACH PEOPLE mark with the Australian Government Intellectual Property Office (Reg. Nos. 1,544,600, 1,544,608 and 1,544,609, all registered Sept. 4, 2013). See Compl., at Attached Annex A. The Panel also notes Complainant’s registration of the THE BEACH PEOPLE mark with the USPTO, included in Complainant’s Attached Annex A. The panel in Vanguard Trademark Holdings USA LLC v. Wang Liqun, held that registration of a mark with multiple governmental authorities is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i). See FA 1625332 (Forum July 17, 2015). The Panel therefore finds that Complainant has established its trademark rights under Policy ¶ 4(a)(i).
The second question that arises is whether the <thebeachpeople.com> domain name is identical or confusingly similar to the THE BEACH PEOPLE mark. Complainant submits that Respondent’s domain name is identical to the trademark as it incorporates the entire mark while removing spaces between the words. The Panel also notes that the generic top-level domain (“gTLD”) “.com” is affixed to the domain. Panels have found that these necessary alterations are irrelevant to a Policy ¶ 4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel agrees with Complainant and holds the <thebeachpeople.com> domain name to be identical to Complainant’s THE BEACH PEOPLE mark under Policy ¶ 4(a)(i).
Respondent also argues that its registration of the <thebeachpeople.com> domain name predates Complainant’s rights in the registered trademark. That issue is a relevant consideration in UDRP proceedings and it will be seen that it becomes relevant in this proceeding. However, that issue must be resolved in the consideration given to bad faith and not here; because at this initial stage all that is in issue is whether the Complainant has a trademark, which it does, and whether the domain name is identical or confusingly similar to the trademark, which it also is. Policy ¶ 4(a)(i) 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 AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant has thus established the first of the three elements that it must make out.
In view of the finding to be made under Policy ¶ 4(a)(iii) dealing with bad faith it is not necessary for the Panel to express any conclusions on rights or legitimate interests, the issue with which Policy ¶ 4(a)(ii) is concerned.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. But the two essential requirements are that the domain name was registered in bad faith and that it is being used in bad faith. Some cases where this requirement has become an issue have, not surprisingly, shown how a domain name can have been used in bad faith but was not registered in bad faith. Indeed, there are cases where the domain name has been registered in good faith and yet, due to changed circumstances, the registrant’s conduct at a later time can be described accurately as being use in bad faith; such a case, however, would not have established that the domain name was registered in bad faith and the proceeding would normally fail for that reason. Despite this, and despite the public debate about it, ICANN has not changed this requirement in the Policy. Some dispute resolution policies require only that the complainant show either that the domain name was registered in bad faith or that it was used in bad faith, but the ICANN policy continues to require both aspects to be proved, as it always has.
In particular, claims have failed where it could not be shown that the domain name was registered in bad faith because it was registered before the trademark relied on by the complainant had been registered. In such cases, it has been said, and generally implemented, that if the domain name was registered before the complainant’s trademark, it would have been impossible for the domain name to have been registered in bad faith as there was nothing towards which the animus involved in bad faith could have been directed. There are many decisions to that effect and, as they result in the absence of any proof that the domain name was registered in bad faith, they fail.
A similar group of cases has emerged where the complainant itself has not existed when, at an earlier date, the disputed domain name was registered. In those case, also, it has been said many times that there could not have been any bad faith towards the complainant involved in the registration of a domain name when the complainant itself did not even exist when the domain name was registered. One such case was Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) where it was said that it was “impossible” for the respondent to have registered the disputed domain name in bad faith as the complainant company did not exist at the time of registration.
Another such case, one in which the present Panel was involved and where these issues are discussed, was Saratoga Publishing LLC v. Rich Richbart / Saratoga Online Inc, FA1503001608704 (Forum Apr. 27, 2015), where the panel said:
In the present case, Complainant relies in part on 3 registered Australia trademarks for THE BEACH PEOPLE, registered nos. 1,544,600, 1,544,608 and 1,544,609. Each of those trademarks was registered on September 4, 2013. However, Respondent had registered the domain name many years before, on August 6, 1999. Complainant also relies on the US trademark for THE BEACH PEOPLE which was registered on March 1, 2016. The domain name was likewise registered well before that trademark. In all cases, Respondent could not have registered the domain name while motivated by bad faith towards Complainant, its trademark or the goods sold by Complainant under its trademark as the trademark did not exist at that time. Indeed, Complainant itself probably did not exist at that time. Whether it did or not, Complainant’s own case is that it did not sell goods under the THE BEACH PEOPLE mark until 2013.
Nor has Complainant sought to show that it has a common law or unregistered trademark in THE BEACH PEOPLE which might take its rights back to a date prior to the registration of the trademarks. But even if it did, it is difficult to see, on the evidence provided, how such rights could have preceded the date when Respondent registered the disputed domain name.
Nor has Complainant sought to make out any other basis on which it might be said that the domain name was registered in bad faith, the issue that was considered in Saratoga Publishing LLC (supra).
The Panel finds that there is no evidence on which it could be found that the domain name in the present case was registered in bad faith, whatever might be said about its later use of the domain name.
Complainant has thus not made out the third of the three elements it is required to establish
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thebeachpeople.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 23, 2016
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