White Oak Entertainment, LLC - DBA The Chateau at White Oak Vineyard v. Al Perkins
Claim Number: FA1611001702045
Complainant is White Oak Entertainment, LLC - DBA The Chateau at White Oak Vineyard (“Complainant”), represented by John R. Flynn of Jordan & Mahoney Law Firm, P.C., Iowa, United States. Respondent is Al Perkins (“Respondent”), Jersey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thechateauatwhiteoak.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2016; the Forum received payment on November 8, 2016.
On November 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thechateauatwhiteoak.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 November 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@thechateauatwhiteoak.com. Also on November 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
The Chateau at White Oak is a brand relative to our event planning business. Our event center for weddings and other functions is on White Oak Drive, in Cambridge, Iowa 50046. We host approximately 100 weddings each year and in addition, several other social functions for the public and business clients as well. The public, our clients, future clients, vendors (D.J., Photography, Videography, Food, etc.), guests and alike have all come to know the Chateau at White Oak as our brand and business of event planning, especially wedding event planning. People identify The Chateau at White Oak with our business and the services that we provide. We named our business the Chateau at White Oak based solely off of where we are physically located. Again, people identify with that - White Oak Drive -The Chateau at White Oak.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[All three elements of the Policy must be alleged and proved by the Complainant. UDRP Para. 4(a)./ [The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages. FORUM Supp. Rule 4(a).}
[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)( J ); UDRP Policy ¶4(a)(i).
White Oak Entertainment, LLC - DBA: The Chateau at White Oak Vineyard has been operating as a business located in Cambridge, Iowa since October of 2014. The Chateau at White Oak Vineyard provides event services to the Des Moines, IA community and surrounding areas. For example, The Chateau hosts a substantial amount of weddings each year. The Chateau at White Oak Vineyard purchased the domain name thechateauatwhiteoak.com and immediately started using the domain name for all branding purposes and to promote The Chateau at White Oak Vineyard services. Our internet site is an extremely valuable asset, where we promote our services offered. Our continuous and exclusive use of THE CHATEAU AT WHITE OAK mark is extremely important to our clients, prospective clients, guests, vendors and the general public. Our physical location of White Oak Drive in Cambridge, Iowa absolutely identifies and absolutely relates to our mark of the chateauatwhiteoak. The name recognition is absolutely vital to our business. We have spent substantial amounts of time and money in generating this name recognition and brand. The mark THE CHATEAU AT WHITE OAK also represents our company's goodwill. The Chateau at White Oak Vineyard has developed a common-law trademark on the name The Chateau at White Oak after continuous and exclusive use of the mark in the area surrounding Cambridge, IA. Our business is physically located at 15065 NE White Oak Drive, Cambridge, Iowa 50046. A substantial amount of money was used to purchase this facility and the real estate that it sits on. In addition, a substantial amount of money was spent in improvements. Respondent would have easily seen our legitimate claim to the domain name through a simple google search using the terms "the chateau at white oak" as our business is the first content returned when searched, along with a map showing the location of our business being operated out of Cambridge, Iowa on White Oak Drive.
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
Respondent has no legitimate interest in the domain name thechateauatwhiteoak.com. As the name pertains to a specific building, "The Chateau", which is located on White Oak Drive in Cambridge, Iowa. Respondent being located in Jersey, UK has no association to the operations of the Chateau or Cambridge, Iowa. Godaddy, LLC communicated to The Chateau at White Oak Vineyard through phone conversations that Respondent is known for buying domain names and forwarding all traffic to porn sites or other inappropriate sites in order to try and demand a higher price from the business with rights to the name. Respondent has not ever gone by or been associated with The Chateau at White Oak. Respondent has also registered the domain name with a false name of Al Perkins and listed the address and phone number of the Radisson Blu Waterfront Hotel in Jersey, St. Helier. Respondent is not affiliated with our business in any way. Respondent has no affiliation in thechateauatwhiteoak.com, except that he purchased the domain name at auction after we accidentally did not renew our domain name, which was a mistake that we wish we would have never made. Respondent has now placed pornography on our website. This serves no legitimate interest. He is attempting to extort us, plain and simple.
[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy 4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Respondent registered the domain name and is actively using it in bad faith to damage The Chateau at White Oak Vineyard's brand. The Chateau at White Oak Vineyard was made aware of the issues with its domain from potential clients calling and informing them that our domain name redirects to a pornography website www.siska.tv. Respondent is not known as or related in any way to The Chateau at White Oak Vineyard and actively operates as trevmedia@gmail.com. Respondent is attempting to profit by originally offering the website back to The Chateau at White Oak Vineyard for $6,700. The Chateau at White Oak Vineyard refused to be extorted by Respondent. As a result, Respondent said that he would not even sell it back for $10,000 followed by a series of unprofessional emails, followed by Respondent telling us to "carry on losing business". Respondent's actions have shown that he has no legitimate interest in the domain name and is only attempting to profit off of damaging The Chateau at White Oak Vineyard's brand, image and name recognition. Respondent has other UDRP and WIPO decisions against him. For example, please see - Sonny Gambhir v. Al Perkins, FA 1507793 (Nat. Arb. Forum July 9, 2013 and Teledrift Co. v. Al Perkins, FA 1423203 (Nat. Arb. Forum Jan. 12, 2012). Respondent's continued conduct and modus operandi shows a pattern of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Perkins Perkins (trevmedia@gmail.com) sent the following e-mail to the Forum on December 5, 2016:
“His
is funny as hell...the complainant emailed me about the domain but the idiot
used this domain as his email address so o couldn't get back to him..
So he could of saved all his hassle and cost and time by simply sending me an
email from a correct email address.
Honestly you could not make this shit up it's like dumber and dumber think is
in. It sure who is who the complainant or the lawyer lol”
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 has been operating a business located in Cambridge, Iowa since 2014. Complainant provides “event services” to the greater Des Moines, Iowa community. Complainant owns common law rights in the THE CHATEAU AT WHITE OAK mark based on its substantial investment of time and money in generating name recognition for the mark. A complainant’s claim of common law rights in a mark is permitted when the complainant can show a secondary meaning in the mark based on use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (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). The continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). While Complainant did not present much extrinsic evidence, it presented sufficient evidence. Complainant has (just barely) established a secondary meaning in the “THE CHATEAU AT WHITE OAK” mark. Complainant has established common law rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s domain name is identical to Complainant’s mark. In fact, Complainant failed to renew the domain name (a mistake Complainant promises to never make again). Respondent acquired the expired domain name. All of this is undisputed. Respondent eliminates the spaces between the words of Complainant’s mark and affixes the “.com” generic top-level domain (“gTLD”). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. Such changes do not serve to adequately distinguish a respondent’s domain name from a complainant’s mark pursuant to Policy ¶4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Respondent’s domain name is identical to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). The burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 Respondent has no rights or legitimate interests in the domain name. Respondent has never gone by this name or been associated with Complainant in any way. The WHOIS information merely lists “Al Perkins” as registrant. There is no obvious relationship between Respondent’s name and the domain name. Respondent has failed to provide any evidence for the Panel’s consideration. There is no basis in the available record to find Respondent commonly known by the domain name under Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply).
Complainant claims Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent purchased the domain name at auction after Complainant accidentally did not renew its domain name. The domain name redirects to a pornography website (www.siska.tv). Using a domain name to redirect Internet users to a website displaying pornographic content does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶4(c)(iii)). Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant has provided a copy of email traffic between the parties for the Panel. Respondent originally offered the domain name for sale to Complainant for $6,700.00. Complainant refused this offer. Eventually, Respondent said that it would not even sell the domain name back for $10,000.00 (along with a couple of additional intemperate comments that don’t need to appear in the record). Then Respondent appeared to drop the price to $4,999.00, but the offer does not look sincere (if one can gauge such a thing based upon an email). A respondent’s offering a domain name for sale for an amount in excess of Respondent’s out-of-pocket costs associated with the acquisition of the domain name is evidence of bad faith under Policy ¶4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Respondent failed to show its costs approximated $6,700.00 (or any other number Respondent offered to sell the domain name for). For this reason, the Panel finds Respondent registered and uses the domain name in bad faith pursuant to Policy ¶4(b)(i).
Respondent has previous UDRP decisions against it. See Sonny Gambhir v. Al Perkins, FA 1507793 (Forum July 9, 2013); see also Teledrift Co. v. Al Perkins, FA 1423203 (Forum Jan. 12, 2012). Panels have held a respondent’s prior adverse UDRP rulings are evidence of a pattern of bad faith under Policy ¶4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii).”). This Panel does not go quite so far. These decisions show Respondent’s business plan is to grab expiring domain names in the hopes the original owner would want to repurchase them. Respondent then redirects the domain names to pornographic web sites in the hopes of adding some negotiating pressure. Respondent does not dispute this business model. The Panel concludes Respondent has engaged in a pattern of bad faith under the penumbra of Policy ¶4(b)(ii).
Complainant claims Respondent’s domain name redirects to a pornography website (www.siska.tv). Respondent does not deny this claim (although the domain no longer redirects to pornography). Using a domain name to redirect Internet users to a pornographic website constitutes bad faith. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). Respondent registered and is using the domain name in bad faith.
Finally, Respondent has provided false WHOIS information. In a commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption or to show the WHOIS information is correct. Therefore, this Panel is more than willing to find bad faith registration and use on these grounds.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <thechateauatwhiteoak.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, December 12, 2016
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