Tupelo Honey Hospitality Corporation v. Reggie King
Claim Number: FA1705001732247
Complainant is Tupelo Honey Hospitality Corporation (“Complainant”), represented by Ritchie Taylor of Manning, Fulton, & Skinner, P.A., North Carolina, USA. Respondent is Reggie King (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tupelohoney.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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2017; the Forum received payment on May 18, 2017.
On May 18, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <tupelohoney.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 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2017 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@tupelohoney.com. Also on May 22, 2017, 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 16, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on June 21, 2017.
On June 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE 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, Tupelo Honey Hospitality Corporation, is a restaurant group with headquarters based in Asheville, North Carolina, USA. In connection with this business, Complainant uses the TUPELO HONEY CAFE® and TUPELO HONEY® marks to promote its goods and services. Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (TUPELO HONEY CAFE® —Reg. No. 3,299,086, Registered Sept. 25, 2007; TUPELO HONEY—Reg. No. 5,153,978, First Use Jan. 1, 2013, filed Jan. 14, 2016, Registered Mar. 7, 2017). Respondent’s <tupelohoney.com> (Registered May 29, 2008) is identical to Complainant’s TUPELO HONEY® mark as it contains the mark in its entirety and merely appends the generic top-level-domain (“gTLD”) “.com.” Respondent’s domain name is confusingly similar to Complainant’s TUPELO HONEY CAFE® mark as it contains the mark in its entirety—save for the word “cafe”—and appends the gTLD “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to register a domain name that reflects the TUPELO HONEY® and TUPELO HONEY CAFE® marks. Respondent failed to use <tupelohoney.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use; instead, <tupelohoney.com> currently fails to resolve to an active webpage.
Respondent registered and uses <tupelohoney.com> in bad faith. Respondent creates a likelihood of confusion with Complainant’s mark to intentionally attract Internet users seeking Complainant for Respondent’s commercial gain. Respondent had actual notice of Complainant’s rights in the marks.
B. Respondent
Respondent, Reggie King, asserts <tupelohoney.com> is not identical or confusingly similar to the TUPELO HONEY® and TUPELO HONEY CAFE® marks as Complainant has no enforceable trademark rights. “Tupelo Honey” is simply a variety of honey made across the world—with “Tupelo” serving as a geographic identifier of Tupelo, Mississippi, and has became ubiquitous in the market as to the variety of honey. “Tupelo Honey” is therefore generic and Complainant cannot assert rights therein.
Respondent’s registration of the domain name predates Complainant’s rights in or to the TUPELO HONEY® marks. The domain name was registered/created on May 5, 1998. The earliest use by Complainant claimed of any mark is July 27, 2000, almost 2 years later.
Respondent asserts it registered and uses <tupelohoney.com> in good faith as Respondent’s registration predates Complainant’s Trademark Application.
Complainant has engaged in reverse domain name hijacking by bringing this dispute.
C. Additional Submission—Complainant
Respondent is incorrect in asserting that Complainant’s TUPELO HONEY CAFE® mark was registered in 2012; rather, it was in 2007. Complainant’s mark is not generic and does not primarily target the honey market. Complainant’s 2017 registration of TUPELO HONEY independent of CAFÉ merely represents an expansion of Complainant’s trademark portfolio. In any case, Complainant has prima facie established rights in or to both marks.
Respondent’s claim of reverse domain name hijacking is baseless because Complainant merely reached out to Respondent to purchase the domain name prior to the initiation of this dispute to avoid the costs of litigation.
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s 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 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.
Identical and/or Confusingly Similar
Complainant asserts rights in the marks based upon Registration with the USPTO (e.g., TUPELO HONEY CAFE® —Reg. No. 3,299,086, Registered Sept. 25, 2007; TUPELO HONEY—Reg. No. 5,153,978, First Use Jan 1, 2013, Filed Jan. 14, 2016, Registered Mar. 7, 2017). Registration with a trademark authority such as the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s USPTO registration on the Principal Register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds Complainant has rights in the TUPELO HONEY and TUPELO HONEY CAFE® marks.
Complainant also argues that <tupelohoney.com> is identical to Complainant’s TUPELO HONEY® mark as it contains the mark in its entirety and merely appends the generic top-level-domain (“gTLD”) “.com.”
Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Forum Aug. 23, 2005) (<reebok.net> domain name identical to complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain). The Panel finds that <tupelohoney.com> is identical to Complainant’s TUPELO HONEY mark.
Complainant also contends that the domain name is confusingly similar to Complainant’s mark TUPELO HONEY CAFE®. Since the Panel has already found that Complaint has satisfied Policy ¶(4)(i), this claim need not be addressed.
Respondent, however, further contends that <tupelohoney.com> is comprised of common and generic terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark. The Panel finds that such a determination is not necessary or allowed under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks 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 (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)).
Respondent further argues that its registration of the <tupelohoney.com> domain name predates Complainant’s alleged rights in the marks. The Panel finds that such a determination is not necessary or allowed under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s marks. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (UDRP does not require 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).”).
Rights or Legitimate Interests
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 (Forum Aug. 18, 2006) (the complainant must first make a prima facie case that 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 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 argues Respondent lacks rights and legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to register a domain name that reflects the TUPELO HONEY® and TUPELO HONEY CAFE® marks. Absent evidence in the record to the contrary, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating respondent was commonly known by the disputed domain name). The WHOIS information of record here names the registrant of <tupelohoney.com> as “King, Reggie.” As such, the Panel finds that Respondent is not commonly known by <tupelohoney.com> per Policy ¶ 4(c)(ii).
Complainant also asserts that Respondent has failed to use <tupelohoney.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use as <tupelohoney.com> currently fails to resolve to an active webpage. Inactive holding of a domain name with no demonstrable preparations to use it evinces that Respondent lacks rights and legitimate interests in said domain name per Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is not using domain name in connection with an active website. The Panel finds that the [failure to make active use] of a domain name 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).”). Complainant asserts Respondent has not used the disputed domain name in connection with a bona fide offering since Respondent took control of the domain name and Respondent does not deny same. The Panel agrees and finds Respondent lacks rights and legitimate interests in <tupelohoney.com> per Policy ¶¶ 4(c)(i) & (iii).
Registration and Use in Bad Faith
Complainant asserts Respondent had actual notice of Complainant’s rights in the mark. Actual notice of a complainant’s rights in a mark is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that it sent Respondent a cease-and-desist letter that Respondent accepted before making further changes to the disputed domain name. The Panel may agree and find Respondent had actual notice of Complainant’s rights in the marks per Policy ¶ 4(a)(iii). But cf. Elec. Arts. Inc. v. Abstract Holdings Int’l LTD, FA 1415905 (Forum Jan. 4, 2012) (concluding that the respondent established rights and legitimate interests in the disputed domain name when the respondent did not intend to host competing hyperlinks and quickly removed them once it was notified).
Policy ¶4(a)(iii) requires both registration and use in bad faith. One, without the other, is plainly insufficient. While there is some evidence of record which could support a Panel finding of bad faith use, the Panel need not reach that question as there is clearly no evidence of bad faith registration. While it is also arguable that Respondent’s lack of “use” of the domain name for 19 years is not “use” in good faith, even if this Panel so found, it also would not matter as the Registration itself was not in bad faith and the Rule requires both. The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent contends its registration of <tupelohoney.com> predates any rights of Complainant in the TUPELO HONEY® and TUPELO HONEY CAFE® marks. There is no dispute that (a) Respondent registered/created the domain name on May 5, 1998 and (b) Complainant’s earliest use of any TUPELO-HONEY® mark was July 27, 2000. Thus, Respondent’s registration/creation pre-dates any right of Complainant by almost two years. Respondent or its predecessor in interest registered a domain name in good faith when it registered the domain name prior to a Complainant’s Trademark Registration. See TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Forum Mar. 28, 2005) (because respondent’s domain name registration predated complainant’s trademark filing date and alleged date of first use, the panel found “there was no bad faith on the part of Respondent when registering the subject domain name”). The Panel finds Respondent’s domain name registration predates Complainant’s first Trademark Uses and Applications and Registrations and finds Respondent registered the disputed domain name in good faith.
Respondent further contends that <tupelohoney.com> is comprised entirely of common terms that have many meanings apart from use in Complainant’s marks. Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith. Respondent is free to register a domain name consisting of common terms and the domain name in dispute contains such common terms. The Panel finds that Respondent did not register <tupelohoney.com> in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (because the respondent using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <tupelohoney.com> domain name, of its rights to use the disputed domain name. Respondent asserts Complainant knew Complainant’s case was without merit yet still attempted to seize a competitor’s domain name. The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent registered the disputed domain name in bad faith. The Panel finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Complainant knew when it initiated the action that Respondent’s registration of the domain name predated its First Use of any TUPELO HONEY® mark by almost two years. That one undisputed fact was then and is now fatal to this Complaint and supports this Panel’s finding of reverse domain name hijacking.
DECISION
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 <tupelohoney.com> domain name REMAIN WITH Respondent.
M. KELLY TILLERY, ESQUIRE, PANELIST
Dated: July 6, 2017
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