Margaritaville Enterprises, LLC v. David Hurst
Claim Number: FA1708001744640
Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is David Hurst (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <margaritavillesales.com>, <margaritavillerealestate.com>, and <margaritavillerealty.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2017; the Forum received payment on August 15, 2017.
On Aug 16, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <margaritavillesales.com>, <margaritavillerealestate.com>, and <margaritavillerealty.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@margaritavillesales.com, postmaster@margaritavillerealestate.com, postmaster@margaritavillerealty.com. Also on August 17, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Margaritaville Enterprises, LLC, uses the fanciful MARGARITAVILLE mark extensively for a wide variety of goods and services, including real estate services, hotel services, entertainment services, bar services, and retail store services. Complainant has rights in the MARGARITAVILLE mark—which is based on Jimmy Buffet’s 1977 hit song “Margaritaville”—through its multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,642,132, registered Apr. 23, 1991). Respondent’s <margaritavillesales.com>, <margaritavillerealestate.com>, and <margaritavillerealty.com> are confusingly similar to the MARGARITAVILLE mark, as each contains the mark in its entirety, merely differing by the addition of the descriptive word or phrase “sales,” “realestate,” or “realty;” as well as the generic top-level domain name (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <margaritavillesales.com>, <margaritavillerealestate.com>, and <margaritavillerealty.com> domain names. Respondent is not commonly known by any of the disputed domain names and Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain names are currently parked and being offered for sale.
Respondent’s registration and use of the disputed domain is in bad faith under the Policy. All three of the disputed domain names are being offered for sale. Additionally, the disputed domain names are being passively held, which is further evidence of bad faith. Finally, due to the fame and fanciful nature of the MARGARITAVILLE mark, it is clear Respondent had actual knowledge of Complainant and its rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Margaritaville Enterprises, LLC of Atlanta, Georgia, USA. Complainant is the owner of domestic registrations for the mark MARGARITAVILLE, which it has used continuously since at least as early as 1991, in connection with its provision of a wide range of goods and services such as real estate and property management, hotels, fan clubs, entertainment concerts, and retail gifts and clothing.
Respondent is David Hurst of Reunion, Florida, USA. Respondent’s registrar’s address is listed as Scottdale, AZ, USA. The Panel notes that <margaritavillerealestate.com> and <margaritavillerealty.com> were created on or about July 27, 2015; and <margaritavillesales.com> was created on or about March 1, 2016.
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.
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 claims rights in the MARGARITAVILLE mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,642,132, registered Apr. 23, 1991). Registration of a mark with the USPTO has been found sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant’s registration of the MARGARITAVILLE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims the <margaritavillesales.com>, <margaritavillerealestate.com>, and <margaritavillerealty.com> domain names are confusingly similar to the MARGARITAVILLE mark, as each domain name contains the mark in its entirety, merely differing by the addition of the descriptive word or phrase “sales,” “realestate,” or “realty;” as well as the gTLD “.com.” Past cases have found that such changes are not sufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel here finds the disputed domain names to be confusingly similar to the MARGARITAVILLE mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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) (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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <margaritavillesales.com>, <margaritavillerealestate.com>, or <margaritavillerealty.com> as Respondent is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “david hurst.” Additionally, the lack of evidence in the record indicating that Respondent was authorized to register a domain name using Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain names. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel here finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by the failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that the disputed domain names are currently parked and are being offered for sale. Failure to make an active use of a disputed domain name can be evidence of a respondent’s lack of rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name). Complainant includes screenshots of the websites resolving from the disputed domain name, appearing to show that the domain names are unused, parked, and available for sale. The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain names per Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent’s general offer to sell the disputed domain names indicates its lack of rights and legitimate interests in the same. Offers to sell a disputed domain name can indicate such a lack per Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). The Panel again notes the resolving websites appear to offer the domain names for sale. The Panel finds Complainant’s evidence supports a finding that Respondent lacks rights or legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that Respondent’s general offer for sale of the disputed domain names is evidence that it registered and is using the disputed domain names in bad faith. A general offer to sell a disputed domain name can be evidence of bad faith registration and use per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). The Panel again notes the resolving websites appear to offer the domain names for sale and finds that Respondent has exhibited bad faith registration and use per Policy ¶ 4(b)(i).
Complainant also contends that Respondent’s failure to make an active use of <margaritavillesales.com>, <margaritavillerealestate.com>, and <margaritavillerealty.com> demonstrates it registered and used the disputed domain names in bad faith. Inactive holding of a disputed domain name can be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s evidence that the disputed domain names resolve only to parked pages. The Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <margaritavillesales.com>, <margaritavillerealestate.com>, and <margaritavillerealty.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 25, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page