KIRKBRAE COUNTRY CLUB v. Corey Moyers
Claim Number: FA1807001797564
Complainant is KIRKBRAE COUNTRY CLUB (“Complainant”), represented by Eric E. Renner of Renner Law, LLC, Rhode Island, USA. Respondent is Corey Moyers (“Respondent”), West Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kirkbrae.org>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2018; the Forum received payment on July 19, 2018.
On July 20, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <kirkbrae.org> 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 July 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2018 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@kirkbrae.org. Also on July 23, 2018, 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 August 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in KIRKBRAE. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the domain name; and the domain name has not been used for a bona fide purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant and then used the domain name in bad faith by redirecting Internet users to services unrelated to those offered by Complainant under the trademark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.[i]
The factual findings pertinent to the decision in this case are that:
1. Complainant is a country club located in Lincoln, Rhode Island, that offers golfing and other sports facilities, plus dining services;
2. the disputed domain name was registered on April 20, 2000 and resolves to a website which directly duplicates images and material from Complainant’s official website and carries links to various third party insurance providers; and
3. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] The Panel notes that Complainant has a pending USPTO trademark application (serial no. 88044203) for the word mark KIRKBRAE but since it is not yet registered it gives Complainant no rights for the purposes of paragraph 4(a)(i) of the Policy. Complainant holds a Rhode Island State trademark registration for a figurative trademark including the word KIRKBRAE but, as stated, registration with a national authority (such as the USPTO) is necessary.
Nonetheless, Complainant claims continuous use of the trademark since 1961 and provides supporting evidence in the form of a sworn declaration from Timothy Flanagan, General Manager of Complainant for the past 11 years and various other internet archive material and media articles.
Flanagan declares that the trademark has been used for 55 years and the domain name, <kirkbrae.com>, for 19 years. He declares that Complainant has over 500 members at present and that over the past five years its average annual revenue has been more than USD 7 million. During that same period he declares that average annual advertising expenditure has been more than USD 80,000.
The internet archive material shows an active website resolving from the domain name, <kirkbrae.com>, and showing the trademark going back to at least 2005. The media attention is essentially limited to awards Complainant has received for its services since 2015. It would appear from the evidence as a whole that this more recent popularity of Complainant’s establishment coincides with a general refurbishment of its facilities.
For the purposes of paragraph 4(a)(i) of the Policy, the Panel finds that Complainant has done enough to prove common law trademark rights, albeit that later the Panel will have something to say of the relative timing of those rights when compared with the creation date of the disputed domain name.
For the purposes of determining identity or confusing similarity of the terms, something also needs to be said of the actual trademark in which Complainant has rights. The Flanagan declaration merely states that references therein to the trademark are to the trademark as defined in the Complaint. For its part, the Complaint states that it “refers to all of [Complainant’s] applications, registrations, and common law rights collectively as the ‘KIRKBRAE Mark’”.
The Panel has found that Complainant’s trademark rights are limited to its common law rights established by use. The evidence of use almost universally shows the figurative mark which is the subject of the Rhode Island State registration, mentioned earlier. That mark is a combination of the word “KIRKBRAE” in upper case lettering, together with the words “Country Club” thereunder and an accompanying heraldic device comprising the capitol letter “K” in a wreath. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.0”)[iii] asks at paragraph 1.10: How are trademark [registrations] with design elements or disclaimed text treated in assessing identity or confusing similarity? The consensus answer is that:
“Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. … However where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, … , panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP.”
The same logic applies to unregistered trademarks and having regard to the visual and aural prominence of the word KIRKBRAE in the figurative mark, the Panel finds that the figurative mark can be treated as equivalent to a word mark. For the purposes of comparison it is agreed that the non-distinctive gTLD, “.org”, can be disregarded[iv] and so the Panel finds the domain name confusingly similar to the trademark.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
The publicly available WhoIs information lists “Corey Moyers” as the domain name registrant and so there is no evidence that Respondent might be commonly known by the domain name. Complainant states that there is no association between the parties. There is no evidence that Respondent has any trademark rights. The disputed domain name resolves to a website which directly imports images and text from Complainant’s official website resolving from <kirkbrae.com> and further contains links to insurance providers in Rhode Island State and other places in the US, all of which have no business connection with Complainant.
A prima facie case has been made[vi] and so the onus sifts to Respondent. In the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel notes that the disputed domain name was registered in 2000. Registration of the domain name predates establishment of Complainant’s common law rights by some years, no matter how the evidence accompanying the Complaint is assessed. Complainant does not directly confront the difficulty this might present in terms of the requirement to prove registration in bad faith but instead argues for the application of paragraph 4(b)(iv) above.
Paragraph 3.8.1 of the WIPO Jurisprudential Overview 3.0 states:
“… where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”,
However, paragraph 3.8.2 of the WIPO Jurisprudential Overview 3.0 states:
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.”
In particular connection with Complainant’s argument for the application of paragraph 4(b)(iv) of the Policy, the WIPO Jurisprudential Overview 3.0 states at 3.2.1:
“… in some cases, e.g., where it is unclear why a domain name was initially registered and the domain name is subsequently used to attract Internet users by creating a likelihood of confusion with a complainant’s mark, panels have found that UDRP paragraph 4(b)(iv), read in light of paragraph 4(a)(ii), can support an inference of bad faith registration for the respondent to rebut. Such inference would be supported by a clear absence of the respondent’s own rights or legitimate interests, the nature of the domain name itself (i.e., the manner in which the domain name incorporates the complainant’s mark), the content of any website to which the domain name points – including any changes and the timing thereof, the registrant’s prior conduct generally and in UDRP cases in particular, the reputation of the complainant’s mark, the use of (false) contact details or a privacy shield to hide the registrant’s identity, the failure to submit a response, the plausibility of any response, or other indicia that generally cast doubt on the registrant’s bona fides.”
Here, there is no explanation why Respondent adopted the domain name. “Kirkbrae” is not a common geographical placename and it is not the geographical placename of Complainant’s club. It is to that extent at least, distinctive, and there is no clear reason why other traders would have a bona fide need to use it. Albeit that the Panel found, on the evidence, Complainant’s use only supported the establishment of common law rights from a date later than the creation date of the disputed domain name, the Panel has no reason to question the declaratory statement that Complainant was established in 1961 and has continuously used the trademark since that time. The facts support an inference of bad faith registration for Respondent to rebut and in the absence of any explanation that inference remains.
Returning to paragraph 4(b) of the Policy, the Panel observes that paragraph 4(b)(iv) stands apart from the other three scenarios in that it hinges on use in bad faith. It says nothing of registration in bad faith. The Panel finds use in bad faith. Further, the Panel finds that the likely motivation for that bad faith use is commercial gain in one form or another. Finally, there is an inference of bad faith registration and so no reason the panel should not apply paragraph 4(b)(iv)[vii]. The Panel finds registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kirkbrae.org> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: August 27, 2018
[i] Respondent wrote to the Forum after the due date for a Response with a submission as to why the Complaint should be dismissed. The Panel has a residual discretion to consider that submission. In the circumstances the Panel finds that the submission related to issues which should have been included in a formal Response. The submissions have therefore been disregarded by the Panel in reaching its decision.
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”; see also, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003).
[iii] Arbitrations under the Policy are offered not just by the Forum by the other providers, including the World Intellectual Property Office (“WIPO”). In common with the Forum, WIPO panels seek to ensure that the Policy operates in a fair and predictable manner and so, in its present third iteration, WIPO publishes its Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.0”) which summarizes consensus panel views on a range of substantive and procedural issues.
[iv] See, for example, 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017) finding that the <nexcare.org> domain name incorporated complainant’s NEXCARE mark and merely added “.org.” which did not distinguish the disputed domain name from Complainant’s mark.
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See, for example, Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) where the panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
[vii] As has happened in some cases where panelists have found that although paragraph 4(b)(iv) was capable of being applied, there were sufficient indicia of registration in good faith that they declined to do so.
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