Georgia Aquarium, Inc. v. Atlanta
Aquarium Service c/o John Mesa Jr.
Claim
Number: FA0504000466018
Complainant is Georgia Aquarium, Inc. (“Complainant”),
represented by Andrew J. Wilson, of Alston and Bird, LLP,
1201 West Peachtree Street, Atlanta, GA 30309.
Respondent is Atlanta Aquarium
Service c/o John Mesa Jr. (“Respondent”), 1811 Huntington Chase,
Chamblee, GA 30341.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <georgiaaquarium.com>, registered with Gkg.net,
Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 22, 2005.
On
April 22, 2005, Gkg.net, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <georgiaaquarium.com> is registered
with Gkg.net, Inc. and that Respondent is the current registrant of the name. Gkg.net,
Inc. has verified that Respondent is bound by the Gkg.net, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
May 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 23, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@georgiaaquarium.com by e-mail. Respondent did not file a response within
the prescribed time, and what it did file was not in the proper form nor was it
served on the Complainant, as is required by the Policy.
Having
received no proper Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 27, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the
Panel may issue its decision based on the documents submitted and in accordance
with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <georgiaaquarium.com>
domain name is identical to Complainant’s GEORGIA AQUARIUM mark.
2. Respondent does not have any rights or
legitimate interests in the <georgiaaquarium.com> domain name.
3. Respondent registered and used the <georgiaaquarium.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Georgia Aquarium, Inc., oversees all operations of the Georgia Aquarium.
Complainant manages the $200 million, 400,000 square-foot aquarium facility
that is currently under construction. Complainant has used the GEORGIA AQUARIUM
mark since at least November 19, 2001, when the announcement of the Georgia
Aquarium project was made to the public. Complainant has filed an application
with the United States Patent and Trademark Office (“USPTO”) for the GEORGIA
AQUARIUM mark (Serial No. 78/490,765). Complainant has invested significant
time, effort and expense in building recognition and goodwill in the GEORGIA
AQUARIUM mark. Over the past three and one-half years the GEORGIA AQUARIUM mark
has received national publicity, being chronicled in the USA Today, CNN.COM,
ABCNEWS.COM and many others too numerous to list.
Georgia Aquarium
Inc. has already begun booking reservations for various receptions, banquets,
and other events to be held at the Georgia Aquarium, occurring in 2006 and
beyond. As part of its marketing and promotional efforts, GAI maintains an
Internet Web site devoted to the Georgia Aquarium (the "Georgia Aquarium
Web Site") at the domain names GEORGIAAQUARIUM.NET and
GEORGIAAQUARIUM.ORG. The Georgia
Aquarium Web Site averages nearly 10,000 hits per month from Internet users
around the world.
Respondent
registered the <georgiaaquarium.com> domain name on Nov. 19, 2001.
Prior to receiving Complainant’s cease and desist letter, Respondent’s domain
name did not resolve to an active website for over three years. Currently,
Respondent’s domain name resolves to a website that features aquarium-related
goods and services.
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."
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(e), 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)
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.
Respondent has
failed to respond to the Complaint. Therefore, the Panel may accept all
reasonable assertions and allegations set forth by Complainant as true and
accurate. See Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence); 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.”).
It is
unnecessary for Complainant to HOLD a registered mark in order to satisfy
Policy ¶ 4(a)(I). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Mar. 23, 2000) (noting that the Policy “does not distinguish between registered
and unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that Complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist).
Complainant asserts that its GEORGIA AQUARIUM mark has gained secondary
meaning through its continuous use in commerce since at least as early as 2001
and through significant expenditures Complainant has made on building customer
recognition and confidence in its mark. Respondent has failed to contest this
assertion; therefore, the Panel accepts Complainant’s assertion as true. Thus,
Complainant has effectively established common-law rights in the GEORGIA
AQUARIUM mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17,
2000) (finding common law rights in a mark where its use was continuous and
ongoing, and secondary meaning was established); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(finding that Complainant had provided evidence that it had valuable goodwill
in the <minorleaguebaseball.com> domain name, establishing common law
rights in the MINOR LEAGUE BASEBALL mark).
Respondent’s <georgiaaquarium.com>
domain name is identical to Complainant’s GEORGIA AQUARIUM mark but for the
mere addition of the generic top-level domain “.com.” Such a change is not
enough to distinguish Respondent’s domain name from Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant
when establishing whether or not a mark is identical or confusingly similar,
because top-level domains are a required element of every domain name.”); see
also Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat.
Arb. Forum Dec. 29, 2003) (“Respondent's domain name,
<kioti.com>, is identical to Complainant's KIOTI mark because adding a
top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may interpret Respondent’s failure to respond
as evidence that Respondent lacks rights and legitimate interests in the <georgiaaquarium.com>
domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that, by not submitting a response, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent registered
the <georgiaaquarium.com> domain name on November 19, 2001 and
made no use of the disputed domain name for over three years. Respondent made
no use of the domain name until Complainant notified Respondent of the present
dispute. This substantial period of inactivity, more than three years, is
sufficient to establish that Respondent has no rights or legitimate interests
in the domain name. See
Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding
that Respondent had no rights or legitimate interests where he decided to
develop the website for the sale of wall products after receiving Complainant’s
“cease and desist” notice); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(“merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see
also Flor-Jon Films, Inc. v. Larson,
FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to
develop the site demonstrates a lack of legitimate interest in the domain
name).
Respondent
registered the domain name the very same day that Complainant announced to the
public its intent to begin the GEORGIA AQUARIUM project and this is evidence
that Respondent lacks rights and legitimate interests in the domain name. See
EntergyShaw LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000)
(finding no rights or legitimate interests where the respondent registered the
domain names at issue on the same day the complainant issued a press release
regarding a forthcoming joint venture and failed to develop an active website).
Respondent is
using the disputed domain name, which is identical to Complainant’s GEORGIA
AQUARIUM mark, to direct Internet users to a website offering commercial goods.
Such use is not a use in connection with 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). See G.D. Searle & Co. v. Fred Pelham,
FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is
using the infringing domain name to sell prescription drugs it can be inferred
that Respondent is opportunistically using Complainant’s mark in order to
attract Internet users to its website); see also Ziegenfelder Co. v. VMH Enter., Inc.
D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
based on the fact that the domain names bear no relationship to the business of
Respondent and that Respondent would only legitimately choose to use
Complainant’s mark in a domain name if Respondent was seeking to create an
impression that the two businesses were affiliated).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <georgiaaquarium.com>
domain name or is authorized to register domain names featuring Complainant’s
GEORGIA AQUARIUM mark. Thus, the Panel concludes that Respondent lacks rights
and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <georgiaaquarium.com> domain name, which is identical to
Complainant’s GEORGIA AQUARIUM mark, to operate a website that features
commercial goods and services. Respondent’s domain name diverts Internet users,
who intend to search under Complainant’s mark, to a website sponsored by
Respondent. Respondent’s practice of diversion, motivated by commercial gain,
through use of an identical domain name evidences bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
Respondent
registered the <georgiaaquarium.com> domain name with actual or
constructive knowledge of Complainant’s rights in the GEORGIA AQUARIUM mark due
to Complainant’s aggressive promotion of the mark in commerce. Moreover, the
Panel infers that Respondent registered the domain name with actual knowledge
of Complainant’s mark due to the fact that both parties are located in the same
state and Respondent registered the domain name the same day Complainant
announced to the public the commencement of the GEORGIA AQUARIUM project.
Registration of a domain name identical to a mark, despite actual or
constructive knowledge of another’s rights in the mark, is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”).
Respondent
registered the domain name the very same day that Complainant announced to the
public its intent to begin the GEORGIA AQUARIUM project; such use is evidence
of opportunistic bad faith. See Mr. Severiano Ballesteros Sota, Fairway,
S.A. and Amen Corner, S.A. v. Waldron, D2001-0351 (WIPO June 18, 2001)
(finding that Respondent's registration of the
<seveballesterostrophy.com> domain name at the time of the announcement
of the Seve Ballesteros Trophy golf tournament "strongly indicates an
opportunistic registration"); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the "domain names are so obviously connected
with the Complainants that the use or registration by anyone other than
Complainants suggests 'opportunistic bad faith'")
Furthermore,
Respondent’s actions of merely registering the <georgiaaquarium.com> domain
name without making use of the domain name for over three years constitutes
passive holding and is evidence of bad faith registration and use. See Mondich & Am. Vintage Wine Biscuits,
Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s
failure to develop its website in a two year period raises the inference of
registration in bad faith); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that merely holding an infringing domain name without active use
can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that Respondent’s passive holding of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <georgiaaquarium.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
June 8, 2005
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