Burroughs & Chapin Company, Inc. v. Web Marketing inc.
Claim Number: FA0706001021018
Complainant is Burroughs & Chapin Company, Inc. (“Complainant”), represented by John
C. McElwaine, of Nelson Mullins
Riley &
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <grandeduneshomesonline.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2007.
On June 27, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <grandeduneshomesonline.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 June 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 18, 2007 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@grandeduneshomesonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <grandeduneshomesonline.com> domain name is confusingly similar to Complainant’s GRANDE DUNES mark.
2. Respondent does not have any rights or legitimate interests in the <grandeduneshomesonline.com> domain name.
3. Respondent registered and used the <grandeduneshomesonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Burroughs & Chapin Company, Inc., is the
owner and developer of Grande Dunes, a private, master-planned, luxury
community located in
Respondent registered the <grandeduneshomesonline.com> domain name on February 2,
2006. Respondent’s domain name resolves
to a website sponsored by a real estate brokerage company in direct competition
with Complainant. The website displays
Complainant’s GRANDE DUNES mark, advertises homes for sale in the Grande Dunes
development, and contains links to the rival company’s homepage, which sells
competing real estate throughout the
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. 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 (Nat. Arb. 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.”).
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.
Under Policy ¶ 4(a)(i), Complainant must show that it has
rights in the GRANDE DUNES mark. The
Panel finds that Complainant’s registration of the GRANDE DUNES mark with the
USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶
4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also U.S. Office of Pers.
Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce
the USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Complainant alleges that Respondent’s <grandeduneshomesonline.com> domain name is confusingly similar to Complainant’s GRANDE DUNES mark. The Panel agrees, as the disputed domain name includes the entire mark, simply adding the word “homes,” which describes Complainant’s business, and the generic term “online” onto the end of the mark. These additions do not negate any confusing similarity between the disputed domain name and the GRANDE DUNES mark. Moreover, the addition of the generic top-level domain “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is a required element of all domain names. Thus, the Panel finds that the <grandeduneshomesonline.com> domain name is confusingly similar to Complainant’s GRANDE DUNES mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <grandeduneshomesonline.com> domain name. Under Policy ¶ 4(a)(ii), Complainant has the initial burden of showing that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. In the present case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises the
presumption that Respondent lacks rights or legitimate interests in the <grandeduneshomesonline.com> domain
name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“Given Respondent’s failure to submit a substantive answer in a timely
fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”). Nevertheless,
the Panel will now examine all evidence in the record to determine if
Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s <grandeduneshomesonline.com> domain name resolves to a
website featuring content and links in direct competition with
Complainant. The Panel presumes that
Respondent profits when Internet users take advantage of the services offered
on this website. This does not qualify
as either a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See
Complainant alleges that Respondent is not commonly known by the <grandeduneshomesonline.com> domain name, which indicates that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent’s WHOIS information does not indicate, and there is nothing further in the record to suggest that Respondent is commonly known by the disputed domain name. Moreover, Respondent is not licensed or authorized to use Complainant’s GRANDE DUNES mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the <grandeduneshomesonline.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <grandeduneshomesonline.com>
domain name, which is confusingly similar to Complainant’s GRANDE DUNES
mark, redirects Internet users to a website in direct competition with
Complainant. This constitutes a disruption
of Complainant’s business and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding that the respondent registered the domain name in question
to disrupt the business of the complainant, a competitor of the respondent); see also Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”).
The Panel presumes that Respondent
benefits commercially when Internet users employ the services of the competing
real estate company that sponsors the <grandeduneshomesonline.com>
domain name. Respondent is thus
capitalizing on the likelihood that Internet users will confuse the source of
the website at the disputed domain name as being affiliated with Complainant. This is further evidence that Respondent
registered and is using the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10,
2003) (“As Respondent is using the domain name at issue in direct competition
with Complainant, and giving the impression of being affiliated with or
sponsored by Complainant, this circumstance qualifies as bad faith registration
and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”).
Respondent also includes a
disclaimer on the website that resolves from the <grandeduneshomesonline.com> domain name, which asserts that
the website is not affiliated with Complainant in any way. However, the inclusion of the disclaimer on
the website does not counter the initial expectation of Internet users that the
disputed domain is associated with Complainant.
The Panel finds that the disclaimer is not enough to mitigate the
requirement that Respondent registered and is using the disputed domain name in
bad faith pursuant to Policy ¶ 4(a)(iii).
See DaimlerChrysler Corp. v. Bargman,
D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the
domain name consists of the complainant’s well-known trademark, does not
counter the expectation of Internet users that the domain name is sponsored by
the complainant); see also Ciccone v.
Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid
a finding of bad faith. First, the
disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel
initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a
violation of Complainant’s rights.”).
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 <grandeduneshomesonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 6, 2007
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