Atlanta BeltLine, Inc. v. BENJAMIN STIMIS BOISSON / ATLANTA BELTLINE BICYCLE SHOP
Claim Number: FA1510001644577
Complainant is Atlanta BeltLine, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is BENJAMIN STIMIS BOISSON / ATLANTA BELTLINE BICYCLE SHOP (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlantabeltlinebicycle.com>, registered with FastDomain 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2015; the Forum received payment on October 29, 2015.
On October 30, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <atlantabeltlinebicycle.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 November 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2015 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@atlantabeltlinebicycle.com. Also on November 4, 2015, 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 November 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Policy ¶ 4(a)(i)
Complainant has rights in the ATLANTA BELTLINE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,922,938, registered on February 22, 2011). Respondent’s <atlantabeltlinebicycle.com> domain name is confusingly similar to the ATLANTA BELTLINE mark because it contains the entire mark, less the space, and is altered by only the additional word “bicycle” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <atlantabeltlinebicycle.com> domain name despite its apparent business name because Complainant has not authorized it to use the ATLANTA BELTLINE mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to promote a commercial business.
Policy ¶ 4(a)(iii)
Respondent uses the <atlantabeltlinebicycle.com> domain name in bad faith because the resolving website takes advantage of the likelihood of confusion in order to promote a commercial business. Respondent registered the <atlantabeltlinebicycle.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the ATLANTA BELTLINE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the <atlantabeltlinebicycle.com> domain name was created on February 8, 2013.
C. Additional Submissions
In response to an interlocutory order, Complainant provided evidence that Respondent was operating a bicycle business on or around February 2013 under the trade name “Avondale Cycles.”
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(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.”).
Complainant alleges it has rights in the ATLANTA BELTLINE mark through its registration with the USPTO (e.g., Reg. No. 3,922,938, registered on February 22, 2011). Past panels have found that registrations with the USPTO suffice to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the ATLANTA BELTLINE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <atlantabeltlinebicycle.com> domain name is confusingly similar to Complainant’s ATLANTA BELTLINE mark because it contains the entire mark, less the space, and is altered by only the additional word “bicycle.” Complainant argues that the word “bicycle” is either descriptive or generic. Past panels have found that the addition of generic or descriptive words is not enough to distinguish marks and domain names. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Respondent’s <atlantabeltlinebicycle.com> domain name is confusingly similar to Complainant’s ATLANTA BELTLINE mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the <atlantabeltlinebicycle.com> domain name despite its apparent business name of “Atlanta BeltLine Bicycle Shop” because Complainant has not authorized Respondent to use the ATLANTA BELTLINE mark. Complainant has also provided evidence that Respondent was operating a bicycle business at or around the time it registered its domain name under the trade name “Avondale Cycles.” Respondent has not provided any contrary evidence showing use of the “Atlantic Beltline Bicycle Shop” trade name as early as the February 8, 2013 date when it registered the domain name. To the extent Respondent was not commonly known by the domain name as of the date of domain registration, he cannot avail himself of the protection afforded by Paragraph 4(c)(ii) of the Policy. See Royal Bank of Canada v. RBC Bank, D2002-0672 (WIPO Nov. 20, 2002) (“paragraph 4(c)(ii) of the Policy to apply, the respondent must have been ‘commonly known by the domain name’ as at the date of registration of the domain name” (quoting Rothschild Bank AG v. Rothchild Corporation, D2001-1112 (WIPO Jan. 15, 2002). Respondent’s failure to respond in this proceeding, and to the Panel’s interlocutory order, results in a void of contrary evidence by Respondent. The Panel therefore finds that Respondent is not commonly known by the <atlantabeltlinebicycle.com> domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant alleges that Respondent fails to use the atlantabeltlinebicycle.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to promote a commercial business. Past panels have found that using a domain name to promote a business unrelated to a complainant shows a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant’s business does not represent 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).”). The Panel therefore finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the <atlantabeltlinebicycle.com> domain name in bad faith because the resolving website takes advantage of the likelihood of confusion in order to promote a commercial business. Past panels have found that the operation of a commercial business through a domain name that is likely to cause confusion constitutes bad faith use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel finds such behavior by Respondent here, and holds that Respondent registered and uses the <atlantabeltlinebicycle.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the <atlantabeltlinebicycle.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the ATLANTA BELTLINE mark. Complainant argues that because it is well known in the Atlanta area, and because the resolving website has previously provided links to websites operated by Complainant, Respondent must have been aware of Complainant’s rights. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel accordingly finds that Respondent registered the <atlantabeltlinebicycle.com> domain in bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atlantabeltlinebicycle.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 4, 2015
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