NH Media Associates LLC v. RON CRITTENDON / JULIEN ANDERSON
Claim Number: FA1604001668737
Complainant is NH Media Associates LLC (“Complainant”), represented by Meaghan H. Kent of Venable LLP, District of Columbia, USA. Respondent is RON CRITTENDON / JULIEN ANDERSON (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <visitnationalharbor.com>, registered with FastDomain 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2016; the Forum received payment on April 4, 2016.
On April 4, 2016, FastDomain Inc. confirmed by e-mail to the Forum that the <visitnationalharbor.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 April 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2016 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@visitnationalharbor.com. Also on April 5, 2016, 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 April 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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:
1. Policy ¶ 4(a)(i) - Complainant has rights in the NATIONAL HARBOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,139,684, registered on September 5, 2006). Respondent’s <visitnationalharbor.com> domain name is confusingly similar to the NATIONAL HARBOR mark because it contains the entire mark, less the space, along with the descriptive term “visit” and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii) - Respondent is not commonly known by the <visitnationalharbor.com> domain name because it has not been authorized to use the NATIONAL HARBOR mark and because the available WHOIS information lists “RON CRITTENDON” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains a blank, inactive, website.
3. Policy ¶ 4(a)(iii) - Respondent uses the <visitnationalharbor.com> domain name in bad faith because it has offered the domain for sale to Complainant and because the resolving website contains a blank, inactive, website. Respondent registered the <visitnationalharbor.com> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the NATIONAL HARBOR mark.
B. Respondent:
1. Respondent has failed to submit a formal Response.
1. Respondent’s <visitnationalharbor.com> domain name is confusingly similar to Complainant’s NATIONAL HARBOR mark.
2. Respondent does not have any rights or legitimate interests in the <visitnationalharbor.com> domain name.
3. Respondent registered or used the <tartget.com> domain name in bad faith.
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 (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 claims rights in the NATIONAL HARBOR mark through its registration with the USPTO (e.g., Reg. No. 3,139,684, registered on September 5, 2006). Complainant has provided evidence of this registration in its Annex F. As such, the Panel finds that Complainant holds rights in the NATIONAL HARBOR mark according to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant argues that Respondent’s <visitnationalharbor.com> domain name is confusingly similar to the NATIONAL HARBOR mark because it contains words of the mark along with the term “visit.” The Panel notes that the domain also lacks the space between words of the mark and contains the “.com” gTLD. Complainant urges that the term “visit” increases the likelihood of confusion for Internet users seeking Complainant and its mark. The Panel agrees and finds that the <visitnationalharbor.com> domain name is confusingly similar to the NATIONAL HARBOR mark pursuant to Policy ¶ 4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
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), and 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 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant maintains that Respondent is not commonly known by the <visitnationalharbor.com> domain name because it has not been authorized to use the NATIONAL HARBOR mark and because the available WHOIS information lists “RON CRITTENDON” as Registrant. The Panel finds the record lacking of evidence to the contrary and finds that Respondent is not commonly known by the <visitnationalharbor.com> domain name according to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent fails to use the <visitnationalharbor.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains a blank, inactive, website. Complainant has provided a screenshot, in Annex H, to demonstrate this lack of activity. The Panel finds this sufficient to show Respondent makes no use of the domain, and it finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent uses the <visitnationalharbor.com> domain name in bad faith because it has offered the domain for sale to Complainant in excess of its out-of-pocket costs. Complainant has provided, in Annex I, e-mail correspondence between Complainant and Respondent. Complainant urges that this correspondence shows Respondent offering to sell the <visitnationalharbor.com> domain name to Complainant for $7,500.00. The Panel finds that Respondent offers to sell the domain in excess of its out-of-pocket costs, and the Panel finds that Respondent uses the domain name in bad faith according to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant maintains that Respondent also uses the <visitnationalharbor.com> domain name in bad faith because the resolving website contains a blank, inactive, website. Complainant has provided a screenshot, in Annex H, to demonstrate this lack of activity. The Panel finds this sufficient to show Respondent makes no use of the domain, and it finds that Respondent uses the <visitnationalharbor.com> domain name in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant claims that Respondent registered the <visitnationalharbor.com> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the NATIONAL HARBOR mark. Complainant argues that Respondent’s knowledge can be inferred from Complainant’s longstanding registrations of the NATIONAL HARBOR mark, as shown in Annex F, and because of Complainant’s use of the <nationalharbor.com> website since 1998, as shown in Annex G. The Panel finds this evidence supports a finding that Respondent had actual knowledge, rather than merely constructive knowledge, of Complainant’s rights in the NATIONAL HARBOR mark at the time of registration, and the Panel finds that such registration was done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); but see Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <visitnationalharbor.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 10, 2016
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