Margaritaville Enterprises, LLC v. James Berglie / Be Photography LLC
Claim Number: FA2209002010925
Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, US. Respondent is James Berglie / Be Photography LLC (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <margaritavilleislandresort.com>, registered with GoDaddy.com, 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on September 6, 2022; Forum received payment on September 6, 2022.
On Sep 07, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <margaritavilleislandresort.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2022 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@margaritavilleislandresort.com. Also on September 9, 2022, 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 formal response from Respondent, but having received from Respondent the email referred to below, Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 made the following contentions.
Complainant, Margaritaville Enterprises, LLC, uses its MARGARITAVILLE mark in connection with a wide variety of goods and services, including real estate services, restaurant services, and retail store services. Complainant claims rights to the MARGARITAVILLE mark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,642,132, registered April 23, 1991). See Compl. Annex 4-7. Respondent’s <margaritavilleislandresort.com> domain name is identical or confusingly similar to Complainant’s MARGARITAVILLE mark as it wholly incorporates the mark and adds the descriptive words “island” and “resort”, as well as the “.com” generic top-level domain (“gTLD”) to form.
Respondent lacks rights and legitimate interests in the <margaritavilleislandresort.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the MARGARITAVILLE mark. Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Rather, the disputed domain name resolves to a parked page with sponsored links.
Respondent registered and uses the <margaritavilleislandresort.com> domain name in bad faith. Respondent parked the disputed domain name’s resolving webpage which displays sponsored links. Additionally, Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s rights in the MARGARITAVILLE mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, the Panel notes that on September 10, 2022, Respondent sent an email communication to Forum stating as follows:
“Good lord...lol... just take it then thats fine. - I'm in the travel industry and was going to develop the domain to help sales of their products as I sell their product as one of their partners, but clearly they dont want me to promote them.
let me know what i need to do.
James Berglie”.
1. Complainant is a United States company engaged in business in connection with a wide variety of goods and services, including resorts, hospitality, real estate services, restaurant services, and retail store services.
2. Complainant has established its rights to the MARGARITAVILLE mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,642,132, registered April 23, 1991).
3. The <margaritavilleislandresort.com> domain name was registered on June 6, 2022.
4. Respondent has caused the disputed domain name to resolve to a parked web page with sponsored links.
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 formal 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the MARGARITAVILLE mark through its registration of the mark with multiple trademark agencies including the USPTO (e.g., Reg. No. 1,642,132, registered April 23,1991). See Compl. Annex 4-7. Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a mark Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Therefore, the Panel finds Complainant has established its rights in the MARGARITAVILLE mark under Policy ¶ 4(a)(i) based on its registration with multiple trademark agencies.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MARGARITAVILLE mark. Complainant identical or confusingly similar to Complainant’s MARGARITAVILLE mark. Under Policy ¶ 4(a)(i), fully incorporating a mark in its entirety and adding a generic or descriptive term fails to distinguish sufficiently a domain name from a registered mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Further, the addition of the “.com” gTLD is irrelevant when determining whether a disputed domain name is identical or confusingly similar to a protected mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Respondent’s <margaritavilleislandresort.com> domain name wholly incorporates the mark and adds the descriptive words “island” and “resort”, as well as the “.com” gTLD. The words “island” and “resort” are arguably descriptive of or relate to Complainant’s goods and services as Complainant’s resorts are most often island themed. Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MARGARITAVILLE mark and to use it in its domain name adding the descriptive words “island” and “resort” to the mark;
(b) Respondent registered the domain name on June 6, 2022;
(c) Respondent has caused the disputed domain name to resolve to a parked web page with sponsored links including links to resorts and hospitality;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <margaritavilleislandresort.com> domain name. Respondent is not commonly known by the disputed domain name, Complainant’s rights precede Respondent’s registration, and Complainant has not authorized or licensed to Respondent any rights in the MARGARITAVILLE mark. Under Policy ¶ 4(c)(ii), information in the record that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM , FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Further, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). According to the disputed domain name’s WHOIS information, and other information on the record, Respondent is not commonly known by the disputed domain name. See Compl. Annex 11; see also Registrar Verification Email. Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s MARGARITAVILLE mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <margaritavilleislandresort.com> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. A respondent’s use of disputed domain for a parking page displaying sponsored links may not be considered any bona fide offering of goods or services, nor any legitimate non-commercial or fair use. See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant…The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant has attached screenshots of the disputed domain name’s resolving webpage. See Compl. Annex 12. The <margaritavilleislandresort.com> domain name resolves to a parked GoDaddy page with sponsored links, including links to resorts and hospitality. Id. As the Panel agrees, it finds that Respondent does not use the <margaritavilleislandresort.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <margaritavilleislandresort.com> domain name to attract Internet users to a parked webpage for commercial gain. A respondent’s use of a disputed domain name to divert users to a parked webpage that displays sponsored links may evidence bad faith pursuant to Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). The Panel recalls Complainant attached screenshots of the disputed domain name’s resolving webpage. See Compl. Annex 12. The disputed domain name resolves to a parked webpage with no other content besides sponsored links, including links to resorts and hospitality. Id. As the Panel agrees, it finds that Respondent registered and uses the <margaritavilleislandresort.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered the <margaritavilleislandresort.com> domain name with actual knowledge of Complainant’s rights in the MARGARITAVILLE mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through the full incorporation of a protected mark in the domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Respondent’s entire incorporation of Complainant’s mark and the use of descriptive words in the disputed domain name enables the Panel to find, which it does, that Respondent had actual knowledge of Complainant’s rights in the MARGARITAVILLE mark under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the MARGARITAVILLE mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <margaritavilleislandresort.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated October 11, 2022
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