City of Pompano Beach v. Dolphin Ope, Inc
Claim Number: FA1905001844961
Complainant is City of Pompano Beach (“Complainant”), represented by David P. Lhota of Lhota & Associates, P.A., Florida, United States. Respondent is Dolphin Ope, Inc (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floridaswarmestwelcome.com>, registered with Network Solutions, LLC..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2019; the Forum received payment on May 24, 2019.
On May 28, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <floridaswarmestwelcome.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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@floridaswarmestwelcome.com. Also on June 3, 2019, 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 June 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant has rights in the trademark FLORIDA’S WARMEST WELCOME through its registration with the United States Patent and Trademark Office (“USPTO”) on June 5, 2012 (the application was filed on March 29, 2011). The mark was announced at a public presentation at Pompano Beach City Hall held on or around March 11, 2011 and is used in promoting economic development and tourism in Complainant’s city. Shortly after attending or becoming aware of this public meeting, Respondent registered the <floridaswarmestwelcome.com> domain name on March 23, 2011. The disputed domain is confusingly similar to Complainant’s trademark as it is identical to the mark.
Respondent has no rights or legitimate interests in the <floridaswarmestwelcomce.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain. Instead, Respondent resolves the domain to a page that bears the Pompano Beach logo and which offers the domain name for sale at a price of US$9,995.00.
Respondent registered and used the disputed domain name in bad faith by usurping Complainant’s opportunity to register the domain name. Respondent also offers to sell the disputed domain name for financial gain. Lastly, Respondent had actual knowledge of Complainant’s rights in the FLORIDA’S WARMEST WELCOME mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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”).
Complainant claims to have rights in the trademark FLORIDA’S WARMEST WELCOME through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to show rights in a mark per Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Here, Complainant has provided the Panel with a copy of its USPTO registration for the FLORIDA’S WARMEST WELCOME mark. Therefore, the Panel finds that Complainant has rights in its mark per Policy ¶ 4(a)(i). Although the Complainant applied for and registered its mark only after Respondent registered the disputed domain name, this standing element of Policy ¶ 4(a)(i) concerns itself not with timelines but only with the binary question of whether or not a complainant possesses any rights in the trademark being asserted in the case. See The Landmark Group v. DigiMedia.com, L.P., FA 285459 (Forum Aug. 6, 2004) (“under the first factor—which is a kind of threshhold factor designed to determine whether Complainant has standing—the issue is only whether Complainant has trademark rights today and, if so, whether the domain name is identical or confusingly similar to that mark.”); Greenvelope, LLC v. Virtual Services Corporation, D2017-0006 (WIPO Feb. 25, 2017) (“The Panel observes that the Domain Name was registered in July 2006, predating Complainant's trademark. However, for purposes of the first element under paragraph 4(a) of the Policy, the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights.”)
Complainant further argues that Respondent’s <floridaswarmestwelcome.com> domain name is identical to Complainant’s FLORIDA’S WARMEST WELCOME mark. Respondent’s <floridaswarmestwelcome.com> domain name includes the same exact terms in the same order as Complainant’s registered mark. Generally, registration of an identical mark will satisfy a Policy ¶ 4(a)(i) analysis. Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Zhong He Yi, FA 1845427 (Forum June 26, 2019) (“the Panel finds that pursuant to Policy ¶ 4(a)(i), Respondent’s <skechers.site> domain name is identical to Complainant’s SKECHERS trademark.”) Further, addition of the “.com” top-level domain does nothing to distinguish a domain name from a complainant’s trademark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds that Respondent’s domain name is identical to Complainant’s mark per 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <floridaswarmestwelcome.com> domain name as Respondent is not commonly known by the disputed domain name. Policy ¶ 4(c)(ii). Where, as here, there is no response or other submission by a respondent, resort may be had to any identifying information contained in the Whois record for the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the Complainant has provided the WHOIS information that identifies Respondent as “Dolphin OPE, Inc.” and has noted that Respondent’s president and registered agent is named Mark Salter. As neither of these names bear any relation to the Complainant’s mark and there is no other information in the record to indicate that Respondent is commonly known by the domain name, the Panel finds that Respondent has no rights or legitimate interests in the <floridaswarmestwelcome.com> domain name under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. It provides evidence that Respondent is offering the <floridaswarmestwelcome.com> domain name for sale at the domain’s resolving website. Although not made directly to a complainant, a general offer to sell a domain name may still be evidence that Respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant provides screenshots of Respondent’s website showing an offer to sell the disputed domain name for US$9,995.00. This website also contains an image of Complainant’s Pompano Beach logo (itself the subject of a US trademark registration) thus suggesting that the offer to sell the disputed domain may not actually be made generally, but rather is aimed specifically at Complainant. In view of the foregoing, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(a)(ii).
Complainant contends that Respondent had actual knowledge of Complainant’s rights in the FLORIDA’S WARMEST WELCOME mark because Respondent only registered the domain name after Complainant announced its intentions to use the mark at a public presentation. Further, the website of the <floridaswarmestwelcome.com> domain name displays a copy of Complainant’s registered Pompano Beach logo. This is not disputed by the Respondent and so the Panel finds that the above indicates that Respondent had actual knowledge of Complainant’s mark at the time the disputed domain name was registered. Depending on all of the circumstances of the case, such knowledge may form the foundation for an argument of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant next argues that Respondent registered and used the disputed domain name in bad faith by offering to sell the name at an inflated price. Offers to sell or transfer a disputed domain name to a trademark owner maybe evidence of bad faith per Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Here, Complainant provides screenshots of Respondent’s attempts to sell the disputed domain name for $9,995.00 at a website that displays Complainant’s own logo. Therefore, the Panel agrees with Complainant and finds that Respondent engaged in bad faith registration and use by offering to sell the <floridaswarmestwelcome.com> at a price exceeding its actual out-of-pocket registration costs per Policy ¶ 4(b)(i).
Complainant also contends that Respondent acted in bad faith by registering the disputed domain soon after Complainant adopted the FLORIDA’S WARMEST WELCOME mark. Opportunistic bad faith may exist when a respondent registers a domain name in anticipation of a pending acquisition of trademark rights under Policy ¶ 4(a)(iii). See Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org, D2015-1113 (WIPO Aug. 14, 2015) in which the Respondent registered the disputed domain <khloekardashian.com> just two weeks after the Complainant, Ms. Kardashian, first appeared on a widely-viewed television show. In that case, the Panel found that “the overwhelming inference based on the case record is that it was registered with a view to profiting from the prospective fame of the KHLOE KARDASHIAN mark. In the circumstances, the Panel is in little doubt that the Respondent must have had the Complainant and its rights in the KHLOE KARDASHIAN name in mind when it registered the Domain Name.” Id. Also see Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Here, Complainant states that Respondent registered the <floridaswarmestwelcome.com> on March 23, 2011, a short time after attending a presentation on or around March 11, 2001 at which Complainant introduced the FLORIDA’S WARMEST WELCOME mark to the public. As there is no Response or other submission in this case from the Respondent, this assertion is unrebutted. The opportunistic nature of Respondent’s registration is confirmed by the appearance, on its website, of Complainant’s Pompano Beach logo which leaves little room to doubt that Respondent usurped Complainant’s opportunity to register the domain name. Therefore, the Panel finds that the FLORIDA’S WARMEST WELCOME mark was specifically targeted by Respondent in the <floridaswarmestwelcome.com> domain name. Respondent’s usurping of Complainant’s opportunity to register the disputed domain name is evidence of opportunistic bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant claims that the Respondent has engaged in a pattern of registering domain names that copy others’ trademarks. The registration of multiple confusingly similar domain names incorporating trademarks can demonstrate bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Complainant submits a screenshot of another website which it asserts is operated by the Respondent and which offers for sale the domain name <hondasmallengine.com> (claimed to copy the trademark of the famous automobile manufacturer). However, no Whois record for the <hondasmallengine.com> domain name is submitted into evidence and so the Panel is unable to determine whether it is owned by the Respondent or if the Respondent is simply offering it for sale on behalf of another. As such, the Panel is unable to fully consider this claim.
Upon consideration of all of the facts presented in this case, the Panel concludes that, by a preponderance of the evidence, the Respondent has registered and used the disputed in bad faith per 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 <floridaswarmestwelcome.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 26, 2019
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