Margaritaville Enterprises, LLC v. Delcom Communications c/o Jason Delp
Claim Number: FA0802001143729
Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Joel
R. Feldman, of Greenberg Traurig, LLP, Georgia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parrot-head.com>, registered with Enom, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <parrot-head.com> domain name is identical to Complainant’s PARROT HEAD mark.
2. Respondent does not have any rights or legitimate interests in the <parrot-head.com> domain name.
3. Respondent registered and used the <parrot-head.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Margaritaville Enterprises, LLC, is the successor-in-interest to the relevant portion of Jimmy Buffett’s intellectual property rights. Jimmy Buffett is a well-known singer/songwriter with millions of albums sold since the 1970’s. Complainant registered the PARROT HEAD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,231,011 issued March 9, 1999) in connection with Jimmy Buffett’s fan base and the Margaritaville Restaurant chain.
Respondent registered the disputed domain name on
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.
The Panel finds that Complainant’s registration of the PARROT
HEAD mark with the USPTO establishes its rights under Policy ¶ 4(a)(i). See Miller Brewing
Respondent’s <parrot-head.com> domain name is identical to
Complainant’s PARROT HEAD mark, as it incorporates the mark in its entirety and
adds only a hyphen and the generic top-level domain “.com.” The addition of a hyphen and the top-level
domain “.com” are irrelevant when conducting a Policy ¶ 4(a)(i)
analysis. Therefore, the Panel finds the
disputed domain name identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See InfoSpace.com,
Inc. v. Ofer, D2000-0075 (WIPO
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <parrot-head.com> domain name. Complainant has the burden of proof for this allegation pursuant to Policy ¶ 4(a)(ii). Once Complainant has made a prima facie showing, the burden of proof shifts to Respondent. The Panel finds Complainant has met its burden. 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 respond to the Complaint allows the Panel to assume Respondent has no rights or legitimate interests in the <parrot-head.com> domain name. See 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.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nonetheless, the Panel will examine the record to determine rights or legitimate interests under Policy ¶ 4(c).
The record contains nothing to suggest Respondent is
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS
information identifies Respondent as “Delcom
Communications c/o Jason Delp” with no reference to the <parrot-head.com> domain name. Respondent is not licensed or authorized to
use the PARROT HEAD mark. The Panel
finds that Respondent has no rights or legitimate interests to the <parrot-head.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the <parrot-head.com> domain name to divert Internet users to third-party websites offering similar restaurant services to that of Complainant’s business. The Panel presumes that Respondent is using the disputed domain name for monetary gain, by capitalizing on the good reputation of Complainant’s mark. The Panel finds this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <parrot-head.com> domain name resolves to a website providing links to third-party websites offering similar restaurant services to that of Complainant’s business. The Panel finds that this use by Respondent constitutes an intent to disrupt Complainant’s business. Therefore, the Panel concludes that this use of the <parrot-head.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent’s use of <parrot-head.com> domain name, which is identical to Complainant’s PARROT HEAD mark, is likely to cause confusion to customers searching for Complainant’s goods and services. There may be confusion regarding Complainant’s affiliation, endorsement, or sponsorship of the links advertised on Respondent’s website. The Panel assumes Respondent is commercially benefiting from this confusion. Based on these findings, the Panel concludes that Respondent’s registration and use of the <parrot-head.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <parrot-head.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 24, 2008
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