The Bitter End Yacht Club International L.L.C. v. J. Anthony
Claim Number: FA0805001191809
Complainant is The Bitter End Yacht Club International L.L.C. (“Complainant”), represented by Bernard C. Dietz, of Law Offices of Bernard C. Dietz PC, Virginia, USA. Respondent is J. Anthony (“Respondent”), Zambia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bitterendyachtclub.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 May 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 21, 2008.
On May 20, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bitterendyachtclub.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 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 postmaster@bitterendyachtclub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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 <bitterendyachtclub.com> domain name is confusingly similar to Complainant’s THE BITTER END YACHT CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <bitterendyachtclub.com> domain name.
3. Respondent registered and used the <bitterendyachtclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an affiliate and licensee of the owner of The Bitter End Yacht Club, a water sports resort in the British Virgin Islands. Complainant registered the THE BITTER END YACHT CLUB mark with the British Virgin Islands Trade Marks and Patent Office on December 5, 1983 (Reg. No. 2039). The Bitter End Yacht Club regularly attracts guests from the United States and around the world, and was named one of the “Best Places to Stay in the Whole World” in January 1998 by Conde Nast Traveler magazine.
Respondent registered the <bitterendyachtclub.com> domain name on January 28, 1999. The disputed domain name redirects to a website at the <caribbeansbest.com> domain name, at which vacation packages are offered for sale through an affiliate program offered by World Choice Travel.
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 has established rights in
the THE BITTER END YACHT CLUB mark for purposes of Policy ¶ 4(a)(i) through its
trademark registration with the British Virgin Islands Trade Marks and Patent
Office. See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have
held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive."); see
also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO
Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph
4(a)(i) of the Policy whether the complainant’s mark is registered in a country
other than that of the respondent’s place of business).
Respondent’s <bitterendyachtclub.com> domain name is confusingly similar to its THE
BITTER END YACHT CLUB mark. The <bitterendyachtclub.com> domain name differs from Complainant’s mark in three ways:
(1) the article “THE” has been removed from the beginning of the mark; (2) the
spaces between the words have been removed; and (3) the generic top-level
domain (“gTLD”) “.com” has been added.
The deletion of an article does not sufficiently distinguish a domain
name from an incorporated mark for the purposes of Policy ¶ 4(a)(i), nor does
the removal of the spaces between words. The addition of a gTLD also does not
reduce the likelihood of confusion between the domain name and the mark because
every domain name must contain a gTLD.
Because these changes do not minimize or eliminate the resulting
likelihood of confusion, the Panel finds that Respondent’s disputed domain name
is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb.
Forum Mar. 16, 2004) (finding that the domain name merely omitted the definite
article “the” and the preposition “of” from the complainant’s mark and thus,
failed to “sufficiently distinguish the domain name from the mark pursuant to
Policy ¶ 4(a)(i)”); see also Buffalo News v. Barry, FA
146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's
<bufalonews.com> domain name confusingly similar to Complainant's THE
BUFFALO NEWS mark); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <bitterendyachtclub.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant states that Respondent is not commonly known by
the <bitterendyachtclub.com>
domain name nor has it ever been the owner or licensee of the THE BITTER END
YACHT CLUB mark. The WHOIS record for
the disputed domain name lists Respondent as “J.
Anthony.” This evidence, along
with the fact that Respondent has failed to show any evidence contrary to
Complainant’s contentions, compels the Panel to find that Respondent is not
commonly known as <bitterendyachtclub.com>
pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); see
also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
The <bitterendyachtclub.com> domain name redirects to a website at the <caribbeansbest.com> domain name, at which Complainant’s competitors’ vacation packages are offered for sale through an affiliate program offered by World Choice Travel. The Panel finds that this use of the <bitterendyachtclub.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the respondent’s use of the <thechipmerchant.net>, <chipmerchant.com>, and <chipmerchant.net> domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and implied that the respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to divert Internet customers from Complainant’s website to Respondent’s website. Respondent is accomplishing this through the confusion caused by the similarity between the THE BITTER END YACHT CLUB mark and the <bitterendyachtclub.com> domain name. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where the respondent and the complainant both operated in the highly regulated field of radio broadcasting and the respondent registered a domain name incorporating the complainant’s call letters); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that the disputed domain names were registered and used in bad faith where the respondent registered domain names which infringed upon the complainant’s mark and had no resemblance to the respondent’s competing business name); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).
The Panel finds that Respondent’s use of <bitterendyachtclub.com> is an
intentional use of the domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this
use is also evidence of registration and use in bad faith. See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp.
v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith
where the respondent used the domain name, for commercial gain, to
intentionally attract users to a direct competitor of the complainant); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes).
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 <bitterendyachtclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 1, 2008
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