Laurel Eastman v. HWR Design c/o Greg Reemers
Claim Number: FA0805001195214
Complainant is Laurel
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laureleastmankiteboarding.com>, registered with Gandi Sas.
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 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 27, 2008.
On May 28, 2008, Gandi Sas confirmed by e-mail to the National Arbitration Forum that the <laureleastmankiteboarding.com> domain name is registered with Gandi Sas and that Respondent is the current registrant of the name. Gandi Sas has verified that Respondent is bound by the Gandi Sas 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 June 9, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 30, 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.
On July 3, 3008, 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 <laureleastmankiteboarding.com> domain name is confusingly similar to Complainant’s LAUREL EASTMAN mark.
2. Respondent does not have any rights or legitimate interests in the <laureleastmankiteboarding.com> domain name.
3. Respondent registered and used the <laureleastmankiteboarding.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Laurel Eastman, is a surfing, kiteboarding, and kitesurfing celebrity. Complainant’s business activities trade off of and feature prominently Complainant’s name and mark, LAUREL EASTMAN (California State Reg. No. 113,151, issued December 31, 2007). Complainant entered the kiteboarding sport in 2000, receiving training from accomplished kiteboarders. In 2002, Complainant entered her first kiteboarding event, and finished in the top segment of her bracket. Later in 2002, Complainant competed in two professional kiteboarding tours and was ranked 4th in both tours. Complainant was featured in numerous kiteboarding media stories during 2002-2003, and was named the “Woman of the Year” by the Kite Pro World Tour. Complainant has continued to engage in various kiteboarding industry activities. Complainant also operates a kiteboarding school named “Laurel Eastman Kiteboarding.”
Respondent registered the <laureleastmankiteboarding.com> domain name on June 21, 2003, and is using the disputed domain name to operate website which stated that the website was closed, and provided a link to a competing kiteboarding school.
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.
In order to achieve standing under the UDRP, Complainant
need not assert a trademark registration with a regulatory entity such as the
United States Patent and Trademark Office (“USPTO”). Instead, Complainant may assert evidence of
its common law rights in the LAUREL EASTMAN mark under Policy ¶ 4(a)(i). See
Complainant has asserted that she has become well-known in the kiteboarding industry prior to the disputed domain name’s registration on June 21, 2003. Complainant has alleged that she was the focus in numerous media articles, and was a well-known figure on two professional kiteboarding tours prior to the disputed domain name’s registration. The Panel therefore finds that Complainant has sufficient common law rights in the mark as it has achieved the requisite secondary meaning required for UDRP standing. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist).
Respondent’s disputed domain name, <laureleastmankiteboarding.com>, includes Complainant’s entire and unaltered mark along with the generic word “kiteboarding,” and the generic top-level domain (“gTLD”) “.com.” Of the gTLD this Panel merely notes that such an inclusion is entirely immaterial under Policy ¶ 4(a)(i) since every domain name requires its use. Thus the only discernible difference that Respondent has included is the generic word “kiteboarding.” However, Respondent has failed to distinguish Complainant’s mark, since it is apparent that “kiteboarding” aptly describes the reason Complainant’s mark has achieved secondary meaning. Internet users would surely associate Complainant with the sport in general, and Respondent has only solidified the connection for any Internet users in doubt. Therefore, the Panel finds that the <laureleastmankiteboarding.com> domain name is confusingly similar to Complainant’s LAUREL EASTMAN mark under Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <laureleastmankiteboarding.com> domain name under Policy ¶ 4(a)(ii). Complainant is required to set forth a prima facie case supporting its allegations. The Panel finds that Complainant has met its burden, and therefore Respondent receives the burden of demonstrating its rights or legitimate interests. See 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”); 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).
There is no information within the record, including the WHOIS domain name registration information, which suggests that Respondent is commonly known by the <laureleastmankiteboarding.com> domain name. Contrarily, Complainant has submitted evidence that Respondent is instead known by its graphic design operations, whose name matches the registrant of record in the WHOIS domain name database: “HWR Design c/o Greg Reemers.” The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Respondent’s disputed domain name resolves to a website that solely features links to third-party websites, one of which directly competes with Complainant’s kiteboarding school. It is apparent that Respondent registered the disputed domain name in order to garner the goodwill surrounding Complainant’s mark. The Panel therefore finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); 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)
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that features a link to a third-party that runs a directly competitive kiteboarding school. Internet users seeking Complainant will likely happen across the disputed domain name, as it is identical to Complainant’s kiteboarding school name. Complainant no doubt loses out on potential kiteboarding students due to the diversion. Therefore, the Panel finds that Respondent primarily intended for the disputed domain name to disrupt Complainant’s business, and consequently such intent and use constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”)
Internet users seeking Complainant will likely happen across the disputed domain name and corresponding website. Said Internet users would then be confronted with a link that directly leads to Complainant’s educational competitor. Respondent has therefore created a likelihood of confusion as to Complainant’s endorsement and affiliation of the disputed domain name and corresponding website. Thus, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
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 <laureleastmankiteboarding.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 11, 2008
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