National Arbitration Forum

 

DECISION

 

Margaritaville Enterprises, LLC v. Steven Wilson

Claim Number: FA0806001204249

 

PARTIES

Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Joel R. Feldman, of Greenberg Traurig, LLP, Georgia, USA.  Respondent is Steven Wilson (“Respondent”), St. Lucia.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cheeseburgersinparadise.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 13, 2008.

 

On June 13, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cheeseburgersinparadise.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 7, 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@cheeseburgersinparadise.com by e-mail.

 

A timely Response was received and determined to be complete on July 7, 2008.

 

An Additional Submission was received from Complainant on July 11, 2008 and determined to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.

 

An Additional Submission was received from Respondent on July 16, 2008 and determined to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.

 

On July 11, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The domain name is confusingly similar to Complainant’s mark.  The Respondent has no rights or legitimate interests and the disputed domain name was recorded and used in bad faith.

 

B. Respondent

The domain name is comprised of generic common terms.  The Respondent’s use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.

 

C. Additional Submissions

 

FINDINGS

Complainant asserts rights to the CHEESEBURGER IN PARADISE mark by evidencing seven trademark registrations and two trademark applications with the United States Patent and Trademark Office (“USPTO”) in Annexes 1-9 with the Complaint.  The oldest of Complainant’s trademark registrations is Registration Number 1,935,684 issued on November 14, 1995, which predates Respondent’s registrations of the <cheeseburgersinparadise.com> domain name on October 5, 2002.  The Panel finds that Complainant’s trademark registrations adequately confer rights in the CHEESEBURGER IN PARADISE mark to Complainant pursuant to Policy ¶ 4(a)(i).  See State Farm Mut. Auto. Ins. Co. v. Maliain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy Section 4(a)(i).”); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).   Complainant alleges that the <cheeseburgersinparadise.com> domain name is “unquestionably similar” to its CHEESEBURGER IN PARADISE mark since it merely adds an “s” to pluralize the word “cheeseburger.”  The disputed domain name also adds the generic top-level domain “.com.”  The Panel finds these additions to be insignificant, and concludes that Respondent’s <cheeseburgersinparadise.com> domain name is confusingly similar to the CHEESEBURGER IN PARADISE mark pursuant to Policy ¶ 4(a)(i).

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.  Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy Section 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.

 

Identical and/or Confusingly Similar

 

The <cheeseburgersinparadise.com> domain name is similar to the CHEESEBURGER IN PARADISE mark since it merely adds an “s” to pluralize the word “cheeseburger.”  The disputed domain name also adds the generic top-level domain “.com.”  The Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant contends it has not “licensed, consented, or authorized Respondent” to register or use the <cheeseburgersinparadise.com> domain name.  The Panel finds there is not any other evidence in the record indicating Respondent is commonly known by the disputed domain name.  Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4 (c)(ii).

 

Respondent used the <cheeseburgersinparadise.com> domain name to redirect Internet users to Respondent’s website that advertises Respondent’s cheeseburger restaurants.  The Panel finds that Respondent’s use of the disputed domain name does not conform to 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 DLJ Long Tern 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy Section 4 (c)(i) and it is not a legitimate noncommercial or fair use under Policy Section 4 (c)(iii).”).

 

Registration and Use in Bad Faith

 

The <cheeseburgersinparadise.com> domain name to redirects to a website, which contains numerous references to Jimmy Buffet and Complainant’s intellectual property.  Complainant claims that this use trades off its business’ goodwill, especially since Complainant owns and operates numerous cheeseburger restaurants around the United States under the CHEESEBURGER IN PARADISE mark.  The Panel finds that Respondent’s use of the disputed domain name intentionally attracts, for commercial gain, unsuspecting Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark and therefore has been registered and used in bad faith pursuant to Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <cheeseburgersinparadise.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist
Dated: July 25, 2008

 

 

 

 

 

 

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