Margaritaville Enterprises, LLC v. Steven Wilson
Claim Number: FA0806001204249
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 <cheeseburgersinparadise.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 email@example.com by e-mail.
A timely Response was received and determined to be complete on
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.
Complainant requests that the domain name be transferred from Respondent to 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.
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
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
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).
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).”).
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
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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