The Margaritaville Store of
Claim Number: FA0807001215672
Complainant is The Margaritaville Store of Key West, LLC and Margaritaville
Enterprises, LLC (collectively, “Complainant”), represented by Joel
R. Feldman, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <coconuttelegraphonline.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July
17, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 6, 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@coconuttelegraphonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <coconuttelegraphonline.com> domain name is identical/confusingly similar to Complainant’s COCONUT TELEGRAPH mark.
2. Respondent does not have any rights or legitimate interests in the <coconuttelegraphonline.com> domain name.
3. Respondent registered and used the <coconuttelegraphonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, The
Margaritaville Store of Key West, LLC and Margaritaville Enterprises, LLC
(hereinafter referred to as “Complainant”), are enterprises owned and operated
by Jimmy Buffett, an internationally
renowned singer/songwriter. In February
of 1981, Jimmy Buffett released his thirteenth album entitled Coconut Telegraph, featuring the title
track “Coconut Telegraph,” a song that has become one of Jimmy Buffet’s most
popular songs. In 1985, Complainant, in association
with Jimmy Buffett, began publishing a newsletter entitled “Coconut
Telegraph.” The newsletter features information
about Jimmy Buffett and other musicians, concert tours, and merchandise. Claimant owns several trademark registrations
with the United States Patent and Trademark Office (“USPTO”), including the
COCONUT TELEGRAPH mark (Reg. No. 2,096,494 issued September 16, 1997).
Respondent
registered the <coconuttelegraphonline.com> domain name on
January 14, 2008. Respondent’s disputed
domain name resolves to a website promoting a newsletter based in
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.
Complainant has established rights in the COCONUT TELEGRAPH
mark through registration of the mark with the USPTO pursuant to Policy ¶
4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that
Respondent’s <coconuttelegraphonline.com>
domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name contains
Complainant’s entire COCONUT TELEGRAPH mark, removing the space separating the
two terms, and adding the generic term “online” along with the generic
top-level domain “gTLD” “.com.” The Panel
finds that such distinctions are insufficient to distinguish Respondent’s
domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <coconuttelegraphonline.com> domain name. In instances such as this where Complainant has established a prima facie case against Respondent, the burden of proof shifts from Complainant to Respondent to bring forth its evidence of rights and legitimate interests 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 UDRP ¶ 4(a)(ii).”).
Respondent is not commonly known by the <coconuttelegraphonline.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Denise Malefyt.” Moreover, Complainant contends that it has not licensed the COCONUT TELEGRAPH mark for Respondent’s use and that no other evidence exists that Respondent is commonly known by the <coconuttelegraphonline.com> domain name. As a result, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also 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.”).
Respondent is using the <coconuttelegraphonline.com>
domain name to redirect Internet users to a website that provides competing
entertainment information services.
Respondent’s use is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); 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.
Registration and Use in Bad Faith
Complainant has shown that Respondent is using the <coconuttelegraphonline.com> domain name to connect Internet users to a website offering services that directly compete with Complainant’s own services of providing concert and entertainment information. The Panel finds that use to be a disruption of Complainant’s business and is evidence of bad faith registration and use 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 Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Finally, the Panel finds that Internet users will likely be confused as to Complainant’s sponsorship of and affiliation with the resulting website. Moreover, Respondent is seeking to capitalize on this confusion by selling competing financial services through its resulting website. This use is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); 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).
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 <coconuttelegraphonline.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 13, 2008
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