Cardiff Seaside Market, Inc.
v.
Claim Number: FA0807001217394
PARTIES
Complainant is Cardiff Seaside Market, Inc. (“Complainant”), represented by Mark
I. Reichenthal of
-
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardiffseasidemarket.com>,
registered with Compana, LLC.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically July 25, 2008; the
National Arbitration Forum received a hard copy of the Complaint July 25, 2008.
On July 30, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <cardiffseasidemarket.com> domain
name is registered with Compana, LLC and
that Respondent is the current registrant of the name. Compana, LLC
verified that Respondent is bound by the Compana,
LLC registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On July 31, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 20, 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@cardiffseasidemarket.com by
e-mail.
A timely Response was received and determined to be complete August 20, 2008.
The Arbitrator received no additional filings.
On August 28, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
Preliminary Issue: Consent
to Transfer
Respondent consents to transfer the <cardiffseasidemarket.com> domain name to Complainant. However, after the initiation of this proceeding, the registrar, Compana LLC, placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. Although Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the <cardiffseasidemarket.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, inasmuch as Complainant has not implicitly consented in its
Complaint to the transfer of the <cardiffseasidemarket.com> domain name without a decision on the merits by
the Panel, this Panel finds that the better course is to do the analysis under
the Policy. Sometimes, the “consent-to-transfer”
approach is but one way for cybersquatters to avoid adverse findings against
them. In Graebel Van Lines, Inc. v.
Respondent has admitted in its response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1. Respondent registered the <cardiffseasidemarket.com>
domain name, which is identical to or
confusingly similar to Complainant’s protected mark.
2. Respondent has no rights to or legitimate interests in
the disputed domain name.
3. Respondent registered the disputed doman name in bad
faith.
B. Respondent made the following points in the
Response:
1. That Respondent agrees to the transfer of the
disputed domain name while not conceding that the three elements of ICANN
Policy ¶ 4(a)(i) apply.
2. That
the “most expeditious course” is to transfer the domain name.
3. “Judicial
economy” is served the responding to the unilateral agreement to transfer.
4. That
“when a respondent consents to a complainant’s requested relief and that
complainant has rights in the at-issue domain name(s), then only under
particular circumstance that call into question the validity of the
respondent’s consent, or for similar other good cause, might a panel need to
proceed to consider the merits of the complaint via further analysis under
Paragraph 4(1).
5. Such
circumstances are not present in the instant dispute.
6. Respondent does not address the three
elements other than to note that it does not concede that Complainant’s
position as to them is correct.
C. The Arbitrator received no Additional Submissions.
FINDINGS
Complainant
established sufficient secondary meaning to confer common law rights in the
CARDIFF SEASIDE MARKET mark.
Complainant has multiple
trademark registrations of the mark with the state of
The disputed <cardiffseasidemarket.com> domain name is identical to the CARDIFF SEASIDE
MARKET mark.
Respondent purchased the domain name after
Complainant inadvertently failed to timely renew the domain name, which
Complainant originally owned, and then proceeded to use it in a manner that
competed with Complainant or helped others to do so.
Respondent used the mark in the domain name in a manner that prevented Complainant from using the mark in that manner; Respondent mislead those who sought Complainant’s services and goods on the Internet into thinking that Complainant sponsored the domain name; and that Respondent benefitted financially from such use.
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 Complainant to 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) 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 need not own a federal trademark registration to establish rights in a mark pursuant to Policy ¶ 4(a)(i). Rather, a complainant can establish common law rights in the mark pursuant to Policy ¶ 4(a)(i) through a showing of secondary meaning associated with the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
While
Complainant does not currently hold registered trademarks with the United
States Patent and Trademark Office (“USPTO”) for the CARDIFF SEASIDE MARKET
mark, Complainant has two pending trademark applications before the USPTO. Complainant also evidenced multiple trademark
registrations of the mark with the state of
Respondent’s disputed
<cardiffseasidemarket.com> domain name contains the CARDIFF SEASIDE MARKET
mark in its entirety, but removes the spaces between the terms and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that these changes are insignificant under an analysis
of the Policy since domain names cannot contain spaces and must all possess a
top-level domain. Therefore, the Panel
finds that the <cardiffseasidemarket.com> domain name is identical to the CARDIFF SEASIDE
MARKET mark pursuant to Policy ¶ 4(a)(i).
See Diesel v. LMN, FA 804924 (Nat. Arb.
Forum Nov. 7, 2006) (finding <vindiesel.com>
to be identical to complainant’s mark because “simply eliminat[ing] the space
between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is]
insufficient to differentiate the disputed domain name from Complainant’s VIN
DIESEL mark under Policy ¶ 4(a)(i)”); see
also Bond & Co. Jewelers, Inc. v.
Respondent
expressly consents to transfer the disputed domain name, and makes no
allegations with regards to Policy ¶ 4(a)(i).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).
Complainant asserts that Respondent is not commonly known by the <cardiffseasidemarket.com> domain name, and has not obtained trademark or service mark rights in the disputed domain name. Complainant also claims that Respondent is not affiliated with Complainant, and has not been licensed or otherwise authorized to use Complainant’s mark in a domain name. The Panel finds that, based upon these assertions, Respondent is not commonly known by the <cardiffseasidemarket.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is
allegedly using the <cardiffseasidemarket.com> domain name to display hyperlinks related to “
Complainant
previously registered and used the <cardiffseasidemarket.com> domain name, but inadvertently allowed the
registration to lapse. Respondent
registered the disputed domain name at that time. The Panel considers this to be further
evidence that Respondent lacks rights and legitimate interests in the <cardiffseasidemarket.com> domain name pursuant to Policy ¶ 4(a)(ii). See Zappos.com,
Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005)
(“[T]he fact that Complainant had previously held the <wwwzappos.com>
domain name registration and has mistakenly allowed it to expire is further
evidence that Respondent lacks rights and legitimate interests in the domain
name under Policy ¶ 4(a)(ii).”); see also
Am. Anti-Vivisection Soc’y v. “Infa dot
Net” Web Servs., FA 95685 (Nat.
Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of
the same domain name is a factor in considering the respondent’s rights or
legitimate interests in the domain name).
Respondent
expressly consents to transfer the disputed domain name, and makes no
allegations with regards to Policy ¶ 4(a)(ii).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that
Respondent’s registration and use of the <cardiffseasidemarket.com> domain name is likely to cause confusion as to
the source, sponsorship, affiliation, or endorsement of the resolving
website. The Panel finds that Respondent
is attempting to use this likelihood of confusion for commercial benefit
through the accrual of click-through fees.
Therefore, the Panel finds that Respondent’s registration and use of the
<cardiffseasidemarket.com> domain name constitutes bad faith pursuant to
Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain
Name My Be For
The Panel also finds that
Complainant’s previous registration and use of the <cardiffseasidemarket.com> domain name, and Respondent’s subsequent
registration and use, supports findings that Respondent acted in bad faith
pursuant to Policy ¶ 4(a)(iii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb.
Forum Jan. 16, 2003) (finding that the respondent’s registration of the
<jobfinance.com> domain name “immediately after Complainant failed to
timely renew the domain name registration” was evidence of bad faith); see also
InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30,
2000) (“Where the domain name has been previously used by the Complainant,
subsequent registration of the domain name by anyone else indicates bad faith,
absent evidence to the contrary.”).
Respondent
expressly consents to transfer the disputed domain name, and makes no allegations
with regards to Policy ¶ 4(a)(iii).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cardiffseasidemarket.com> domain
name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 11, 2008.
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