Margaritaville Enterprises,
LLC v. KleenHands
Claim Number: FA0808001221824
PARTIES
Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Joel
R. Feldman, of Greenberg Traurig, LLP, Georgia,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are:
<margaritavillecoffee.com>, record created on May 6,
2008,
<margaritavillecoffee.net>, record created on May 6,
2008,
<margaritavillefarm.com>, record created on May 6,
2008,
<margaritavillefarm.net>, record created on May 6,
2008,
<margaritavillefarms.com>, record created on May 6,
2008,
<margaritavilleranch.com>, record created on May 6,
2008, and
<margaritavilleranch.net>, record created on May 6, 2008
(the “Dispute Domain Names” and the “Displuted Domain
Name” as the case may be in the text) registered with Network Solutions, Inc.
PANEL
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 22, 2008; the
National Arbitration Forum received a hard copy of the Complaint on August 25, 2008.
On August 25, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <margaritavillecoffee.com>, <margaritavillecoffee.net>,
<margaritavillefarm.com>, <margaritavillefarm.net>, <margaritavillefarms.com>, <margaritavilleranch.com>, and <margaritavilleranch.net>
domain names are registered with Network
Solutions, Inc. and that Respondent is the current registrant of the
names. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 26, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 15, 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@margaritavillecoffee.com, postmaster@margaritavillecoffee.net, postmaster@margaritavillefarm.com, postmaster@margaritavillefarm.net, postmaster@margaritavillefarms.com, postmaster@margaritavilleranch.com, and postmaster@margaritavilleranch.net by e-mail.
A timely Response was received and determined to be complete on September 15, 2008.
An Additional Submission was received from Complainant on September 19,
2008, which was determined to be timely and complete pursuant to Supplemental
Rule 7.
On September 23, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Disputed Domain Name Is Confusingly Similar to a Trademark in Which
Complainant Has Rights.
Jimmy Buffett is an owner of Margaritaville holdings LLC, the parent
company of complainant. Jimmy Buffett has been an internationally-renowned
singer, songwriter, recording artist, entertainer and author since the release
of his first album Down-To-Earth in
1970. Jimmy Buffett has sold millions of albums and has had numerous hit
singles, among them "Margaritaville," "Cheeseburger in
Complainant is the owner of 129 active United States trademark
applications and registrations and 389 active international trademark
applications and registrations trademark registrations and applications for the
trademark MARGARITAVILLE (“Complainant’s Trademark”) used in isolation and in
combination with other words including, "Jimmy Buffett,”
"shrimp," "seafood," "tortilla chips," and
"spread.” These registrations and applications relate to a wide variety of
products and services, namely: frozen meats, prepackaged flavored seafood,
pre-packaged shrimp, flavored seafood, tequila, restaurant services, bar
services, hot sauce, clothing, candy mints, real estate development and
construction of hotels, condominiums and resorts, managing hotel condominiums,
and time-sharing, real estate brokerage services, electric mixers, tortilla
chips, vegetable-based spreads, meat spreads, cheese spreads, dips, salsa,
guacamole, pre-packaged calamari, and pre-packaged crab cakes.
One of these
The word "margaritaville" as used by Complainant originates
from the song of that name by Jimmy Buffett that first appeared on an album
distributed in 1977. This song has been subject to wide distribution throughout
the world since its introduction.
The "margaritaville" portion of the Disputed Domain Names is
identical to the word "margaritaville" that appears in Complainant's
Trademark. Respondent’s addition of generic terms such as "farm,"
"coffee," and "ranch" cannot operate to avoid confusing
similarity, nor does the addition of top-level domain identifiers (gTLDs)
create a meaningful distinction.
Additionally, Complainant's use of the word "margaritaville"
in connection with the numerous above noted descriptive words, such as
"shrimp," creates a situation in which the use of any descriptive
word in combination with the word "margaritaville" is within the
natural scope of expansion for the trademark.
With specific reference to the Disputed Domain Names <margaritavillefarm.com>, <margaritavillefarm.net>, <margaritavillefarms.com>, <margaritavilleranch.com>, and <margaritavilleranch.net>, to the
extent that these domain names suggest a source of food items, Complainant uses
the word "margaritaville" as a trademark for numerous items that
would originate on such a ranch or farm, such as salsa, tequila, chicken, and
shrimp. Accordingly, consumers would expect the use of these noted Disputed
Domain Names in connection with the sale of food items, consumers would expect
that such sales would relate to Complainant.
With respect to these same specific Disputed Domain Names, and to the
extent that these are used by the respondent in connection with services
relating to real estate, such as the sale, rental, or management thereof,
consumers would expect such activities to relate to Complainant.
Respondent's Legitimate Rights or Interests in the Disputed Domain
Names.
Complainant has not licensed Respondent to use Complainant's trademark.
Respondent is not known by any of the Disputed Domain Names. Further,
even if Respondent's last name was "Margaritaville," he could not
commercially exploit his name because of Complainant's exclusive trademark
rights to the mark MARGARITAVILLE.
Respondent is not using the Disputed Domain Names for a bona fide offering of goods or services.
Rather, the Disputed Domain Names all resolve to web pages that indicate that
the web sites are "under construction" and "coming soon"
and offer sponsored links. These links generate revenue for Respondent, such as
links to concert ticket brokers and travel agents.
Registration and Use of the Disputed Domain Names in Bad Faith.
Respondent is intentionally attempting to attract, for commercial gain,
Internet users to its website by creating a likelihood of confusion with
Complainant's Trademarks as to source, sponsorship, affiliation or endorsement
of Respondent’s websites.
Respondent knew or should have known of Complainant's rights in
Complainant's Trademark because of the fame of Jimmy Buffett's song
"Margaritaville," and Complainant's trademark registrations. With
this knowledge, Respondent registered the Disputed Domain Names in order to
attract Internet users to its website, and thereby to generate click-through revenue
for Respondent’s website.
Further, Complainant sent a cease-and-desist letter to Respondent. After receipt of this cease-and-desist
letter, Respondent refused to voluntarily transfer the Disputed Domain Names to
Complainant. As a result, Respondent's ongoing infringing use of the Disputed
Domain Names is evidence of bad faith in use to attract traffic to Respondent's
website.
B. Respondent
Respondent is not competing with any of Complainant’s commercial
activities, and Respondent has no intention of capitalizing on any trademark or
service mark belonging to anyone else.
Respondent has never sold a domain name that he has purchased, nor did
he buy the Disputed Domain Names to resell them to anyone else.
Respondent is not using any of the Disputed Domain Names to generate
advertising. The Disputed Domain Names reside in Respondent's account, and
Respondent has done nothing with them. No advertising or redirects have been
made.
Rather, Respondent ‘s intention for using the word
"margaritaville" is to reference his personal surname name, which is
"Margarita," in combination with the expression "ville,” meaning
"the house of," or "the place of." As such, the expressions
"margaritavillefarm(s)" and "margaritavilleranch," are
intended to be a reference to Respondent's farm/ranch, which is located in
It is Respondent's intention to develop a personal website with the
Disputed Domain Names for Respondent’s friends and family to view.
Respondent is entitled to register the Disputed Domain Names because
they were not registered by Complainant or anyone else, and further, there was
no lock on the Disputed Domain Names.
KleenHands is a business entity that has nothing to do with the
Disputed Domain Names. Its only association is it is used by Brian Margarita as
his primary account name with Network Solutions.
C. Additional Submissions
Identical or Confusingly Similar
Respondent has not attempted to refute Complainant’s evidence of the
following:
o
Complainant’s
rights in the MARGARITAVILLE trademark;
o
The
Disputed Domain Names fully incorporate the entire MARGARITAVILLE Mark;
o
The
words "coffee," "farm," and "ranch" are generic
and therefore do nothing to dispel the likelihood of confusion caused by
respondents use of Complainant's Trademark; and
o
The
Disputed Domain Names are confusingly similar to Complainant's Trademark
As such, the Panel should find this factor in Complainant's favor.
Legitimate Rights or Interests
Respondent has provided no evidence to support its assertions that it
has legitimate rights or interests in the Disputed Domain Names, and similarly
the Panel should find this factor in Complainant's favor.
Respondent's position that it should be allowed to retain the Disputed
Domain Names because they were available for purchase and were not locked is
not persuasive. The availability of a
domain name has no bearing on the outcome of an administrative proceeding under
the Policy. Further, and as a practical matter, given the infinite number of
domain name combinations that could incorporate Complainant's Trademark, It
would be impossible for Complainant to pre-purchase every such domain name.
Bad Faith
Respondent is not correct in stating that it is not using the Disputed
Domain Names to generate advertising. Respondent does use one of the Disputed
Domain Names to link with a website which links to third-party websites, all of
which directly relate to Jimmy Buffett.
FINDINGS
Jimmy Buffett is an owner of Margaritaville holdings LLC, the parent
company of complainant. Jimmy Buffett has been an internationally-renowned
singer, songwriter, recording artist, entertainer and author since the release
of his first album Down-To-Earth in
1970. Jimmy Buffett has sold millions of albums and has had numerous hit
singles, among them "Margaritaville," "Cheeseburger in
Complainant is the owner of 129 active United States trademark
applications and registrations and 389 active international trademark applications
and registrations trademark registrations and applications for the trademark
MARGARITAVILLE (“Complainant’s Trademark”) used in isolation and in combination
with other words including, "Jimmy Buffett,” "shrimp,"
"seafood," "tortilla chips," and "spread.” These
registrations and applications relate to a wide variety of products and
services, namely: frozen meats, prepackaged flavored seafood, pre-packaged
shrimp, flavored seafood, tequila, restaurant services, bar services, hot
sauce, clothing, candy mints, real estate development and construction of
hotels, condominiums and resorts, managing hotel condominiums, and
time-sharing, real estate brokerage services, electric mixers, tortilla chips,
vegetable-based spreads, meat spreads, cheese spreads, dips, salsa, guacamole,
pre-packaged calamari, and pre-packaged crab cakes.
One of these
Complainant has not licensed Respondent to use Complainant's trademark.
Respondent’s name for purposes of the Policy is either KleenHands or
Brian Margarita. KleenHands is the owner
of the Disputed Domain Names as maintained in the records of Network Solutions,
the registrar of the Disputed Domain Names. Brian Margarita is the name of the
person who owns KleenHands.
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.
Policy paragraph 4(a)(i) contains two elements. Firstly, Complainant must demonstrate rights in a trademark or service mark. Secondly, the Disputed Domain Names must be identical or confusingly similar thereto.
One of the ways in which a complainant may establish rights for purposes of the Policy in a trademark or service mark is by way of a registration in a national office. See Diners Club Int’l Ltd. v. O P Monga, FA 670049 (Nat. Arb. Forum May 22, 2006) (“With the submission of registration number 828,013 of April 25, 1967, issued by the U.S.P.T.O. for the DINERS CLUB mark, and the list of DINERS and composite marks registered worldwide … Complainant proved that it has rights in the DINERS CLUB mark, and generally in the DINERS CLUB family of marks, many of which fully incorporate the words DINERS CLUB.”); see also Seiko Epson Corp. & Epson Am., Inc. v. AOS Web Com, Inc., FA 823033 (Nat. Arb. Forum Nov. 27, 2006) (“Seiko Epson has long established rights in the distinctive mark EPSON through use and through numerous United States and other trademark and service mark registrations.”).
In the present case, Complainant is the owner of numerous trademark registrations for and including the word "margaritaville." Further, one of the registrations including this word issued on March 14, 1989, which predates Respondent’s registration of the Disputed Domain Names. As such, Complainant has rights in Complainant's Trademark for purposes of the Policy.
Confusing similarity is an issue resolved by comparing the dominant feature of the Disputed Domain Names with the dominant feature of Complainant's Trademark. For purposes of this comparison, top-level domain identifiers, such as “.com” and “.net,” are irrelevant. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Similarly, minor variations in spelling, such as the addition or subtraction of a single letter, are irrelevant. See Barnsandnoble.comLLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006)(finding that the <barnesandnobles.info> and <basrnesandnobles.biz> domain names are confusingly similar to the complainant's BARNESANDNOBLE.COM mark because the addition of the letter "s" and the generic top-level domains to the dominant features of the complainant's mark do not negate the confusing similarity aspects of the domain names pursuant to Policy ¶ 4(a)(i)).
Whether the
addition of whole words creates a meaningful distinction depends upon the
circumstances. As noted above, the primary issue is the dominant feature of the
trademark, on one hand, and on the other, the domain name. In this regard, it is relevant whether the
trademark is generally well known, which creates recognizability, and the
Mark’s strength in terms of whether it is fanciful (or more fanciful, as
opposed to generic). See Federated Western Pro., Inc. v. Chan, D2003-0472 (WIPO Sept. 17, 2003) (finding
disputed domain names “macysflowerclub.com” and “macysvisa.com” confusingly
similar to the complainant’s trademark in MACY’S, even where the complainant
was not found to have rights in the terms “flower club” or “Visa”); see also Citigroup Inc. v. Acme Mail, FA
241987 (Nat. Arb. Forum Apr. 12, 2004) (finding the domain name “citiban.com”
confusingly similar to the complainant’s CITI mark because the “domain name
incorporates in its entirety Complainant’s CITI mark and the CITI mark is the
dominant element in Respondent’s domain name”); see also Apple Computer, Inc. v. Apple-Computer, FA 535416 (Nat.
Arb. Forum September 22, 2005) (ordering transfer of <apple-computers.us>
in part because the domain name fully incorporated the complainant’s
mark).
In the present case, the Panel finds that Complainant's trademark is both well known and fanciful. As such, it has a strong distinctive nature. As such, the addition of the words "coffee," "farm," "farms," "and "ranch" to the word "margaritaville" are not sufficient to create a meaningful distinction, or said another way, the overall impression of the Disputed Domain Names is sufficiently similar to the overall impression of Complainant's Trademark to find similarity under the Policy.
As such, Complainant has established the first element of the Policy.
It is to be noted that under Policy paragraph 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Names, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant has met its burden. Complainant asserts that it has not licensed Respondent to use Complainant's Trademark. Complainant further asserts that all of the Disputed Domain Names resolve to webpages that indicate that the websites are "under construction" and "coming soon" and offer sponsored links. Further, Complainant points out that Respondent's name is "KleenHands," and is not "Margaritaville."
Respondent has not maintained its burden.
Respondent cannot show that it is commonly
known by the Disputed Domain Names. At
best, Respondent's name is "Margarita," and this is setting aside the
issue of whether Respondent's name for purposes of the Policy is “KleenHands”
or “Margarita.” The name “Margarita” is
not “Margaritaville,” “margaritavillecoffee,” “margaritavillefarms,” or any of
the other Disputed Domain Names. As such, Respondent has not been commonly
known by any of the Disputed Domain Names.
Respondent has not shown demonstrable preparations to use the Disputed
Domain Names. Respondent has asserted an
intention to use the disputed domain names to develop a personal website for
family and friends, but Respondent has presented no facts to support this
assertion. See Open Sys. Computing
AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the
respondent did not establish rights and legitimate interests in the domain name
where the respondent mentioned that it had a business plan for the domain name
at the time of registration but did not furnish any evidence in support of this
claim); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that when the respondent declares its intent to develop a
website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’
evidence of such preparations to use the domain name, and 2) that such preparations
were undertaken ‘before any notice to [Respondent] of the dispute’”).
Complainant shows an example for each of the Disputed Domain Names in
which the Disputed Domain Names are used to direct to websites which, in turn,
direct to other websites related to Jimmy Buffett, acoustic guitar tablature,
free acoustic guitar tabs, weddings, vacations, tequila, snorkeling,
As such, Complainant has established the second element under the
Policy.
Policy paragraph 4(b) provides four
nonexclusive examples of conduct, if found by the Panel to be present,
establishes bad-faith registration and use of the Disputed Domain Names by
Respondent.
Respondent's conduct does not fall within any
of the first three of these examples. Complainant has not provided evidence
establishing that Respondent acquired the Disputed Domain Names primarily for
the purpose of selling them to Complainant or a competitor of Complainant. Complainant has not provided evidence
establishing that Respondent registered the Disputed Domain Names in order to
prevent Complainant from reflecting Complainant's Trademark in a corresponding
domain name. And, Complainant has not provided evidence establishing that
Respondent registered the Domain Names primarily for the purpose of disrupting
Complainant's business.
Complainant has proven that Respondent is
intentionally attempting to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s Trademark as
to the source, sponsorship, affiliation, or endorsement of Respondent’s
website. Complainant’s Trademark is well
known and strong, as discussed above, and the Disputed Domain Names are
confusingly similar to Complainant’s Trademark, also as discussed above. Further, Respondent has used the Disputed
Domain Names to direct to websites that are clearly directed to Internet users
who are interested in Complainant and Complainant’s commercial activities. As such, the Panel is persuaded that
Respondent has intentionally attempted to create a likelihood of confusion on
the part of Internet users by and through the use of Complainant’s Trademark as
to the source, sponsorship, affiliation, or endorsement of the websites to
which the Disputed Domain Names direct.
Respondent presumably earns
click-through fees for each redirected Internet user that clicks on one of the
posted links found on the websites to which the Disputed Domain Names direct,
and as such, Respondent’s use of the Disputed Domain Name is for its commercial
benefit. See
As such, Complainant has established the
third element of the Policy.
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 <margaritavillecoffee.com>, <margaritavillecoffee.net>,
<margaritavillefarm.com>, <margaritavillefarm.net>, <margaritavillefarms.com>, <margaritavilleranch.com>, and <margaritavilleranch.net>
domain names be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: October 7, 2008
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