StoneMor
South
Claim Number: FA0905001260827
Complainant is StoneMor
South Carolina Subsidiary LLC (“Complainant”), represented by Susan B. Flohr, of Blank Rome LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gracelandmortuary.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 5, 2009.
On May 6, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <gracelandmortuary.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 May 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 27, 2009 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@gracelandmortuary.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
A late Response was submitted by Respondent on June
9, 2009 in electronic format only and was determined to be deficient. The Panel has chosen to consider this
Response in its Decision.
A timely Additional Submission was submitted by
Complainant on June 15, 2009.
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."
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gracelandmortuary.com> domain name is identical to Complainant’s GRACELAND MORTUARY mark.
2. Respondent does not have any rights or legitimate interests in the <gracelandmortuary.com> domain name.
3. Respondent registered and used the <gracelandmortuary.com> domain name in bad faith.
B. Respondent
Respondent was employed with Complainant’s predecessor-in-interest and was fired in September 2008. She created and maintained the website and claims to be entitled compensation arising from her employment.
C. Complainant’s Additional Submission
Complainant contends that Respondent’s Response was not timely; Respondent has conceded that the domain name is identical or confusingly similar to Complainant’s Trademarks; Respondent created the domain name while employed by Complainant’s predecessor-in-interest and therefore was acting as an agent for her employer; and Respondent has not shown demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; any issues relating to Respondent’s employment with Complainant or Complainant’s predecessor are irrelevant; and Respondent has acted in bad faith.
Complainant, StoneMor South Carolina Subsidiary LLC, is the owner of the GRACELAND MORTUARY mark. Complainant acquired Graceland Mortuary in September 2008. Complainant and Complainant’s predecessor-in-interest have been using the GRACELAND MORTUARY mark since as early as 1917 in conjunction with their cemetery, funeral home, and mortuary services.
Respondent registered the <gracelandmortuary.com> domain name in her own name while she was employed with Complainant’s predecessor-in-interest on September 15, 2007. Respondent was terminated from her employment when Complainant acquired Graceland Mortuary in September 2008, and she continues to hold registration for the disputed domain name. Respondent is not actively using the website, and has indicated her willingness to sell the <gracelandmortuary.com> domain name to Complainant for $10,000.
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."
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.
A governmental
trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) if Complainant can establish common law rights in the
mark. See Artistic
Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶
4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark); see also British Broad.
Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the
Policy “does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service marks”)
Complainant asserts that its predecessor-in-interest’s first use of the GRACELAND MORTUARY mark in commerce occurred in 1917. Complainant has demonstrated continuous use of the mark by itself and its predecessors-in-interest for over ninety years. The GRACELAND MORTUARY mark has acquired substantial goodwill and recognition in the community and Complainant asserts that its mark has an established secondary meaning to establish rights under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years). The Panel therefore concludes that Complainant has established sufficient common law rights in the GRACELAND MORTUARY mark to satisfy Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or legitimate interests in the <gracelandmortuary.com>. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must meet its burden of production for its prima facie case, and then the burden is shifted to Respondent. Respondent must bring themselves within the purview of Policy ¶ 4(c), or put forward some other reason why it can fairly be said to have relevant rights or legitimate interests in relation to the disputed domain name. Complainant has presented a prima facie case and the Panel will review the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information lists Respondent as “Sandra Martin,” and Complainant asserts that Respondent was never authorized by Complainant’s predecessor-in-interest to register the disputed domain name. When the WHOIS information identifies Respondent as someone other than the disputed domain name, and there is no evidence that the Respondent is commonly known by the disputed domain name, it may be inferred that Respondent has failed to establish rights to the mark under Policy ¶ 4(c)(ii). Thus, the Panel finds Respondent is not commonly known by the disputed domain name. 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent lacks rights or legitimate interests based on Respondent’s failure to make demonstrable preparations to use the disputed domain name. The Panel finds that Respondent’s inactive use of the <gracelandmortuary.com> domain is relevant under Policy ¶ 4(a)(ii). The Panel concludes that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant further alleges that Respondent’s willingness to sell the dispute domain name to Complainant for $10,000 is evidence that Respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). The Panel concludes that Respondent’s disproportionate offer to sell the <gracelandmortuary.com> domain name for $10,000 is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s offer to sell the disputed domain name to Complainant for $10,000, an amount in excess of Respondent’s out-of-pocket registration costs, is evidence to suggest that Respondent has registered and is using the <gracelandmortuary.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent demonstrated bad faith by registering the domain name with the intent to transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000).
Complainant alleges that Respondent’s registration of the disputed domain name in her personal name, without authorization from Complainant’s predecessor-in-interest, and retaining it after her employment with Graceland Mortuary ended is per se indicative of bad faith. See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name); see also AA Portable Power Corp. v. Kevin Li, FA 931648 (Nat. Arb. Forum Apr. 23, 2007) (“Respondent registered the domain name in bad faith by registering the domain name in his own name rather than that of his employer”). The Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b) based on its retention of the disputed domain name registration in her own name despite the fact that Respondent no longer is employed by Complainant or its predecessor-in-interest.
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gracelandmortuary.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 17, 2009
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