Intrawest Sandestin Company LLC v. Admin Contact
Claim Number: FA0910001289075
PARTIES
Complainant is Intrawest Sandestin Company LLC (“Complainant”), represented by Ginger
Barry, of Broad and Cassel,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <sandestinwedding.com>, registered with Godaddy.com, Inc.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint
to the National Arbitration Forum electronically on
On
On
A Response was received on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant has registered its
mark, SANDESTIN, with the United States Patent and Trademark Office
(“USPTO”). The service mark has been in
use in connection with Complainant’s (or Complainant’s
predecessor-in-interest’) operation of the Sandestin Golf and Beach Resort in
- Complainant registered and is using the domain name, www.sandestin.com, with respect to its business, such registration having occurred in 1996.
- Sandestin is not a city or a geographical location. Complainant has provided wedding services at its resort since it was opened to the public.
- Complainant never licensed to Respondent use of the SANDESTIN mark, nor is Respondent affiliated with Complainant in any manner. Respondent has no rights in said mark and does not operate a business that competes with Complainant.
- Evidence indicates that
Respondent resides in
- Respondent has not put the disputed domain name to use and does not operate a wedding business.
- Respondent’s registration for the disputed domain name contains false contact information in violation of Policy stipulations, as both Respondent’s listed address and phone number are incorrect.
- Respondent has no rights or legitimate interests in the disputed domain name, and has not satisfied any of the criteria cited in Policy paragraph 4(c) to establish such rights or interests.
- Respondent registered the disputed domain name in bad faith, and its use of the name constitutes cyber-squatting. Respondent’s sole purpose is to prevent Complainant from using a domain name related to Complainant’s services.
- Complainant sent a cease-and-desist letter to Respondent concerning the disputed domain name in October 2009. Respondent refused to transfer the name to Complainant.
B. Respondent
- Sandestin is a geographical
location in
- Activities listed under Complainant’s service mark registration do not include weddings, and thus use of the disputed domain name should not be a threat to Complainant’s business.
- As there are numerous domain names which contain variants of the word “poker,” a domain name containing the words “sand,” “destin” or “tin” should also be allowable without challenge.
FINDINGS
Since April 1973,
Complainant has operated the Sandestin Golf and Beach Resort in
Respondent
registered the disputed domain name, <sandestinwedding.com>,
on
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.
Complainant has
submitted to the Panel appropriate evidence (Exhibit C) of Complainant’s USPTO
service mark registration for SANDESTIN.
Such evidence suffices to establish Complainant’s rights in that mark
for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v.
Bonds, FA 873143 (Nat. Arb.
Forum
Though the disputed
domain name, <sandestinwedding.com>,
incorporates the mark, SANDESTIN, in full, the two are not identical. The generic term “wedding” is added, along
with the gTLD, “.com.” In the view of
the Panel, these deviations are insufficient to prevent the name from being
confusingly similar to the mark.
Numerous prior UDRP panels have disregarded the addition of generic
terms to established trademarks or service marks when considering the confusing
similarity between those domain names and marks. This is especially true when the additional
term relates directly to services provided under the mark. In this case, Complainant has contended
without contradiction that it supplies wedding services at its primary
location. Thus, the Panel feels
constrained to follow the consensus precedent as noted. See
Accenture Global Services GmbH v. Alok Mishra, D2007-0559 (WIPO
Accordingly, the Panel finds that Complainant has sustained its burden in showing that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Complainant has
asserted that it has not licensed to Respondent rights in Complainant’s valid
service mark, a mark with which the Panel has found the disputed domain name to
be confusingly similar. As such,
Complainant has put forth a prima facie
case that Respondent has no rights or legitimate interests in that name,
compelling Respondent to come forward with clear evidence in rebuttal. See AOL
LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum
To determine whether Respondent can satisfy its burden of rebuttal, the Panel shall first determine if his actions fall under the criteria cited in Policy ¶ 4(c), to wit:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since Complainant has contended, without disagreement from Respondent, that Respondent is making no use of the disputed domain name at all, the Panel is disinclined to find that ¶ 4(c)(i) is applicable. This determination is reinforced by the rather short Response, which makes no reference to Respondent’s use of or preparation to use the name. With respect to ¶ 4(c)(ii), Respondent’s name, Admin Contact, bears no resemblance to the disputed domain name, negating any possible application of that paragraph in the Panel’s view. Finally, once again Respondent’s lack of use of the disputed domain name causes the Panel to conclude that ¶ 4(c)(iii) does not apply in this case, since nonuse cannot be “noncommercial or fair use.”
Reaching for a
rationale outside of ¶ 4(c), Respondent argues that it has rights or legitimate
interests in the disputed domain name because Sandestin is a geographic
location, and thus available for anyone’s use in a domain name notwithstanding
Complainant’s valid service mark registration.
Complainant denies explicitly that Sandestin is a recognized geographic
location. Instead of submitting hard evidence
to bolster its claim, Respondent implies that the Panel should peruse the
internet on its own to discover evidence in Respondent’s favor. In fairness to Complainant pursuant to ICANN
Rule 10(b), the Panel believes it should not conduct a fishing expedition for
evidence to support Respondent’s contention, when Respondent had ample
opportunity and the responsibility to present such evidence – if it exists – in
the Response. As to geography, the Panel
determines only that Complainant and Respondent both agree that Complainant’s
primary operations are located near the city of
As a result, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.
In order to be successful in these proceedings, Complainant is required by the Policy to show that the disputed domain name was registered and is being used in bad faith [emphasis added]. In ¶ 4(b), the Policy lists four circumstances that give rise to a finding of bad faith registration and use. However, the Panel determines that none of these circumstance comes into play in the current case, because: Complainant has supplied the Panel with no evidence of Respondent’s intent or attempts to sell the disputed domain name (¶ 4(b)(i)); Complainant has failed to contend that Respondent has engaged in a pattern of preventing others from reflecting their trademarks or service marks in a corresponding domain name (¶ 4(b)(ii)); Complainant has not shown that Respondent has attempted to disrupt Complainant’s business in any meaningful way (¶ 4(b)(iii)); and, as Respondent has put the disputed domain name to no use, Complainant has failed to demonstrate that Respondent is profiting monetarily from confusion with Complainant’s service mark in connecting a website to that name (¶ 4(b)(iv)).
However, the
circumstances cited in ¶ 4(b) were not intended to be exhaustive of the reasons
for which a panel might conclude that a disputed domain name was registered and
is being used in bad faith. See Do The Hustle, LLC, supra.; and Telstra Corporation Limited v. Nuclear
Marshmallows, D2000-0003 (WIPO
In this case,
Complainant alleges, and the Panel accepts in the absence of rebuttal from
Respondent, that Respondent filed deceptive contact information when
registering the disputed domain name.
Moreover, Complainant has established to the Panel’s satisfaction
(Exhibit E), that Respondent’s location, in
As to whether
Respondent’s passive holding of the disputed domain name can constitute bad
faith use of the same, many prior Policy panels have held that such a
circumstance can result in exactly that finding. See, for example, Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A.
v. ChinaVogue.com, D2005-0615 (WIPO
While all the circumstance present in those prior Policy rulings may not appear in the instant case, the Panel finds sufficient reasons to conclude that the disputed domain name is being used in bad faith. Respondent has engaged in intentional deception as to its exact whereabouts. Given its proximity to Complainant, Respondent likely did know, and certainly should have known, of Complainant’s business and service mark. Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
For the foregoing reasons, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.
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 <sandestinwedding.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: December 7, 2009
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