national arbitration forum

 

DECISION

 

Margaritaville Enterprises, LLC v. Pulsifer Investments LLC

Claim Number: FA1107001400008

 

PARTIES

Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA.  Respondent is Pulsifer Investments LLC (“Respondent”), Montana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <margaritavilleonline.com>, registered with GoDaddy.com, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2011; the National Arbitration Forum received payment on July 22, 2011.

 

On July 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <margaritavilleonline.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@margaritavilleonline.com.  Also on July 25, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

 

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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <margaritavilleonline.com> domain name is confusingly similar to Complainant’s MARGARITAVILLE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <margaritavilleonline.com> domain name.

 

3.    Respondent registered and used the <margaritavilleonline.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Margaritaville Enterprises, LLC, owns the MARGARITAVILLE mark that it uses to offer entertainment services, fan club services, clothing, restaurant services, bar services, hotel services, and retail store services.  Complainant provides information about its goods and services and about Jimmy Buffet, the creator of the term “Margaritaville,” on its website, <margaritaville.com>.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MARGARITAVILLE mark (e.g., Reg. No. 1,642,132 registered April 23, 1991).

 

Respondent, Pulsifer Investments LLC, registered the <margaritavilleonline.com> domain name on October 29, 2002.  The disputed domain name resolves to a website that offers Jimmy Buffet and Complainant-related merchandise for sale, including CDs, t-shirts, and tickets. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it owns rights in its MARGARITAVILLE mark.  In support of its assertions, Complainant provides its trademark registrations with the USPTO for its MARGARITAVILLE mark (e.g., Reg. No. 1,642,132 registered April 23, 1991).  The Panel determines that Complainant has presented sufficient evidence of its rights in the MARGARITAVILLE mark for the purposes of Policy ¶ 4(a)(i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant claims that Respondent’s <margaritavilleonline.com> domain name is confusingly similar to Complainant’s MARGARITAVILLE mark.  Complainant claims that Respondent has simply added the generic term “online” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel concludes that such additions fail to adequately distinguish the disputed domain name from Complainant’s mark, which renders the <margaritavilleonline.com> domain name confusingly similar to Complainant’s MARGARITAVILLE mark pursuant to Policy ¶ 4(a)(i).  See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights and legitimate interests in the <margaritavilleonline.com> domain name.  Once Complainant makes a prima facie case on this point, the burden shifts to Respondent to demonstrate rights and legitimate interests in the domain name.  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.”).  This Panel determines that Complainant has presented a prima facie case.  As Respondent has not responded to the Complaint, the Panel may accept all of Complainant’s arguments as true and find that Respondent does not own any rights and legitimate interests in the domain name.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, this Panel chooses to conduct a Policy ¶ 4(c) analysis to determine if Respondent has any rights or legitimate interests in the <margaritavilleonline.com> domain name.

 

Complainant alleges that Respondent is not commonly known by the <margaritavilleonline.com> domain name.  Complainant argues that the WHOIS information identifies the domain name registrant as “Pulsifer Investments LLC,” which is not similar to the disputed domain name.  As Respondent has not contradicted any of Complainant’s statements, the Panel holds that Respondent is not commonly known by the <margaritavilleonline.com> domain name under Policy ¶ 4(c)(ii).  See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

According to the Complaint, Respondent’s <margaritavilleonline.com> domain name resolves to a website that competes with Complainant.  Complainant provides screen shots of the resolving website that show Respondent is attempting to sell Jimmy Buffet and Complainant-related CDs, merchandise, and tickets.  Complainant has alleged that it sells similar products on its own website, <margaritaville.com>.  The Panel finds that Respondent’s competing use of the <margaritavilleonline.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name 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 Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s registration and use of the <margaritavilleonline.com> domain name disrupts Complainant’s business.  As noted above, Complainant claims that Respondent is operating a website that directly competes with Complainant’s website.  The Panel concludes that Respondent’s registration and competing use of the disputed domain name disrupts Complainant’s business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where the respondent and the complainant were in the same line of business in the same market area); see also S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).

 

Complainant also contends that Respondent is using the <margaritavilleonline.com> domain name to intentionally attempt to attract Internet users to its website by creating a likelihood of confusion with Complainant’s MARGARITAVILLE mark.  Complainant claims that Respondent commercially benefits from the sale of CDs, merchandise, and tickets sold at Respondent’s website.  Based on this evidence, the Panel holds that Respondent’s registration and use was, and is, done in bad faith pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); 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).

 

Complainant alleges that Respondent had actual and constructive knowledge of Complainant’s MARGARITAVILLE mark when it registered and began using the <margaritavilleonline.com> domain name.  Complainant claims that MARGARITAVILLE is a famous mark due to Jimmy Buffet’s song and Complainant’s business.  Complainant further argues that Respondent’s use of the disputed domain name to provide competing services is further evidence of Respondent’s actual notice of Complainant’s MARGARITAVILLE mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent had actual notice of Complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

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 <margaritavilleonline.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  August 30, 2011

 

 

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