national arbitration forum

 

DECISION

 

Salt Life Holdings, LLC v. CLEEP, LLC

Claim Number: FA1203001435562

 

PARTIES

Complainant is Salt Life Holdings, LLC (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA.  Respondent is CLEEP, LLC (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <saltlifesavings.com>, <saltylifesavings.com>, and <saltlifedeals.com>, registered with GoDaddy.com, LLC.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2012; the National Arbitration Forum received payment on March 22, 2012.

 

On March 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <saltlifesavings.com>, <saltylifesavings.com>, and <saltlifedeals.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2012 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@saltlifesavings.com, postmaster@saltylifesavings.com, and postmaster@saltlifedeals.com.  Also on March 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

On April 24, 2012, during the Panel decision period, at the request of the Parties the administrative proceeding was stayed.

 

On May 30, 2012, the stay was lifted at the request of Complainant.

 

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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant

1)    Complainant owns the rights to its SALT LIFE mark through its several registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,959,429 registered June 7, 2005).

2)    Complainant uses its SALT LIFE mark to identify goods and services in relation to its restaurants, a variety of communications media, and to market men’s and women’s apparel.

3)    Respondent registered the disputed domain names on November 25, 2011.

4)    Respondent’s domain names resolve to a website that offers advertising space for other businesses, some of which compete directly with Complainant’s restaurant services.

5)    Respondent does not have permission to use the SALT LIFE mark in any way, including in online use.

6)    Respondent had actual and constructive knowledge of Complainant’s rights in the SALT LIFE mark.

 

B. Respondent

Respondent not did submit a Response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant asserts that it owns rights in the SALT LIFE mark through its multiple registrations with the USPTO (e.g., Reg. No. 2,959,429 registered June 7, 2005).  Complainant’s registration of its mark with the USPTO satisfies the requirement of demonstrating rights in the mark under Policy ¶ 4(a)(i). See 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).”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).

 

Complainant argues that Respondent’s <saltlifesavings.com>, <saltylifesavings.com>, and <saltlifedeals.com> domain names are all confusingly similar to its SALT LIFE mark. Complainant points out that Respondent’s addition of the generic words “savings” and “deals” and the addition of the generic top-level domain (“gTLD”) “.com” to its mark do not adequately distinguish the disputed domain names from the mark. Complainant further asserts that adding the letter “y” to the word “salt” in its mark is insufficient to distinguish the <saltylifesavings.com> domain name from the mark. The Panel notes that the disputed domain names do not include the space between the words in the SALT LIFE mark. The Panel concludes that despite the changes made to the mark the disputed domain names are confusingly similar under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights in the SALT LIFE mark and is not commonly known by the disputed domain names because Respondent’s name sounds nothing like the domain names at issue. The WHOIS information lists “CLEEP, LLC “as the registrant of the disputed domain names, which is not similar to the disputed domain names.  Respondent failed to submit a Response and, therefore, Respondent failed to submit evidence that it is commonly known by the disputed domain name.  The panel in Mattel, Inc. v. Vabalon, FA 1191584 (Nat. Arb. Forum July 1, 2008), held that the respondent was not commonly known by the <flippinfrogs.com> domain name when the respondent’s WHOIS information identified it as “Sinclare Vabalon,” with no reference to the disputed domain name. The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), held that the respondent was not commonly known by the disputed domain name as evidenced by the WHOIS information. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii), based on the WHOIS information as well as other evidence provided.

 

Complainant does not allege how Respondent uses the disputed domain names under Policy ¶ 4(c)(i) or ¶ 4(c)(iii); however, the Panel finds that Respondent uses the domain names to offer advertising space to third parties and display advertisements of competing restaurant businesses, as Complainant asserts in its Complaint under its Policy ¶ 4(a)(iii) argument.  The Panel finds that such a use does not demonstrate a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent offered to sell the <saltlifesavings.com>, <saltylifesavings.com>, and <saltlifedeals.com> domain names for $15,000 after receiving a cease-and-desist letter from Complainant. Complainant contends that Respondent’s reply to the cease-and-desist letter with an offer to sell the domain names demonstrates bad faith registration and use. The panel in Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003), determined that the respondent’s offer to sell the disputed domain name to the complainant for $10,600 indicates bad faith registration and use. In Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i), the panel held that the respondent demonstrated bad faith registration and use when, in its correspondence with the complainant, it stated that it would sell the disputed domain name for $10,000. The Panel concludes that Respondent’s offer to sell the domain names for a total of $15,000 to Complainant amounts to bad faith registration and use under Policy ¶ 4(b)(i).

 

Complainant asserts that Respondent uses the disputed domain names to divert Internet traffic to its website, where it advertises competing businesses’ services. Complainant argues that Respondent is attempting to create a likelihood of confusion with Complainant’s mark.  The Panel infers that Respondent profits from that confusion by receiving click-through fees from the aforementioned advertisements.  The Panel finds that using the confusingly similar disputed domain names to attract consumers to its commercial website amounts to bad faith registration and use under Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

 

Complainant alleges that Respondent had actual and constructive knowledge of its rights in the SALT LIFE mark because the mark is well-known and the domain names are confusingly similar to the mark. The Panel finds that Respondent had actual notice of Complainant’s mark and concludes that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Complainant has proven this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <saltlifesavings.com>, <saltylifesavings.com>, and <saltlifedeals.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  June 1, 2012

 

 

 

 

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