Salt Life Holdings, LLC v. William Burgess a/k/a Salt Life Media a/k/a Charles Burgess
Claim Number: FA1204001439701
Complainant is Salt Life Holdings, LLC (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is William Burgess a/k/a Salt Life Media a/k/a Charles Burgess (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <saltlifephotography.com>, <saltlifephotog.com>, <saltlifemedia.com> and <saltlifeinchrist.com> ("the Domain Names"), registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2012; the National Arbitration Forum received payment on April 18, 2012.
On April 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <saltlifephotography.com>, <saltlifephotog.com>, <saltlifemedia.com> and <saltlifeinchrist.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 April 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@saltlifephotography.com, postmaster@saltlifephotog.com, postmaster@saltlifemedia.com, and postmaster@saltlifeinchrist.com. Also on April 24, 2012, 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.
A timely Response was received and determined to be complete on May 15, 2012.
On May 24 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal here 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.
On June 7, 2012 the Panelist issued an Additional Submissions Order requesting that the Respondent provide additional evidence. No documents were submitted pursuant to that order.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant's submissions can be summarized as follows:
Respondent is using three aliases, William Burgess, Salt Life Media and Charles Burgess, but each of these are the same person or entity or are controlled by the same person or entity.
The Complainant has used the SALT LIFE mark to identify a wide variety of goods and services since 2003 and has US federal registrations for SALT LIFE for clothing, stickers, jewelry, restaurant and bar services. Complainant also sponsors numerous photographic contests and significant parts of it promotional efforts involve solicitation of photographs from customers to display on its websites and social media websites. As a result of its promotion and use of the SALT LIFE mark Complainant has established considerable goodwill in the SALT LIFE mark which is well recognized by the consuming public. Complainant is also in the process of expanding the goods and services on which it uses the SALT LIFE mark and such planned expansion includes photograph albums, calendars, magazines, and computer games, discs and software and it has applied for registered trade marks in this regard.
The Domain Names are confusingly similar to the Complainant's SALT LIFE mark, using it in full, adding only the generic terms "photog", "photography", "media" and "in christ" and the .com TLD, which do not preclude a finding of confusing similarity.
Respondent has no right to use the SALT LIFE mark as part of the Domain Names. The SALT LIFE mark has been used since 2003, about seven years prior to registration of any of the Domain Names. Complainant has never licensed the Respondent to use any of its trade marks or to register and use the Domain Names.
'William Burgess' and 'Charles Burgess' are in no way synonymous or homonymic with the Domain Names and it appears that "Salt Life Media" is nothing more than an alias for the saltlifemedia.com domain name since the web site attached to this name is "under construction" and the name has never been used.
The Respondent is using the Domain Names in bad faith. It has registered them including in full a well known mark with no apparent good faith reason for doing so. Actual or constructive knowledge of the prior registration of an identical or confusingly similar mark is a factor supporting bad faith. Panels have repeatedly found bad faith where the Respondent has used the domain names in question to divert, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark. Here the Respondent is using the <saltlifephotography.com> and <saltlifephotog.com> domain names to divert Internet users to a web site in which Respondent is promoting its photography services. The Respondent has made no use of the <saltlifemedia.com> or <saltlifeinchrist.com> domain names, the websites attached to these names are under construction and a failure to offer bona fide services in connection with a domain name is a factor supporting bad faith.
Complainant sent cease and desist letters in November and December 2011. The Respondent indicated that he did not intend to cease using the "saltlife" domain names and said "If you really want my domains, then there are better ways to negotiate this matter than taking a very expensive gamble in court (far more expensive for Salt Life Corp that it would be for me)." This statement is an implied offer to sell the Domain Names to Complainant for a substantial sum.
B. Respondent
The Respondent's contentions can be summarized as follows:
I have been describing my photography as "Salt Life Photography" since moving to Pensacola FL in early 1979. "Salt life" is a common phrase used by many people who live in coastal marine communities of the United States and, also, since Jesus told his followers they were the "salt of the earth" to mean living a christian life. It is a description of an American lifestyle and so it is impossible to unreasonably restrict its use.
There are many photographers around the USA using salt life photography in its many forms and hundreds of businesses in unrelated fields of goods and services.
<saltlifephotography.com> is the website for the Respondent's photography business along with <saltlifephotog.com>. <saltlifeinchrist.com> is a christian website based upon the Christian faith and writings in the new testament. I have been using "salt life" in relation to my photography and in expression of my religious faith for more than 20 years prior to the Complainant's trade mark registration.
With regard to <saltlifemedia.com>, that domain name was purchased on behalf of a third party in connection with a contract to develop and host their web site. After the initial purchase they lost interest and have not renewed the domain, therefore it is set to expire due to non-renewal and is available for transfer.
Since the Respondent's activities focus on his photography and Christian activities his activities have never been confused with the Complainant. Salt Life Photography is unique enough to unmistakably differentiate the Respondents business from anything in which the Complainant is engaged. The Respondent's use is not an infringement as none of his goods and services are in conflict with any of the lines of business of the Complainant as of 2010. It is possible for the same identical mark to be used in the same geographic area without any trade mark infringement occurring as long as the goods or services of the parties are sufficiently dissimilar.
If I was living in Hollister California I could use Hollister photography even though the apparel company Hollister has a trade mark for its line of business. Since the goods and services are not the same this would not be infringing.
The allegation are bullying with a view to snatching the Domain Names.
There are many legitimate and legal uses of a trade mark and the right to use of pre-existing cultural phrases is among one of those legitimate uses.
Saltlifeinchrist.com is so distinctive and so obviously a religious content website and is also protected by and trumped by the First Amendment of the US Constitution.
The Complainant's trade marks do not cover photographic services and the hosting of hosting or sponsoring a photo contest is not the same as engaging in the production of original photographs as a photographer.
There are no aliases. There are two individuals. William Burgess of rootwebhost.net who has no bearing on this matter and Charles Burgess the owner of <saltlifephotography.com>, <saltlifephotog.com>, <saltlifeinchrist.com> and the operator of Salt Life Photography since 1979.
When I said there were better ways to negotiate this matter, what I had in mind was a possible disclaimer of non-affiliation between the Complainant and myself to be posted on my web site. My reference to a lawsuit being more expensive was the risk to the Complainant of damaging the strength of their trade mark by having the Court find that "Salt Life" is generic. There was no mention of money. <saltlifephotog.com>, <saltlifephotography.com> and <saltlifeinchrist.com> are not for sale at any price.
The Complainant has used the SALT LIFE mark to identify, inter alia, clothing since 2003 and restaurant services since January 2010 and has US federal registrations for SALT LIFE for clothing, stickers, jewelry, restaurant and bar services. Complainant also sponsors numerous photographic contests and significant parts of it promotional efforts involve solicitation of photographs from customers to display on its websites and social media websites.
The domain names <saltlifephotography.com> and <saltlifephotog.com> were created on 22 June 2010. They are being used for the Respondent's photography services site. The domain name <saltlifemedia.com> was registered on 30 September 2011. The domain name <saltlifeinchrist.com> was registered 5 October 2011. <saltlifemedia.com> and <saltlifeinchrist.com> have not been used.
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.
Preliminary Issues – Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." Whilst the Respondent declined to explain the relationship with William Burgess as requested in the Additional Submissions Order, the Respondent explains that he does in fact control all four Domain Names and the Panelist is satisfied, from the common address details and the use by the Respondent of the domain names registered with William Burgess, that this is so.
The Complainant has federal US trade mark registrations consisting of or containing SALT LIFE and has been using this mark, inter alia, for clothing since 2003 and for restaurant services back to January 2010. It has produced documentary evidence that it sponsors photographic contests and solicits photographs from its customers for use on the Internet.
The Respondent was requested to provide evidence of the use by himself or others of "Salt Life" in relation to lifestyle photography or in the context of a Christian life in the Additional Submissions Order, but has declined to provide any documentary evidence of his assertions. It is true that "when a mark is a relatively weak non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion." Webvan Group Inc. v. Atwood, D2000-1512 (WIPO Feb. 20, 2001). However the Complainant has produced documentary evidence that "Salt Life" has been used as a brand since 2003 and despite the requests in the Additional Submissions Order the Respondent has not produced any documentary evidence to support his assertions that it is in widespread use by others since before that date. This case on the evidence before me appears to be more akin to that of Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) and the many other decisions under the Policy such as Wal-Mart Stores, Inc. v. Walmarketcanada, D2000-0150 (WIPO May 2, 2000) deciding that when generic words, even unrelated generic words, are added to a recognisable brand then the domain names are confusingly similar under the Policy.
The Domain Names consist of the Complainant's SALT LIFE mark and the generic words "media", "in Christ", "photography" and "photog" a recognisable abbreviation of photography, and the top level designation ".com". The addition of the generic words does not serve to distinguish the Domain Names from the Complainant's SALT LIFE mark. This is especially so when there is a connection between the Complainant and the generic words as in the case of "photography" and "photog" when the Complainant has produced evidence that it runs photography competitions to promote its goods and services. See Gillette co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005); see also Space Imaging LLC v. Brownell, AF-0298 (e-resolution Sept. 22, 2000) (finding confusing similarity where the respondent's domain name combines the complainant's mark with a generic term that has a relationship to the Complainant's business); 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.").
As such the Domain Names are confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
Rights or legitimate interests can be shown under the Policy where there is legitimate non-commercial use, permission from an owner of any trade mark rights in the name or the name has been used for a bona fide business or the Respondent has been commonly known by the name prior to the registration of the name.
Complainant contends that Respondent has no right to use the SALT LIFE mark as part of the Domain Names as it has been used as a trade mark since 2003, about seven years prior to registration of any of the Domain Names. Complainant states it has never licensed the Respondent to use any of its trade marks or to register and use the Domain Names. It also states that "William Burgess" and "Charles Burgess" are in no way synonymous or homonymic with the Domain Names and it appears that "Salt Life Media" is nothing more than an alias for the <saltlifemedia.com> domain name since the web site attached to this name is "under construction" and the name has never been used.
Respondent said he has been describing his photography as "Salt Life Photography" since early 1979. He also says that "Salt life" is a common phrase used by many people who live in coastal marine communities of the United States and, also, since Jesus told his followers they were the "salt of the earth", to mean living a Christian life. He says it is a description of an American lifestyle. He said there are many photographers around the USA using salt life photography in its many forms and hundreds of businesses in unrelated fields of goods and services. However despite being given the opportunity to do so in an Additional Submissions Order the Respondent did not submit any evidence to support his assertions.
<saltlifephotography.com> and <saltlifephotog.com> are being used by the Respondent for a photography business. As such the use is clearly not non-commercial. The Respondent has provided no evidence that it has been commonly known by these names or has been using "Salt Life" for a bona fide business prior to the Complainant or to registration of these domain names. The earliest evidence of use of these domain names by the Respondent was, in fact, provided by the Complainant and is dated 13 April 2012 and, as such, this postdates the evidence of use provided by the Complainant of its own use of SALT LIFE. There would also be an element of competition with the Complainant due to the photographic competitions promoted by the Complainant as part of its business. As such the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in <saltlifephotography.com> and <saltlifephotog.com> and the Respondent has not shown that it does. See RMO Inc. v. Burbridge, FA 96949 (Nat Arb. Forum May 16, 2001) (holding that a respondent must show it has been commonly known by the domain name prior to registration of the domain name to prevail); see also Coryn Group Inc. v. Media Insight, FA 198959 (Nat Arb. Forum Dec. 5, 2003); see also Gardens Alive Inc. v. D&S Linx, FA 203126 (Nat Arb. Forum Nov. 20, 2003) (finding no bona fide offering of services where a Respondent used names for commercial benefit to divert Internet users to a website that offered services similar to those already offered by the Complainant).
The
Respondent says that <saltlifeinchrist.com> is a Christian website
based upon the Christian faith and writings in the new testament and said that
he had been using "salt life" in expression of his religious faith
for more than 20 years prior to the Complainant's trade mark registration.
Despite specific requests in the Additional Submissions Order the Respondent
did not provide any evidence of the same and nor did he produce any evidence of
demonstrable preparations for the legitimate non-commercial use of this site.
This domain name bears an under construction message. Pirelli & C.
S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (finding that
the respondent lacked rights or legitimate interests in a confusingly similar
domain name that it had not made demonstrable preparations to use since its
registration seven months prior to the complaint). Accordingly due to the non-use
of this domain name and the evidence of use of Salt Life in commerce for <saltlifephotography.com>
and <saltlifephotog.com> the Complainant has made out a
prima facie showing that the Respondent does not have a right and
legitimate interest in <saltlifeinchrist.com> and the Respondent
has not provided any evidence that it does.
With regard to <saltlifemedia.com>, the Respondent says that the domain name was purchased on behalf of a third party in connection with a contract to develop and host their web site and that after the initial purchase they lost interest and have not renewed the domain which is said to expire. It bears an under construction message and has not been used. There is some inconsistency in that the Respondent now claims to be in control of this domain name as "Salt Life Media", the registrant, at the same address as his own. However once again no evidence for demonstrable preparations for use of the name has been provided. Due to the non-use, and the evidence of use of Salt Life in commerce for <saltlifephotography.com> and <saltlifephotog.com> the Complainant has made out a prima facie showing that the Respondent does not have a right and legitimate interest in <saltlifemedia.com> and the Respondent has not provided any evidence that it does.
As such the panel holds that the Respondent does not have any rights or legitimate interests in any of the Domain Names.
Paragraph 4 of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on‑line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location; and
circumstances indicating that the domain name has been acquired primarily for the purpose of selling or otherwise transferring the registration for valuable consideration in excess of out of pocket costs.
The Respondent has used the <saltlifephotography.com> and <saltlifephotog.com> domain names for photographic services. The Complainant has provided evidence that its SALT LIFE brand has been used for almost ten years and is promoted through the means of photographic competitions. By contrast despite sweeping assertions of long term use the Respondent has not provided any evidence of use of SALT LIFE prior to the Complainant. The Panelist finds that it is more likely than it is not that the Respondent was seeking to use the Complainant' mark after it had become known to attract traffic to his site taking advantage of the confusion caused as to the origin of the site for commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat Arb. Forum June 2, 2006) (finding bad faith registration under the Policy where the respondent was diverting Internet users searching for the complainant to its own site and likely profiting).
Additionally, in correspondence the Respondent made the following statement "If you really want my domains, then there are better ways to negotiate this matter than taking a very expensive gamble in court (far more expensive for Salt Life Corp that it would be for me)." The Respondent explains this by saying in his Response
When I said there were better ways to negotiate this matter, what I had in mind was a possible disclaimer of non-affiliation between the Complainant and myself to be posted on my web site. My reference to a lawsuit being more expensive was the risk to the Complainant of damaging the strength of their trade mark by having the Court find that "Salt Life" is generic. There was no mention of money.
However the statement "if you really want my domains" implying transfer is inconsistent with the Respondent's explanation of a disclaimer where he would keep the domains. The panelist believes it is more likely than not that the Respondent was seeking to sell the Domain Names to the Complainant for profit.
As such the Panel finds that the Domain Names have been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saltlifephotography.com>, <saltlifephotog.com>, <saltlifemedia.com> and <saltlifeinchrist.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 25, 2012
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