The St. Joe Company v. Calypso 2-107 / Pier Park Condo Rentals
Claim Number: FA1204001439973
Complainant is The St. Joe Company (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is Calypso 2-107 / Pier Park Condo Rentals (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pierparkvacationrentals.com> and <pierparkpcbeach.com>, registered with GoDaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2012; the National Arbitration Forum received payment on April 19, 2012.
On April 19, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pierparkvacationrentals.com> and <pierparkpcbeach.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 23, 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@pierparkvacationrentals.com and postmaster@pierparkpcbeach.com. Also on April 23, 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 May 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <pierparkvacationrentals.com> and <pierparkpcbeach.com> domain names, the domain names at issue, are confusingly similar to Complainant’s PIER PARK mark.
Respondent does not have any rights or legitimate interests in the domain names at issue.
Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its PIER PARK mark (Reg. No. 2,813,683 registered February 10, 2004). Complainant uses the PIER PARK mark in connection with a 900,000 square foot, premiere shopping destination and entertainment hub located in the heart of Panama City Beach, Florida.
Respondent uses the disputed domain names to operate a vacation home and condo rental business for rentals in the Pier Park shopping hub area as well as the entire Panama City Beach Area. Respondent’s disputed domain names are confusingly similar to Complainant’s PIER PARK mark. Respondent is not commonly known by the disputed domain names, was not authorized to use the disputed domain names by Complainant.
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.”).
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.” Complainant contends that the two disputed domain names are registered by Calypso 2-107 or Pier Park Condo Rentals. Complainant alleges that these are aliases and the domain names are actually registered by the same entity. Complainant notes that, in September 2009, it sent a cease and desist letter to the registrant of <pierparkvacationrentals.com> domain name and received a response from Ms. Deana Edwards (now Ms. Deana Crowson, due to a divorce), who admitted owning both disputed domain names. Complainant further notes that the WHOIS information contains the same address, despite being registered by two different names. The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus will proceed with the instant case.
Complainant provided evidence of its USPTO trademark registration for its PIER PARK mark (Reg. No. 2,813,683 registered February 10, 2004). Complainant’s USPTO trademark registrations are evidence that Complainant holds rights in its PIER PARK mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has 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).
The <pierparkvacationrentals.com> and <pierparkpcbeach.com> domain names are confusingly similar to Complainant’s PIER PARK mark. The disputed domain names contain Complainant’s entire mark, the generic term “vacation rentals,” and the generic top-level domain (“gTLD”) “.com.” One of the disputed domain names also contains the geographic term “pcbeach,” which is presumably short for “Panama City Beach.” The addition of a generic or geographic term and a gTLD does not adequately distinguish a disputed domain name from a complainant’s mark, and, therefore, the Panel finds that Respondent’s <pierparkvacationrentals.com> and <pierparkpcbeach.com> domain names are confusingly similar to Complainant’s PIER PARK mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 submitted evidence establishing that “Calypso 2-107” or “Pier Park Condo Rentals” are the registrants of the disputed domain names. Complainant submitted further evidence stating that “Deana Crowson” is the individual who registered the disputed domain names. Respondent is not commonly known by the disputed domain names because, while one name is “Pier Park Condo Rentals,” Complainant’s PIER PARK mark relates to the Pier Park shopping hub, at which, there are no condos. Respondent is using the disputed domain names to rent condos in area of the Pier Park shopping hub, but is not associated with Complainant’s PIER PARK mark and has not been authorized to use the PIER PARK mark in connection with condo rentals. Accordingly, Respondent does not have any rights or legitimate interests in the disputed domain names. See Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); 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).
After examining the evidence, the Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Respondent is using the disputed domain names in connection with a condo or vacation home rental business. Complainant’s PIER PARK mark is used in connection with a shopping hub and Respondent’s rental business is unrelated to Complainant’s mark. Such unrelated use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name). Respondent’s use is unrelated to Complainant’s PIER PARK mark and Respondent is not using the disputed domain names for 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 that Policy ¶ 4(a)(ii) has been established.
Respondent is using Complainant’s PIER PARK mark to attract Internet users for commercial gain. Respondent is operating a vacation rental business through the disputed domain names and uses Complainant’s PIER PARK mark to create a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain names. By mistakenly believing the disputed domain names are affiliated with or sponsored by Complainant, Internet users will be more likely to rent the vacation homes listed on Respondent’s
<pierparkvacationrentals.com> and <pierparkpcbeach.com> domain names. Respondent is creating a likelihood of confusion and commercially benefitting from such confusion and thus registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Respondent’s use of photographs and references to Complainant’s Pier Park shopping hub is evidence of this knowledge. Accordingly, Respondent had actual knowledge of Complainant’s rights and interests, and the Panel finds Respondent registered and uses the <pierparkvacationrentals.com> and <pierparkpcbeach.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pierparkvacationrentals.com> and <pierparkpcbeach.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 23, 2012
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