Morada Bay, Inc. v. John Fleming
Claim Number: FA1205001444848
Complainant is Morada Bay, Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is John Fleming (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moradabay.com>, registered with eNom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2012; the National Arbitration Forum received payment on May 18, 2012.
On May 22, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <moradabay.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@moradabay.com. Also on May 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 failed to receive a timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
The Panel notes that Complainant made an Additional Submission after the Panel decided this case, and therefore it was not considered. It should also be noted that the Panel disregarded Respondent’s late and deficient response.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <moradabay.com> domain name is confusingly similar to Complainant’s MORADA BAY mark.
2. Respondent does not have any rights or legitimate interests in the <moradabay.com> domain name.
3. Respondent registered and used the <moradabay.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant began using the MORADA BAY mark to promote its restaurant, bar, and café services in 1997. Complainant formerly owned a registered trademark with the USPTO for the MORADA BAY mark, but inadvertently allowed the trademark registration to lapse. Complainant recently re-applied for a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its MORADA BAY mark (Ser. No. 85,441,814 filed October 7, 2011).
Respondent registered the <moradabay.com> domain name on July 5, 2003.
From 2003 to 2011, the <moradabay.com> domain name redirected Internet users to the <matrixone.com> website. The <moradabay.com> domain name currently resolves to the <keysperspectives.com> website, which contains a personal blog and hyperlinks to a variety of commercial websites. Respondent offered to sell the <moradabay.com> domain name to Complainant for $40,000.
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.”).
According to Complainant, Complainant began operating a beach café under the MORADA BAY mark in 1997. Complainant provides the Panel with pictures of merchandise, the sign for Complainant’s café, and the menu for the café, which the Panel notes all contain the MORADA BAY mark. Complainant asserts that it formerly owned a registered trademark with the USPTO for the MORADA BAY mark, but inadvertently allowed the trademark registration to lapse. However, Complainant has re-applied for a trademark registration with the USPTO for its MORADA BAY mark (Ser. No. 85,441,814 filed October 7, 2011). The Panel notes that Complainant lists June 17, 1997 as the first date of use for the MORADA BAY mark in its current trademark application. Complainant further contends that it has advertised its café under the MORADA BAY mark locally and nationally for the past 25 years and that Complainant owns common law rights in the MORADA BAY mark. The Panel concludes that Complainant has established rights in the MORADA BAY mark for the purposes of Policy ¶ 4(a)(i), dating back to 1997. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
Respondent’s <moradabay.com> domain name is identical to Complainant’s MORADA BAY mark; the only changes to the mark in the disputed domain name are the removal of the space and the addition of the generic top-level domain (“gTLD”) “.com.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 alleges that Respondent is not commonly known by the <moradabay.com> domain name. Complainant asserts that Respondent is not authorized to use Complainant’s MORADA BAY mark and is not affiliated with Complainant. The WHOIS information lists “John Fleming” as the registrant, which the Panel finds is not similar to the <moradabay.com> domain name. Based on the evidence in the record, the Panel concludes that Respondent is not commonly known by the <moradabay.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent currently uses the <moradabay.com> domain name to resolve to the <keysperspectives.com> website, which Complainant claims contains a personal blog and hyperlinks to a variety of commercial websites. Complainant avers that Respondent commercially benefits from these hyperlinks by receiving click-through fees. The Panel finds that such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <moradabay.com> domain name under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant claims that Respondent offered to sell the <moradabay.com> domain name to Complainant for $40,000. Complainant demonstrates that Respondent e-mailed the offer to Complainant on February 12, 2012. Complainant argues that $40,000 exceeds Respondent’s out-of-pocket costs of registering the <moradabay.com> domain name. The Panel thus finds that Respondent lacks rights and legitimate interests in the <moradabay.com> domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent offered to sell the <moradabay.com> domain name to Complainant for $40,000, more than Respondent’s out-of-pocket costs, which constitutes bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Respondent no doubt commercially benefits from the website resolving from the <moradabay.com> domain name by receiving click-through fees from the hyperlinks found on Respondent’s website. The Panel therefore finds that Respondent registered and uses the <moradabay.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moradabay.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 26, 2012
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