E & B Brewery Lofts Inc. v. Titanium Consulting
Claim Number: FA1207001455964
Complainant is E & B Brewery Lofts Inc. (“Complainant”), represented by James Pellerito, Michigan, USA. Respondent is Titanium Consulting (“Respondent”), represented by Andy Coteman, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e-bbrewerylofts.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.
Honorable Karl V. Fink (Ret)., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2012; the National Arbitration Forum received payment on July 31, 2012.
On July 31, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <e-bbrewerylofts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 August 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@e-bbrewerylofts.com. Also on August 1, 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 August 22, 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 August 24, 2012, after the deadline to file a response had expired, a response was received from Respondent. The untimely response was not in compliance with ICANN Rule #5(a) and/or the Annex to the Supplemental Rules and was not considered by the Panel.
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.
1) Complainant is a multifamily housing property offering residential lofts for lease in Detroit, Michigan. Complainant’s building site previously housed the E & B Brewing Company from 1891–1969. Complainant has owned the property since 1996 and has operated under the name E & B Brewery Lofts since 2002. Complainant has used the E & B Brewery LofTS mark extensively in advertising, press, marketing, social media and with customers since that time. Complainant has common law rights in the E & B BREWERY LOFTS mark.
2) Complainant previously owned the <e-bbrewerylofts.com> domain name but lost ownership of the domain name after inadvertently allowing the domain name to expire.
3) The <e-bbrewerylofts.com> domain name is “undeniably similar and nearly identical to the Complainant’s common law mark.”
4) Respondent’s use of the disputed domain name is not in connection with any bona fide offering of goods or services.
i. Respondent is using the disputed domain name to display Complainant’s information and photographs as well as host a “blog” talking about Complainant’s building. Respondent’s website utilizes pay-per-click advertising on the website, indicating an intent for commercial gain.
ii. Respondent has never been known by the disputed domain name or Complainant’s mark.
5) Respondent registered and is using the disputed domain name in bad faith.
i. Respondent registered the disputed domain name after Complainant let the registration lapse inadvertently.
ii. Respondent offered to sell the domain name registration back to Complainant for $7,000.
iii. Respondent is using the disputed domain name to create confusion with Complainant’s real estate business while using pay-per-click advertising on the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant argues that it has common law rights in the E & B Brewery Lofts mark. The Panel notes that under the UDRP, a complainant may prove rights in a mark under the common law, thereby rendering a trademark registration unnecessary. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant contends that Complainant is a multifamily housing property offering residential lofts for lease in Detroit, Michigan. Complainant contends that its building site previously housed the E & B Brewing Company from 1891–1969. Complainant further asserts that Complainant has owned the property since 1996 and has operated under the name E & B Brewery Lofts since 2002. Complainant’s evidence shows a registration with the Michigan Department of Labor & Economic Growth Bureau of Commercial Services of the Amended Articles of Incorporation for the E AND B BREWERY LOFTS, INC company. Complainant argues that it has used the E & B Brewery LofTS mark extensively in advertising, press, marketing, social media and with customers since that time. Complainant also asserts that it previously owned the domain name at issue but that the domain name registration inadvertently lapsed. Therefore, Complainant asserts that it has common law rights in the E & B BREWERY LOFTS mark. After reviewing Complainant’s evidence on record the Panel finds that Complainant has presented sufficient evidence to prove that it has rights in the E & B BREWERY LOFTS mark under Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).
Complainant claims that Respondent’s <e-bbrewerylofts.com> domain name is “undeniably similar and nearly identical to the Complainant’s common law mark.” Complainant argues that it has rights in the E & B BREWERY LOFTS mark. The disputed domain name replaces the ampersand symbol of the mark with a hyphen and removes the spaces from the mark. The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The Panel finds Respondent’s <e-bbrewerylofts.com> domain name is confusingly similar to Complainant’s common law mark under Policy ¶ 4(a)(i). See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); 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.
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 contends that Respondent has never been known by the disputed domain name or Complainant’s mark. The disputed domain name’s WHOIS information identifies “Titanium Consulting” as the registrant. The Panel determines Respondent is not commonly known by the disputed 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).
Complainant notes that Respondent is using the disputed domain name to display Complainant’s information and photographs as well as host a “blog” talking about Complainant’s building. Complainant contends that Respondent’s website utilizes pay-per-click advertising on the website, indicating an intent for commercial gain. Respondent’s domain name appears to contain links through random words such as “reservations,” “kitchens,” and “cameras.” The Panel finds Respondent is not using the disputed domain name 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). 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).
Further, the Panel notes that Complainant asserts that it had previously owned the disputed domain name and used it for its business operations, and the Panel has taken this into account in determining that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name).
Complainant has proven this element.
Complainant argues that Respondent has attempted to sell the disputed domain name back to Complainant for $7,000. Complainant’s evidence shows a string of e-mails between the parties, with Complainant stating that it would like to get the domain name back into its possession and Respondent offering to transfer the domain name for $7,000 and also offering to host the website. Complainant contends that Respondent acquired the domain name for $125. The Panel finds Respondent’s offer to transfer the disputed domain name to Complainant for $7,000 is evidence of bad faith registration and use under Policy ¶ 4(b)(i) as an offer to sell the disputed domain name to Complainant for an amount in excess of registration costs. See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).
Complainant also argues that Respondent is using the disputed domain name to attract Internet users to its website where Respondent provides information about Complainant’s real estate leasing. Complainant notes that the information provided contains “info links” to third parties. As noted above, such links are contained in random words throughout the text of the website. Complainant contends that Respondent profits from links contained on the website. The Panel finds Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by registering and using the domain name to create confusion as to Complainant’s affiliation with the domain name for commercial gain. See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).
Finally, Complainant argues that Respondent’s bad faith can be shown by Respondent’s registration of the domain name after it inadvertently lapsed and fell from Complainant’s control. The Panel has taken Complainant’s prior ownership of the disputed domain name into account in its analysis of bad faith under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <e-bbrewerylofts.com> domain name be TRANSFERRED from Respondent to Complainant.
/S/ Karl V. Fink
Honorable Karl V. Fink (Ret)., Panelist
Dated: September 5, 2012
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