Plimoth Plantation, Inc. v. Candido Bretto
Claim Number: FA1208001456696
Complainant is Plimoth Plantation, Inc. (“Complainant”), represented by Robert M. O’Connell of Goodwin Procter LLP, Massachusetts, USA. Respondent is Candido Bretto (“Respondent”), represented by James P. Connors, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plymouthplantation.com>, 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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2012; the National Arbitration Forum received payment on August 3, 2012.
On August 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <plymouthplantation.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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@plymouthplantation.com. Also on August 13, 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.
A timely Response was received and determined to be complete on September 4, 2012.
On September 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
An Additional Submission was received from Complainant on Sept. 10, 2012 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on Sept. 17, 2012 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
C. Additional Submissions
Complainant in his additional submissions has, inter alia, contended the following:
Respondent, in his additional submissions has, inter alia¸ contended the following:
There is no dispute on the record that the Complainant has been continuously and actively using the mark PLIMOTH PLANTATION since 1949, but has registered the same on April 10, 2007 with the USPTO Reg. No. 3,226,980. Complainant has registered its domain name <plimoth.org> in 1996 for its live museum business. The Panel finds that disputed domain name of the Respondent is confusingly similar to Complainant’s mark PLIMOTH PLANTATION.
The Respondent has not disputed the fact that the Complainant is the user of the mark PLIMOTH PLANTATION since 1949 or that the Complainant had registered its domain name <plimoth.org> in 1996, i.e. prior to respondent’s registration of the disputed domain name in June 1999. All the rights in the PLIMOTH PLANTATION mark and disputed domain name vests with the Complainant and even if the Complainant has preferred a complaint after 13 years after its letter to respondent regarding the disputed domain name <plymouthplantation.com>, even then it does not give any right to the respondent to use the disputed domain name. It has been contended by the complainant that doctrine of laches does not apply as a defense under the Policy.
The Panel finds that the disputed domain name - <plymouthplantation.com> registered by the Respondent is confusingly similar to the trademark “PLIMOTH PLANTATION” of the Complainant and the disputed domain name is being used in bad faith.
The Panel also finds that domain name, <plymouthplantation.com> deserves to be transferred to the Complainant and the Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
Doctrine of Laches
The Panel observes that the Respondent argues that Complainant is estopped from presenting arguments before this Tribunal because of the Doctrine of Laches. Respondent contends that Complainant had contacted Respondent in 1999 to attempt to wrest control of the disputed domain name from Respondent at that time and then waited a full 13 years before filing the present dispute. The Panel also observes that the Complainant has contended in its Complaint that Respondent has relied to its detriment on Complainant’s delay in filing an action in the present disputed domain name. The Panel observes that the doctrine of laches does not apply as a defense and therefore feels that the Respondent’s contentions on the ground of laches deserve to be disregarded. The Panel finds the following decisions to be relevant in this regard : –
(i) Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) – holding that “The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”
(ii) Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) - holding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value.
(iii) Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) – holding that the “Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”
The Panel, therefore, finds that acceptance of the contentions of Respondent, would not only be in contravention of the elements of the Policy, but would also be against the principle that doctrine of laches does not apply as a defense.
Complainant claims to have registered the mark “PLIMOTH PLANTATION” with the USPTO (e.g., Reg. No. 3,226,980 filed November 1, 2005 registered April 10, 2007). Complainant provides multiple trademark certificates issued by the USPTO to support its claim. The Panel finds that Complainant has established its rights in the PLIMOTH PLANTATION mark pursuant to Policy 4(a)(i). In this regard, reliance has been placed upon the decisions in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) - holding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO.
Complainant also claims that it has been continuously and actively using the PLIMOTH PLANTATION mark since 1949. The Panel notices that the first use in commerce date on the trademark certificate provided is May 15, 1949 See Complainant’s Exhibit C. Complainant states that it registered the domain name <plimoth.org> in 1996 (i.e. prior to registration of the disputed domain name by the respondent) to support its live museum business. The Panel, therefore, concludes that Complainant has established common law rights in the PLIMOTH PLANTATION mark under Policy 4(a)(i), dating back to 1949. The Panel, in this regard, relies upon the decision of this Forum in Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Nat. Arb. Forum Jan. 17, 2007) – holding that “Complainant’s…registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s rights in the mark.”
The Panel does not find any merit in the contention of the respondent that the word PLIMOTH PLANTATION is a descriptive word regarding geographical location and the complainant knowingly made false representation to the USPTO. The fact remains that the USPTO registration in favour of the complainant continues to remain in existence. In this view of the matter it would not be open to the respondent to attempt to question the validity of the grant of registration by USPTO in favour of the complainant.
The Panel also finds merit in the contention of the complainant regarding confusing similarity. It is to be seen that the disputed domain name is comprised entirely of Complainant’s mark with three differences, Respondent has substituted the phonetic analog “y” in for the letter “i” in Complainant’s mark, added a “u,” and removed the space between terms. The Panel also observes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” Thus, the Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s PLIMOTH PLANTATION mark, and therefore, concludes that the two are confusingly similar for the purposes of Policy 4(a)(i). In this regard, the Panel considers the following decisions to be relevant –
(i) Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) - holding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy 4(a)(i);
(ii) Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) – holding that the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”;
(iii) Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) - holding that the “vallpak.com” domain name to be confusingly similar to the VALPAK mark under Policy 4(a)(i).
Therefore, the Panel finds that the Respondent’s <plymouthplantation.com> domain name is confusingly similar to Complainant’s registered mark PLIMOTH PLANTATION as well as domain name <plimoth.org> and pursuant to Policy 4(a)(i).
The Panel is reminded that 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. In this regard, the following decisions of this Forum are relevant –
(i) 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;
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that “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 asserts that Respondent is not commonly known by the disputed domain name. The Panel notices that Respondent did not claim to be commonly known by the disputed domain name in the Response. The Panel also notices that the WHOIS information identifies the registrant of the disputed domain name as “Candido Bretto.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii). In this regard, it relies upon the following decision of this Forum in Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) - concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response.
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant submits that Respondent resolves the disputed domain name to a website offering links to various third-party websites, as well as Complainant’s own website. Complainant annexed as Exhibit D, a printout from the resolving website to support its assertion. The Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy 4(c)(iii). In this regard reliance has been placed on the decision of this Forum in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) - holding 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 argues that Respondent’s registration of the disputed domain name in its current form constitutes typosquatting. Complainant states that Respondent’s insertion of a “y” in place of “i” should be and the addition of a “u” is a simple misspelling of Complainant’s PLIMOTH PLANTATION mark, and as such is a classic example of typosquatting. The Panel finds that Respondent has engaged itself in typosquatting, and the Panel concludes that Respondent’s conduct demonstrates a lack of rights or legitimate interests in the disputed domain name under Policy 4(a)(ii). The Panel, in this regard, relies upon the decision of this Forum in LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) - holding that the <ltdcommadities.com>,<ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”.
Hence, the Panel holds that Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy 4(a)(ii).
Complainant alleges that Respondent’s disputed domain name is causing confusion among consumers seeking out information about Complainant’s business online. Complainant states that Respondent is also gaining commercially from the disputed domain name. Complainant also states that Respondent resolves the disputed domain name to a website offering links to various third-party websites, as well as Complainant’s own website.
The Panel finds that Respondent is purposely confusing Internet users into using the links Respondent’s offers from the resolving website and then profiting from that confusion, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy 4(b)(iv). Reliance is being placed on the decision of this Forum in - Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) - holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy 4(b)(iv).
The Panel observes that Complainant also alleges that Respondent’s registration of the disputed domain name in its current format constitutes typosquatting. The Panel concludes that Respondent engaged in typosquatting by composing the disputed domain name in its current form, the Panel finds that Respondent’s typosquatting of the disputed domain name supports a finding of bad faith pursuant to Policy 4(a)(iii). The Panel, in this regard, relies upon the decision of this Forum in - Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) holding that “By engaging in typosquatting, respondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy 4(a)(iii).”
The Panel also observes that the respondent has not disputed the fact that the Complainant is the user of the mark PLIMOTH PLANTATION since 1949 or that the Complainant had registered its domain name “plimoth.org” in 1996, i.e. prior to respondent’s registration of the disputed domain name in June 1999. It is reiterated and re-emphasised that there also does not exist any dispute with the contention of the Complainant that it has also been granted USPTO registration which continues to remain in operation. All the rights in the mark PLIMOTH PLANTATION and the domain name <plimoth.org> vests with the Complainant and even if the Complainant is assumed to have preferred a complaint after 13 years after its letter to respondent regarding the disputed domain name <plymouthplantation.com>, even then it does not give any right to the respondent to use or get registered the disputed domain name.
The Panel, therefore, finds that the Respondent has registered and is using the disputed domain name 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 <plymouthplantation.com> domain name be TRANSFERRED from Respondent to Complainant.
(MANINDER SINGH)
Panelist
Dated: September 15, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page