national arbitration forum

 

DECISION

 

Salt Life Holdings, LLC v. Craig Long

Claim Number: FA1209001463428

 

PARTIES

Complainant is Salt Life Holdings, LLC (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA.  Respondent is Craig Long (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <saltlifeproperty.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2012; the National Arbitration Forum received payment on September 20, 2012.

 

On September 26, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <saltlifeproperty.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 September 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@saltlifeproperty.com.  Also on September 26, 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 October 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 issues 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant has used the SALT LIFE mark to identify a wide variety of goods and services since 2003.

2.    Complainant has registered the SALT LIFE mark with the United States Patent and Trademark Office (“USPTO”), including the following:

Reg. No. 2,959,429 registered June 7, 2005;

Reg. No. 3,001,343 registered September 27, 2005;

Reg. No. 3,843,123 registered August 21, 2010; &

Reg. No. 4,172,126 registered July 10, 2012.

3.    Complainant uses the SALT LIFE mark to identify its goods and services in a variety of communications media, including on the <saltlife.com> and <saltlifefoodshack.com> websites.

4.    The <saltlifeproperty.com> domain name is confusingly similar to Complainant’s SALT LIFE mark as it uses the mark in full, adding only the generic term “property” and the generic top-level domain (“gTLD”) “.com.”

5.    Complainant has never provided authorization of any kind, including a license, which would permit Respondent to use the SALT LIFE mark,

6.    Respondent is not commonly known by the disputed domain name as the name “Craig Long” is not anything like the disputed domain name.

7.    Respondent is using the disputed domain name to link to Respondent’s real estate agent website at <clong.kwrealty.com>.

8.    Respondent has no rights and legitimate interests in the disputed domain name.

9.    Respondent ‘s adoption and use of the SALT LIFE mark in a domain name to link to his real estate website for the purpose of trading on Complainant’s well-known SALT LIFE name and diverting Complainant’s customers to Respondent’s website, which demonstrates bad faith.

10. Respondent had constructive knowledge of Complainant’s rights in the SALT LIFE mark prior to registering the disputed domain name, which shows bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant alleges that it has registered the SALT LIFE mark with the USPTO, including the following:

Reg. No. 2,959,429 registered June 7, 2005;

Reg. No. 3,001,343 registered September 27, 2005;

Reg. No. 3,843,123 registered August 21, 2010; &

Reg. No. 4,172,126 registered July 10, 2012.

The Panel finds that these USPTO trademark registrations conclusively demonstrate that Complainant possesses rights in the SALT LIFE mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). 

 

Complainant asserts that the <saltlifeproperty.com> domain name is confusingly similar to Complainant’s SALT LIFE mark as it uses the mark in full, adding only the generic term “property” and the gTLD “.com.” The Panel notes that the disputed domain name also eliminates the space between the terms in the mark. Prior panels have concluded that adding a generic term, removing a space, or attaching a gTLD do not affect the confusing similarity between a disputed domain name and a mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding 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)); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel therefore determines that Respondent’s <saltlifeproperty.com> domain name is confusingly similar to Complainant’s SALT LIFE mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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 asserts that Respondent is not commonly known by the disputed domain name as Respondent’s name, “Craig Long,” bears no similarity in sound, meaning or appearance to the disputed domain name. Further, Complainant contends that it has never provided authorization of any kind, including a license, which would permit Respondent to use the SALT LIFE mark. Based on these arguments, the Panel holds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii) as it is not commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant argues, and provides a corroborating screenshot, that Respondent uses the <saltlifeproperty.com> domain name to link to Respondent’s own real estate website at the <clong.kwrealty.com> domain name. The Panel determines that using a disputed domain name containing Complainant’s mark to redirect to Respondent’s unrelated website does not comport with the Policy ¶ 4(c)(i) and ¶ 4(c)(iii) requirements for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s registration and use of the disputed domain name demonstrates bad faith under Policy ¶ 4(b)(iv). Complainant contends that bad faith is shown where a respondent uses a domain name to divert, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant asserts that here Respondent is using the disputed domain name to divert Internet users to the website that he uses to promote his own real estate services. Complainant argues that, based on the fame of Complainant’s mark, Respondent’s adoption and use of the SALT LIFE mark in a domain name to link to his real estate website is for the purpose of trading on Complainant’s well-known mark and diverting Complainant’s customers to Respondent’s website, which demonstrates bad faith. The Panel agrees and finds the that Respondent’s use of the disputed domain name is attempting to attract consumers and create confusion for its own profit in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

Complainant also alleges that Respondent had constructive knowledge of Complainant’s rights in the SALT LIFE mark prior to registering the disputed domain name due to the USPTO trademark registrations. Past panels have found that constructive knowledge is not sufficient to support a finding of bad faith, however. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2012) (determining that constructive notice will usually not support a finding of bad faith). The Panel finds that Respondent had actual notice of Complainant’s rights, and holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).

 

Complainant has proven this element.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <saltlifeproperty.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  October 25, 2012

 

 

 

 

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