SeaWorld Parks & Entertainment, LLC v. WEB MASTER INTERNET SERVICES PRIVATE LIMITED
Claim Number: FA1303001490146
Complainant is SeaWorld Parks & Entertainment, LLC (“Complainant”), represented by Kazuyo Morita of Holland & Hart LLP, Colorado, USA. Respondent is WEB MASTER INTERNET SERVICES PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buschgardenstampa.com>, registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2013; the National Arbitration Forum received payment on March 15, 2013.
On March 18, 2013, TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED confirmed by e-mail to the National Arbitration Forum that the <buschgardenstampa.com> domain name is registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED and that Respondent is the current registrant of the name. TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED has verified that Respondent is bound by the TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED 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 March 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2013 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@buschgardenstampa.com. Also on March 19, 2013, 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 April 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant’s is the exclusive licensee of multiple trademark registrations on file with the United States Patent and Trademark Office (“USPTO”) for the BUSCH GARDENS trademark (e.g., Reg. No. 925,302 registered Dec. 7, 1971).
The disputed domain name is confusingly similar to a mark in which Complainant has rights. The disputed domain name contains Complainant’s mark in its entirety, with only the addition of the geographic indicator “Tampa” (where Complainant has one of its major theme parks).
Respondent registered the <buschgardenstampa.com> domain name on November 27, 2005.
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant is not affiliated with Respondent and Respondent is not authorized to use the BUSCH GARDENS mark.
Respondent is not commonly known by the disputed domain name.
Respondent has not used the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name randomly redirects users to an unrelated third-party website on a rotating basis.
Respondent had actual or constructive notice of Complainant’s rights in the BUSCH GARDENS mark.
Respondent is attempting to capitalize on consumer confusion by diverting consumers who are seeking Complainant’s website to third-party sites for Respondent’s own commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant licenses USPTO trademark registrations for the BUSCH GARDENS mark.
As the exclusive licensee of the BUSCH GARDENS mark, Complainant has standing to initiate this Complaint.
Complainant acquired rights in its BUSCH GARDENS mark prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark in any capacity.
Respondent uses the at-issue domain name to address a page displaying monetized links to third party websites.
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.”).
Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.
Complainant’s USPTO trademark registrations establish that Complainant has rights in a mark under Policy ¶ 4(a)(i). It is not significant that Respondent may reside outside the jurisdiction of the trademark registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <buschgardenstampa.com> domain name is confusingly similar to Complainant’s BUSCH GARDENS mark. The at-issue domain name contains Complainant’s mark in its entirety, with the addition of the geographic indicator “Tampa.” Tampa is the location of one of Complainant’s theme parks. The addition of a geographic term is generally insufficient to distinguish a domain name from a complainant’s mark and in the instant case it enhances any confusion between the two. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Anheuser-Busch, LLC v. Lyle, FA 1428966 (NAF Mar. 20, 2012) (addition of geographic indicator “Atlanta” to complainant’s mark did not remove confusing similarity). Moreover, the addition of a top level domain name such as “.com,” as well as the deletion of the space between the words in Complainant’s mark, is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.”).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s licensed trademark in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information lists “WEB MASTER INTERNET SERVICES PRIVATE LIMITED” as the registrant of the disputed domain name and there is no evidence that tends to show that Respondent is otherwise commonly known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <buschgardenstampa.com> domain name for the purpose of Policy ¶ 4(c)(ii). 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).
Furthermore, Respondent is using the disputed domain name to redirect users to various unrelated third-party websites. These websites include a website that purportedly gives visitors a free electronics gift, a website for a music channel owned by Vice.com, a promotional website for Monster.com, and an inactive website containing a “server error” message with no content. Using the confusingly similar domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing and in light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present and there are non-Policy ¶4(b) circumstances which also show that Respondent has acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
By diverting Internet users to third party websites addressed via the pay-per-click links displayed on Respondent’s website, a website addressed by the confusingly similar <buschgardenstampa.com> domain name, Respondent is diverting customers for its own commercial gain by creating confusion as to the identity of the domain name’s owner. These circumstances demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Additionally, given the fame of Complainant’s BUSCH GARDENS mark and the fact that Respondent added the word “Tampa,” a location where one of Complainant’s parks is located, the Panel concludes that Respondent had actual knowledge of another’s rights in the BUSH GARDENS mark prior to registering the at-issue domain name. Knowingly registering another’s mark as a domain name further suggest bad faith pursuant to Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buschgardenstampa.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 18, 2013
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