Ocean Edge Resort Limited Partnership v. Toby Coppel
Claim Number: FA1303001491461
Complainant is Ocean Edge Resort Limited Partnership (“Complainant”), represented by Lawrence S. Delaney of Demeo LLP, Massachusetts, USA. Respondent is Toby Coppel (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <realoceanedge.com> and <therealoceanedgeresort.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2013; the National Arbitration Forum received payment on March 25, 2013.
On March 25, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <realoceanedge.com> and <therealoceanedgeresort.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 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@realoceanedge.com, postmaster@therealoceanedgeresort.com. Also on March 28, 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 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <realoceanedge.com> and <therealoceanedgeresort.com> domain names, the domain names at issue, is confusingly similar to Complainant’s OCEAN EDGE mark.
2. Respondent does not have any rights or legitimate interests in the domain names at at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the OCEAN EDGE mark (Reg. No. 4,281,731 registered January 29, 2013). The mark is used in connection with a resort hotel, condominium, and golf facility in Brewster, Massachusetts, and has been so used since 1986. The <realoceanedge.com> and <therealoceanedgeresort.com> domain names, registered on February 5, 2012, are confusingly similar to the OCEAN EDGE mark. Respondent adds to the mark one or both of the generic terms “the” and “real” as well as the generic top-level domain (“gTLD”) “.com.” Such combinations fail to distinguish the disputed domain names from Complainant’s mark. Respondent is not commonly known by “Ocean Edge,” “Real Ocean Edge,” or “The Real Ocean Edge Resort.” Complainant has not authorized or permitted Respondent to use the OCEAN EDGE mark. Respondent has no acquired trademark or service mark rights in Complainant’s OCEAN EDGE mark. The <realoceanedge.com> domain name resolves to a gripe website, the same website that Respondent hosted using domain names that were ordered to be transferred to Complainant after a finding of bad faith in a previous UDRP dispute. See Ocean Edge Resort Limited Partnership v. Toby Coppel, FA 1482989 (Nat. Arb. Forum Feb. 28, 2013). The <therealoceanedgeresort.com> domain name resolves to a parked website, threatened by Respondent as a “reserve” website to transfer the gripe website content to if the <realoceanedge.com> domain name is ordered to be transferred to Complainant. The inclusion of the disclaimer “unofficial site” on the resolving website is insubstantial.
This is the second UDRP arbitration between Complainant and Respondent. See Ocean Edge Resort Limited Partnership v. Toby Coppel, FA 1482989 (Nat. Arb. Forum Feb. 28, 2013). In the first dispute, Respondent was found to have acted in bad faith. Following this proceeding and the transfer of the original domain name, Respondent immediately registered the disputed domain names, one to display the complaint content and the other to be used as a “reserve” website in case the former is ordered to be transferred. Respondent demands $19,636.37 transfer of these domain names to Complainant, which amount is far in excess of any possible out-of-pocket expenses incurred by Respondent.
Respondent has adopted a disputed domain name that incorporates, and is confusingly similar to, Complainant’s mark to tarnish and dilute the OCEAN EDGE mark. Respondent has incorporated the OCEAN EDGE mark in the disputed domain names to misleadingly divert Complainant’s customers to Respondent’s website and then to competitors of Complainant. Respondent is attempting to coercively and misleadingly profit from the <realoceanedge.com> and <therealoceanedgeresort.com> domain names.
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 has rights in the OCEAN EDGE mark under Policy ¶ 4(a)(i) through its registration with the USPTO (Reg. No. 4,281,731 registered January 29, 2013). Evidence of a registration with a recognized trademark organization is sufficient to establish rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel thus finds that Complainant has rights in the OCEAN EDGE mark under Policy ¶ 4(a)(i).
The <realoceanedge.com> and <therealoceanedgeresort.com> domain names are confusingly similar to Complainant’s OCEAN EDGE mark. Respondent adds one or both of the generic terms “the” and “real” as well as the generic top-level domain (“gTLD”) “.com” to the mark. Such combinations fail to distinguish the disputed domain names from Complainant’s mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel finds that Respondent’s <realoceanedge.com> and <therealoceanedgeresort.com> domain names are confusingly similar to Complainant’s OCEAN EDGE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by “Ocean Edge,” “Real Ocean Edge,” or “The Real Ocean Edge Resort.” Complainant has not authorized or permitted Respondent to use the OCEAN EDGE mark. Respondent has not acquired trademark or service mark rights in Complainant’s OCEAN EDGE mark. The WHOIS information for the disputed domain names indicates that “Toby Coppel” is the Registrant for both disputed domain names. When a respondent is not authorized by a complainant to use its mark, and it is not commonly known by the confusingly similar disputed domain name, it thus has no rights or interests in 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). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by them under Policy ¶ 4(c)(ii).
Respondent also has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use under Policies ¶¶ 4(c)(i) and (iii). The <realoceanedge.com> domain name resolves to a gripe website, which is the same website that Respondent hosted at domain names that were ordered to be transferred to Complainant after a finding of bad faith in a previous UDRP dispute. See Ocean Edge Resort Limited Partnership v. Toby Coppel, FA 1482989 (Nat. Arb. Forum Feb. 28, 2013). This website features unfavorable reviews of Complainant’s business and includes headings such as, “The Not-so-delightful Ocean Terrace Restaurant” and “Please Stay Away!!!!!!” The inclusion of the disclaimer “unofficial site” on the resolving website is insubstantial. Complainant also argues that the <therealoceanedgeresort.com> domain name resolves to a parked website, threatened as a “reserve” website for the reposting of the gripe website content if the <realoceanedge.com> domain name is ordered to be transferred to Complainant. The website resolving from the <therealoceanedgeresort.com> domain name features links such as, “Cape Cod Family Resorts,” “Cape Cod Luxury Property,” and “A Little Inn on Cape Cod.” The Panel presumes that Respondent is receiving click through fees from the links present on its resolving website. The Panel notes that the links present on the website resolving from the <therealoceanedgeresort.com> domain name are competing hyperlinks. Using a confusingly similar domain name to resolve to a parked website featuring competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Using a confusingly similar domain name to resolve to a website featuring gripes and complaints about a complainant’s business is not a legitimate use of a disputed domain name. Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Bad faith is evident here from the fact that Respondent demands $19,636.37 for transfer of these domain names to Complainant, and this amount is far in excess of any possible out-of-pocket expenses incurred by Respondent. Respondent’s repeated attempts to extract funds from Complainant—both in this proceeding and in the prior UDRP decision involving these parties—evinces bad faith use and registration under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
As previously noted, this is the second UDRP arbitration between Complainant and Respondent. See Ocean Edge Resort Limited Partnership v. Toby Coppel, FA 1482989 (Nat. Arb. Forum Feb. 28, 2013). In the first dispute, Respondent was found to have acted in bad faith. Following this former case, and the transfer of the original domain name, Respondent immediately registered the disputed domain names, one to display the complaint content and the other to be used as a “reserve” website in case the former is ordered to be transferred. When Respondent has been found to have engaged in bad faith use and registration in regards to Complainant’s marks—in a matter of weeks before this claim was filed—it is clear that Respondent had a Policy ¶ 4(b)(ii) bad faith intent in registering and using these new disputed domain names. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith where (1) the respondent knew or should have known of the complainant’s SONY marks and (2) the respondent registered multiple domain names which infringed upon the complainant’s mark); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
The domain names at issue here were used to disrupt Complainant’s business by serving as gripe sites, the content of which is critical of Complainant’s services. Respondent’s use of the domain names to host gripe sites rises to the level of disrupting the business of Complainant. Accordingly, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”).
Additionally, Respondent is attempting to coercively and misleadingly profit from the <realoceanedge.com> and <therealoceanedgeresort.com> domain names. Using a confusingly similar domain name to attract and confuse unsuspecting Internet users to a website using domain names that are confusingly similar to a complainants mark and thus commercially profit is bad faith use and registration. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <realoceanedge.com> and <therealoceanedgeresort.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 27, 2013
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