Georgia Boot LLC v. Modern Limited -
Cayman Web Development
Claim
Number: FA0303000149173
Complainant is
Georgia Boot LLC, Franklin, TN, USA (“Complainant”) represented
by Christopher A. Sloan, of Boult Cummings Conners & Berry PLC.
Respondent is Modern Limited - Cayman Web Development, George Town,
Grand Kayman, KAYMAN ISLANDS (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <georgiaboots.com>, registered with Tucows,
Inc.
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. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 11, 2003; the Forum received a hard copy of the
Complaint on March 13, 2003.
On
March 18, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <georgiaboots.com> is registered with Tucows, Inc. and that
Respondent is the current registrant of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 18, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 7, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@georgiaboots.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 17. 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents submitted
and in accordance with the ICANN Policy, ICANN Rules, the 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 makes the following assertions:
1. Respondent’s <georgiaboots.com>
domain name is confusingly similar to Complainant’s GEORGIA BOOT mark.
2. Respondent does not have any rights or
legitimate interests in the <georgiaboots.com> domain name.
3. Respondent registered and used the <georgiaboots.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Georgia Boot LLC, is the holder of U.S. Patent and Trademark Office (“USPTO”)
Reg. No. 1,333,323 for GEORGIA BOOT, which denotes “Shoes, Boots, Sandals and
Footwear.” Complainant’s mark was registered on the USPTO’s Principal Register
on April 30, 1985, and the registration indicates first use of the mark in
commerce occurred in 1968.
Respondent,
Modern Limited – Cayman Web Development, registered the <georgiaboots.com>
domain name on October 4, 2001. Complainant’s investigation of Respondent’s
use of the subject domain name indicates that Respondent’s only apparent use is
in the form of a heading placed on a basic portal website. Respondent’s portal
website contains numerous hyperlinks to other unrelated websites. Complainant’s
investigation of Respondent reveals that Respondent has registered over 2,200
domain names and is in the business of acquiring and selling domain name
registrations. Many of the domain names registered to Respondent are identical
or confusingly similar to valuable, registered and famous trademarks (e.g.,
<toshibalaptop.com>, <yamahadirtbike.com>,
<yamahadirtbikes.com>, <nelson-mandela.com> and
<theweatherchannel.com>).
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."
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.
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.
Complainant has
established rights in the GEORGIA BOOT mark by registering the mark with the
USPTO, and by continuous use of the mark in commerce since 1968. See The
Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning”).
Respondent’s <georgiaboots.com>
domain name is confusingly similar to Complainant’s GEORGIA BOOT mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety, and
only deviates with the addition of the letter “s,” thereby displaying the
plural version of Complainant’s mark. Internet users are likely to confuse the
plural variation of a singular term in a domain name; therefore, Respondent’s
domain name is rendered confusingly similar to Complainant’s mark. See Nat’l Geographic Soc. v. Stoneybrook Inv.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to Complainant’s
“National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream
Pie’ does not prevent the likelihood of confusion caused by the use of the
remaining identical mark. The domain name <creampies.com> is similar in
sound, appearance, and connotation”).
Additionally,
because spaces are impermissible in domain names and top-level domains, such as
“.com,” are required, their presence or absence is inconsequential when
conducting an analysis under Policy ¶ 4(a)(i). See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent did
not submit a Response in this proceeding. Therefore, Complainant’s assertions,
and the inferences drawn from those assertions, are unrefuted. Respondent’s
failure to contest Complainant’s prima facie case permits the Panel to
accept all reasonable inferences made in the Complaint as true, unless clearly
contradicted by the evidence. Further, Respondent has failed to produce any set
of circumstances that would support a finding of rights in the <georgiaboots.com>
domain name. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of Complainant to be deemed true); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14,
2000) (drawing two inferences based on Respondent’s failure to respond: (1)
Respondent does not deny the facts asserted by Complainant, and (2) Respondent
does not deny conclusions which Complainant asserts can be drawn from the
facts).
Complainant’s
submission indicates that Respondent’s domain name resolves to a “basic portal
website,” that makes no reference to the <georgiaboots.com> domain
name except as an introductory heading. Although Respondent has held the domain
name registration since October 2001, it has failed to enunciate a legitimate
purpose for the domain name, or develop a website that suggests rights in the
domain name. Respondent’s website, which is blank but for hyperlinks to other
websites, is not sufficient to establish rights or legitimate interests for
purposes of ¶ 4(a)(ii) of the Policy. Further, even if Respondent’s activities
were seen as significant enough to constitute “use” of the domain name,
diverting Internet users to a website by the unauthorized use of Complainant’s
mark is not a legitimate use. See Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for
links to other websites, is not a legitimate use of the domain names); see
also Ritz-Carlton Hotel v. Club Car
Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any
notice of the dispute, Respondent had not used the domain names in connection
with any type of bona fide offering of goods and services); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”).
No evidence
before the Panel indicates that Respondent is commonly known by the
“georgiaboots” second-level domain, or the domain name itself. Uncontested
circumstances suggest that Respondent opportunistically registered the subject
domain name because of its value to Complainant and its recognition among the
consuming public. Respondent’s corporate identity is reflected in the WHOIS
records as Modern Limited – Cayman Web Development. Therefore, Respondent fails
to establish rights in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on
Complainant’s research, the validity of which is uncontested, Respondent has
registered over 2,200 domain names and is in the business of acquiring and
selling domain name registrations. As stated, many of Respondent’s domain names
appear to be identical or confusingly similar to valuable, registered and
famous trademarks, examples of which are provided in the Findings. Respondent
has failed to advance any conceivable reason for registering so many well-known
trademarks and personal names as domain names. Therefore, the Panel is
permitted to accept Complainant’s contentions as true, namely, that Respondent
hopes to profit from the resale of its infringing domain name registrations to
the owners of the trademarks. Thus, Respondent’s registration and use of the <georgiaboots.com>
domain name, with the intent to profit from the goodwill attributable to
Complainant’s registered mark, constitutes bad faith under Policy ¶ 4(b)(i). See
Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat.
Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name]
bad faith is some accompanying evidence that the domain name was registered
because of its value that is in some way dependent on the trademark of another,
and then an offer to sell it to the trademark owner or a competitor of the
trademark owner"); see also Educ. Testing Serv. v. TOEFL,
D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined
with no legitimate use of the domain name constitutes registration and use in
bad faith); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <georgiaboots.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
April 21, 2003
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