BRG Partners, LP v. Wild Escape Theme Park
Claim Number: FA1305001502487
Complainant is BRG Partners, LP (“Complainant”), represented by Cathryn Berryman of Winstead, P.C., Texas, USA. Respondent is Wild Escape Theme Park (“Respondent”), represented by Brian A. Hall of Traverse Legal, PLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aspenheights.com>, registered with GODADDY.COM, LLC.
The undersigned Daniel B. Banks, Jr., as Panel Chair, certifies that he and the panel have acted independently and impartially and to the best of his knowledge, we have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2013; the National Arbitration Forum received payment on May 31, 2013.
On May 31, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <aspenheights.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 June 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@aspenheights.com. Also on June 4, 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.
A timely Response was received and determined to be complete on June 21, 2013.
Complainant submitted an Additional Submission that was received and determined to be compliant on June 26, 2013.
Respondent submitted an Additional Submission that was received and determined to be compliant on July 1, 2013
On July 1, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn M. Johnson, Richard W. Hill and Daniel B. Banks, Jr., as Panelists.
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
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
Complainant holds United States Patent and Trademark Office (“USPTO”) rights in the ASPEN HEIGHTS mark, registered for purposes of leasing townhomes, duplexes, and residential dwellings (Reg. No. 4,038,675 filed Mar. 18, 2011, registered Oct. 11, 2011).
Complainant has used the ASPEN HEIGHTS mark continuously in trade since November 1, 2007, in connection with real estate related services. Complainant has used the ASPEN HEIGHTS mark for marketing purposes since 2006, through social media such as Facebook, Twitter, Instagram, YouTube, Google+ and other websites. Complainant has operated and maintained the <myaspenheights.com> domain name since early 2009.
Complainant operates student housing, including luxury apartment complexes in nine states, in close proximity with nationally recognized universities.
Respondent registered the <aspenheights.com> domain name, which incorporates the entire ASPEN HEIGHTS mark and is confusingly similar to Complainant’s mark.
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
Respondent is not commonly known by the <aspenheights.com> domain name or any variation thereof. Respondent is not associated with Complainant, and is not allowed to use Complainant’s marks. Respondent has not filed paperwork illustrating that it has a business known by the domain name, as shown by records in the State of West Virginia and the County of Ohio Records Office in West Virginia. See Complainant’s Exhibits 7 and 8.
Respondent is using the <aspenheights.com> domain name to resolve to the <wildescape.com> domain name, wherein Respondent promotes a defunct business venture. Respondent’s defunct business venture involves using real estate to make an amusement park. Because Complainant’s mark is used in connection with real estate, there can be no legitimate use.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
Respondent registered this domain name for its value if sold to Complainant or Complainant’s competitors.
Respondent registered the domain name to divert Internet users who seek out information related to legitimate ASPEN HEIGHTS properties. Respondent uses the <aspenheights.com> domain name in a scheme to accrue investment funds for a defunct amusement park development.
Respondent is engaging in fraudulent behavior by using this domain name to request funds for a now non-existent real estate development.
Respondent had knowledge of Complainant’s mark through Respondent’s use of the mark in nine southern US states. A simple Internet search would have revealed Complainant’s use of the mark.
B. Respondent
Policy ¶ 4(a)(i): Complainant Fails to Show Prior Rights
Complainant claims its rights began in 2007, which is later than Respondent’s own rights through its business plan outlined in 2005. Complainant’s rights are limited to housing services for college students. Complainant does not use the mark for retail services or the operation of theme parks. Complainant’s <myaspenheights.com> domain name sat inactive until 2009. All of the evidence provided by Complainant to illustrate rights in the ASPEN HEIGHTS mark is recent and does not go as far back as the alleged 2006 first use date. Complainant may have started using the domain name in 2006, but at no point was the use recognizable so as to create common law rights prior to the registration of the <aspenheights.com> domain name.
Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests
Respondent has been commonly known by the “Aspen Heights Resort & Shopping” business, ASPEN HEIGHTS for short.
Respondent is working with the Ohio County Development Authority to develop his “Crystal Mountain West Virginia, Wild Escape” theme park using the ASPEN HEIGHTS mark in the amusement park’s adjacent resort. Respondent has been in the process of cleaning up the land as it was the site of an old mine, and there have been years of inspections and environmental work. Respondent uses the <aspenheights.com> domain name to redirect Internet users to the corresponding website that contains information about the general development of the entire theme park and resort. Respondent has incorporated Crystal Mountain West Virginia, L.L.C. as the business under which the development will occur.
Respondent’s registration of the <aspenheights.com> domain name predates the earliest trademark registration held by Complainant. Given the weakness of Complainant’s common law rights, the domain name predates Complainant’s
mark.
Policy ¶ 4(a)(iii) Respondent Lacks Bad Faith
Complainant’s counsel sent several communications requesting that Respondent sell the domain name, including a notice of interest. Respondent did not respond to any of these requests as it did not want to sell the domain name.
Complainant’s argument that Respondent seeks to confuse Internet users in bad faith is without merit. Complainant’s business is limited to student housing in the locales of nine college located in the southern United States. Respondent is using the domain name to promote a future amusement park that will operate exclusively within the confines of Wheeling, West Virginia. There simply cannot be any real confusion amongst Internet users.
Respondent registered the domain name in furtherance of its legitimate business goal in the Aspen Heights Resort. There can be no bad faith at the time of registration when Respondent, ignorant of any purported ASPEN HEIGHTS mark used by Complainant, registers a domain name to promote its amusement park development. Respondent’s theme park and resort are intended to appeal to all persons, and cannot be construed—as Complainant attempts—as being a scheme to get college students to live in a resort.
Reverse Domain Name Hijacking
Complainant waited five years after the <aspenheights.com> domain name’s registration to file this weak case. Complainant has not provided the evidence necessary for a UDRP finding of bad faith or prior trademark rights.
C. Additional Submissions
Complainant’s Additional Submission: Reverse Domain Name Hijacking
Respondent cannot establish reverse domain name hijacking by merely arguing that Complainant has a weak claim. Respondent has to prove that Complainant knew or should have known that it could not prove an essential element under the UDRP, or that Respondent used the domain name in a bona fide business and registered its mark before Complainant had rights. Respondent began using the domain name after Complainant’s first use in 2006 (the year the ASPEN HEIGHTS Facebook account was launched). Complainant concluded based upon the age of the content of the disputed domain name, and a lack of any response to its e-mails to Respondent, that the domain name had been abandoned. Thus this claim is not an instance in which reverse domain name hijacking can be inferred.
Respondent's Additional Submission
Complainant offers no new facts to its original Complaint. Instead, Complainant merely requests that the Panel not issue a finding of Reverse Domain Name Hijacking. This demonstrates that Complainant has submitted a "weak case." Complainant's inability to introduce any new information to refute Respondent's response is enough to warrant a finding of Reverse Domain Name Hijacking. Complainant does not have prior trademark rights but continues to pursue its claim while trying to justify its deficiencies. Complainant has not established any of the three requisite elements under the UDRP.
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.
FINDINGS
This Panel has determined that, while there may be legitimate discussion and dispute regarding the first two elements set out above, the panel is unanimous in its conclusion that the Complainant has failed to establish bad faith registration and use as required under the UDRP. Because the Complainant has failed to establish bad faith registration and use, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent alleges that Complainant’s counsel sent several communications requesting that Respondent sell the domain name, including a “notice of interest” as well as LinkedIn chat messages to Respondent and its counsel. Respondent claims that it did not respond to any of these requests, as it did not want to sell the domain name. The Panel notes that there is evidence suggesting that it was Complainant, not Respondent, who sought to see this domain name sold. See Respondent’s Exs. K–M. The Panel finds that there is no evidence to suggest the Respondent ever registered or used the domain name for purposes of reselling it. Complainant has failed to establish bad faith under the plain language of Policy ¶ 4(b)(i). Policy ¶ 4(b)(i) (requiring that the registrant/respondent have “acquired the domain name primarily for the purpose of reselling, renting, or otherwise transferring the domain name. . . ”) (emphasis added); see, e.g., Vokes Ltd. v. Domain Admin, FA 1416501 (Nat. Arb. Forum Jan. 12, 2012) (illustrating that the current registrant must have been the party making the offer to sell).
Respondent alleges that Complainant’s claim that Respondent seeks to confuse Internet users in bad faith is without merit. Respondent notes that Complainant’s business is limited to student housing operations in the vicinity of nine college located in the southern United States. Respondent claims on the other hand that it is using the <aspenheights.com> domain name to promote a future amusement park that will operate exclusively within the confines of Wheeling, West Virginia. Respondent argues that there simply cannot be any real confusion amongst Internet users that would be sufficient enough to confuse them. The Panel again notes that Respondent clearly promotes its future amusement park and resort through this domain name, while Complainant’s business focuses on the provision of housing to college students. See Complainant’s Exs. 5–6; accord Respondent’s Exs. C, H – I. Based on this record, there is not sufficient evidence to suggest that Respondent intended to register or use this domain name in a Policy ¶ 4(b)(iv) scheme to confuse Internet users into believing its amusement park and resort development was affiliated with Complainant. See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
Respondent likewise argues that it registered the domain name in furtherance of its legitimate business goal in the Aspen Heights Resort. Respondent asserts that there can be no bad faith at the time of registration when Respondent, unknowing of any purported ASPEN HEIGHTS mark used by Complainant, registered a domain name to promote its amusement park development. It is noted that Respondent registered the disputed domain name on July 9, 2008. Complainant's United States Patent and Trademark Office registration for the ASPEN HEIGHTS mark is dated March 18, 2011.
With regard to Complainant's assertion that is has established common law rights in the mark, the Panel does not agree. There is no evidence to support such a finding. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). No such evidence was provided by Complainant.
Respondent claims that its theme park and resort are intended to appeal to all persons, and cannot be construed—as Complainant attempts to—as being a scheme to get college students from the southern United States to live in a West Virginian resort while they attend college in a different state. The Panel agrees and finds that Respondent registered the domain name approximately five years ago in furtherance of its business plan. Therefore, Complainant has failed to prove bad faith at the point of domain name registration as required under Policy ¶ 4(a)(iii). See Greyson Int’l, Inc. v. Loncar, D2003-0805 (WIPO Dec. 3, 2003) (“Paragraph 4(a)(iii) is conjunctive [requiring that] both registration and use in bad faith must be proven. Numerous panels have applied this language strictly, to deny complaints [where the complainant fails to prove both].”).
Further, it is settled case law under the Policy that bad faith cannot be found,
absent special circumstances, when the disputed domain name was registered
prior to the trademark rights of the Complainant. See John Ode dba ODE and
ODE - Optimum Digital Enterprises v. Intership Limited, D2001-0074 (WIPO, May
1, 2001); Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO,
Sept. 23, 2001); PrintForBusiness B.V v. LBS Horticulture, D2001-1182
(WIPO, Dec. 21, 2001); Collective Media, Inc. v. CKV /
COLLECTIVEMEDIA.COM, D2008-0641 (WIPO, July 31, 2008).
For the reasons mentioned above, the Panel finds that the Complainant has not proven trademark rights that precede the registration of the disputed domain name. Thus the Complaint must be denied.
REVERSE DOMAIN NAME HIJACKING
Complainant argues that Respondent cannot establish reverse domain name hijacking because Complainant has a weak claim. Respondent has to prove that Complainant knew or should have known that it could not prove an essential element under the UDRP. The Panel finds that, based on the age of the content of the disputed domain name and Respondent's lack of response to e-mails, it was reasonable for Complainant to conclude that the domain name had been abandoned. Even though this Panel has found that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”);
Having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <aspenheights.com> domain name or REMAIN WITH RESPONDENT.
The Panel finds in favor of the Complainant on the claim of Reverse Domain Name Hijacking,
Daniel B. Banks, Jr., Panel Chair
Hon. Carolyn M. Johnson, Panelist
Richard W. Hill
Dated: July 9, 2013
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