The Garrett Group, LLC v. Victor Frankl
Claim Number: FA1307001507941
Complainant is The Garrett Group, LLC (“Complainant”), represented by Marty Weiss, California, USA. Respondent is Victor Frankl (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thegarrettgroupllc.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 2, 2013; the National Arbitration Forum received payment July 2, 2013.
On July 3, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <thegarrettgroupllc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@thegarrettgroupllc.com. Also on July 11, 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 August 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant’s makes the following allegations in this proceeding:
Policy ¶ 4(a)(i): Complainant’s Rights / Identical Nature of Domain Name
Complainant uses THE GARRETT GROUP LLC mark in its real estate management services business. Complainant organized itself under the mark’s name in a limited liability company July 24, 1998 (Exhibit 1) with the California Secretary of State, and began operating its business in December 11, 1998. Complainant has continued to provide its real estate management services to the present day throughout the United States (Exhibit 2). Complainant used the disputed <thegarrettgroupllc.com> domain name starting in May 2003 and up until and through May 2012, when the domain name inadvertently lapsed following Complainant’s termination of the employee whose e-mail account was listed with the domain name’s registration.
Complainant filed a trademark application for THE GARRETT GROUP with the United States Patent and Trademark Office (“USPTO”) (Serial No. 85,867,748 filed March 5, 2013). See Complainant’s Exhibit 3.
Panels repeatedly acknowledge that trademark registration is not required under the UDRP.
Respondent registered the identical <thegarrettgroupllc.com> domain name during the time period in which Complainant’s registration lapsed.
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
Respondent has never engaged in business under “The Garrett Group LLC” banner or business name.
Respondent seeks advertising and other commercial revenue through this redirected use of the domain name for adult-materials.
Respondent used the domain name to send Internet users to the adult oriented <indiafreeporntube.com> domain name.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
Respondent seeks to capitalize on the likelihood that Internet users who enter this domain name will associate Complainant with the adult-oriented content viewable on the domain name’s website.
Respondent knew that Complainant had rights in the mark, and that he was infringing on Complainant’s rights, based on publically available SEO information.
Respondent registered the <thegarrettgroupllc.com> domain name May 3, 2013.
The Panel notes that Complainant makes various arguments under US federal law.
Respondent made no allegations in response and did not file a formal Response in this proceeding.
The Complainant established that it has rights in the disputed domain name containing Complainant’s protected mark.
Respondent has no rights to the disputed domain name, which is, as Complainant contends, identical to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 filed a trademark application for THE GARRETT GROUP with the United States Patent and Trademark Office (“USPTO”) (Serial No. 85,867,748 filed March 5, 2013). Complainant argues that panels repeatedly acknowledge that trademark registration is not required under the UDRP. The Panel agrees, and finds that although Complainant does not have a trademark registration, it is sufficient for Complainant to establish some common law right in THE GARRETT GROUP LLC mark to prevail under Policy ¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant argues that it uses THE GARRETT GROUP LLC mark in its real estate management service provision. Complainant states that it organized itself under the mark’s name in a limited liability company July 24, 1998 (Exhibit 1), filed its articles of incorporation with the California Secretary of State, and began operating its business in December 11, 1998. Complainant argues that it has continued to provide its real estate management services to the present day throughout the United States (Exhibit 2). Complainant claims to have acquired, managed, and sold some thirty commercial buildings and approximately 5,000 acres in development property throughout the United States, and that it has marketed and engaged in business with lenders, purchasers, investors, and other corporate entities in more than ten states throughout the nation since 1998. Complainant states that it used the disputed <thegarrettgroupllc.com> domain name starting in May 2003 through May 2012, when the domain name inadvertently lapsed following Complainant’s termination of the employee/caretaker of the domain name. See Complainant’s Exs. 10–11. The Panel finds that Complainant’s continuous use of THE GARRETT GROUP LLC mark in connection with its real estate management services since 1998 is evidence of its secondary meaning in the mark, demonstrating common law rights in satisfaction of Policy ¶ 4(a)(i). See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); see also Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent registered the identical <thegarrettgroupllc.com> domain name during the time period in which Complainant’s registration lapsed. The Panel agrees that as the generic top-level domain (“gTLD”) “.com” and the deletion of spacing are all that differentiates the domain name from the mark, the <thegarrettgroupllc.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to the Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and 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 of proof shifts to Respondent to show it does have such 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 urges that Respondent never engaged in business under “The Garrett Group LLC” banner or business name. The Panel notes that the WHOIS database identifies Respondent as “Victor Frankl.” The Panel agrees that the record provides no basis for finding that Respondent has been commonly known as <thegarrettgroupllc.com> under 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).
Complainant also argues that Respondent seeks advertising and other commercial revenue by redirecting the <thegarrettgroupllc.com> domain name to a website displaying adult-oriented materials. The Panel notes that among other things, the domain name’s website features a log-in for users and a variety of “cams.” See Complainant’s Ex. 5. The Panel is permitted to make an inference from such facts that Respondent is operating an unrelated commercial business through this identical domain name, and the Panel finds that such use is not considered either to be a Policy ¶ 4(c)(i) bona fide offering, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
Complainant specifically points out that Respondent uses the <thegarrettgroupllc.com> domain name to send Internet users to the adult oriented <indiafreeporntube.com> domain name. The Panel agrees that the content and hyperlinks viewable on the domain name’s resolving website on the <indiafreeporntube.com> domain name are clearly adult-oriented. See Complainant’s Ex. 5. The Panel finds that Respondent’s decision to use the domain name to host adult-oriented material shows that Respondent lacks any sort of Policy ¶ 4(a)(ii) right or legitimate interest in the <thegarrettgroupllc.com> domain name. See Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
Respondent has no rights to or legitimate interest in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent seeks to capitalize on the likelihood that Internet users who enter the <thegarrettgroupllc.com> domain name will associate Complainant with the adult-oriented content viewable on the domain name’s website. The Panel agrees that as Exhibit 5 clearly demonstrates that the domain name is used to promote adult-oriented content, Respondent attempts to take advantage of the domain name’s similarity to Complainant’s mark and attract Internet users to its website in order to make a commercial gain. Such conduct supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant argues that Respondent knew that Complainant had rights in the mark, and that Respondent was infringing on Complainant’s rights, based on publically available SEO information and the low likelihood that a domain name as specific as <thegarrettgroupllc.com> would otherwise be registered to promote something like adult-oriented goods and services. While constructive notice is not sufficient to support a bad faith finding, the Panel finds that Respondent had action notice of Complainant’s rights in the mark. Although the widespread use and fame might satisfy the notice requirement, here Respondent was in fact the person serving as the monitor for Complainant’s website until the employer/employee relationship came to an end. This Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thegarrettgroupllc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 14, 2013.
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