The University of Utah v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1307001512655
Complainant is The University of Utah (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redbuttegarden.com>, registered with FABULOUS.COM PTY LTD.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2013; the National Arbitration Forum received payment on July 31, 2013.
On August 1, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <redbuttegarden.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 August 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@redbuttegarden.com. Also on August 7, 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 September 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. The Panel has issued 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 it deemed applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts unregistered trademark rights in RED BUTTE GARDEN and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant owns a botanical garden and arboretum which is maintained and operated under the name RED BUTTE GARDEN.
2. Complainant has a recently filed and pending application with the USPTO for the trademark RED BUTTE GARDEN.
3. The disputed domain name was registered on June 21, 2002.
4. The domain name is currently active and resolves to a website consisting of links which are neither sponsored by nor affiliated with Complainant.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant has a recently filed a trademark application with the USPTO which is of no assistance to it in terms of this Policy since it remains pending.
Paragraph 4(a)(i) of the Policy does not, however, distinguish between registered and unregistered trademark rights. A trademark registration is not necessary if Complainant can establish so-called “common law” rights in the trademark[i].
As a matter of law, there is no single definition of common law or unregistered trademark rights[ii]. It has been said that a complainant has common law rights if it could sustain an argument for the tort of passing off. To do so, a reputation must be proved. A reputation will depend on use and the extent of the use required will depend on the character of the name used and the nature of the business itself.
The injunctive or other relief for passing off granted by a court for passing off will commonly be of national effect, however passing off actions have frequently succeeded based on regional or even local reputation or goodwill. So, for example, the courts have over the years shown willingness, in the right circumstances and provided with cogent evidence, to uphold passing off claims brought by localized service providers such as restaurants, hotels, bars, builders and car yards. Panelists applying this Policy have followed that thinking and there is no reason in principle why botanical gardens would not fall into this same class.
The evidence before the Panel is that Red Butte Garden is one of the largest botanical gardens in the Intermountain West region of the United States. It consists of 100 acres of gardens, displays, pathways and hiking trails. More importantly from a trademark perspective, the evidence shows that the garden has been used as a venue for musical performances, educational events and private functions since 1986.
Complainant claims annual expenditure on advertising in the order of USD150,000. Complainant provides evidence that over the course of 2011-12 the garden attracted 198,645 visitors generating revenue of approximately USD5.5 million.
Panel notes that a “butte” is a geographical term for a landform in the nature of a conspicuous hill with steep sides and frequently a flat top, much like a mesa or small plateau. In the Unites States there are well known buttes including Scotts Bluff and Courthouse Rock in Nebraska, Crested Butte in Colorado and Elephant Butte in New Mexico. Indeed, there is Red Butte located in the Kaibab National Forest in Arizona.
These landforms are more often than not found in arid, remote areas and so there is genuine trademark resonance in the name Red Butte Garden. Panel finds that even when the descriptive character of the name is taken into account, the term RED BUTTE GARDEN can function as a trademark.
In addition, not only the evidence of the popularity of the garden, but also the evidence of its long term use as a venue for social and musical events leads Panel to the finding that the term RED BUTTE GARDEN does in fact function as a common law trademark. For these reasons Panel finds that Complainant has trademark rights in RED BUTTE GARDEN.
Panel is satisfied that the disputed domain name is legally identical to Complainant’s trademark since the gTLD, “.com”, can be disregarded for the purposes of comparison[iii].
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The publicly available WHOIS information does not support any argument that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
The only live question is whether the domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain name resolves to a link farm website with references to third parties who promote goods and services in competition with those of Complainant.
Were it simply that the resolving website offered ticketing to events at the Red Butte Garden in competition with Complainant’s own or preferential ticketing then Complainant might have faced an interesting assessment of Respondent’s legitimate interest in the domain name, but that was not the case since the resolving website offers tickets to a multiplicity of musical and social events, some utterly unrelated to the gardens owned and operated by Complainant[v].
Panel finds that Complainant has established a prima facie case that Respondent has no proven rights or interests in the domain name and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel has good reason for concern that Complainant has given an insufficient account of Respondent’s alleged bad faith. Panel is disquieted by the fact that there is no explanation in Complaint as to why these Administrative Proceedings were brought more than a decade after registration of the domain name. Of itself, that delay is of such a magnitude that it should require explanation.
Panel notes that the domain name connected with the website by reference to which Complainant promotes itself (redbuttegarden.org) was registered in 2000, in the greater passage of time not that much earlier than the disputed domain name, yet there remains a noticeable silence on the part of Complainant which might dispel a reasonable assumption that Complainant was, for many years, aware of the disputed domain name.
In the result there is a justifiable inference that Complainant was or should have been aware of the third party ownership of the disputed domain name. Although the Panel does not in this case find that the delay is a reason of itself to deny the Complaint, it nonetheless finds the delay to be a factor demanding additional scrutiny of the allegation of bad faith.
Complainant argues for the application of paragraphs 4(b)(iii) and (iv) above. Panel finds that paragraph 4(b)(iii) does not apply since Respondent is in no meaningful sense a competitor of Complainant.
Paragraph 4(b)(iv) is unique in so much as it only requires proof of use (rather than registration) in bad faith. It therefore follows that it is possible pursuant to paragraph 4(b)(iv) to make a finding of bad faith use and registration based only on evidence of bad faith use. Given the evidence showing how the resolving website currently appears and in particular the host of links to tickets and events unconnected in any way with Red Butte Garden, Panel is satisfied that there is bad faith use of the domain name[vi].
Nevertheless, the broadly held view of panelists who had examined paragraph 4(b)(iv) in detail has been the although bad faith use can impute a respondent with bad faith intentions at the time of registration, there should at least be a reasonable inference that was so. In other words, if the facts point to bad faith use but are unclear or equivocal as to bad faith registration then many panelists have been cautious to apply paragraph 4(b)(iv). Not unnaturally, this has commonly been where registration occurred many years ago.
It thus falls to Panel to decide whether on the balance of the evidence it can be said that registration was in bad faith. That issue will be determinative of the proceedings since Panel finds in all other respects paragraph 4(b)(iv) to be satisfied[vii]. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[viii].
First use of the name Red Butte Gardens – whether or not it could at that point be said have been trademark use – was in 1986. There was use of the name for 17 years prior to registration of the disputed domain name. In the absence of a Response, Panel can reasonably infer that Respondent knew of the Complainant and its enterprise at the time of registration.
In the absence of a Response, there is no evidence of any good faith use of the domain name. Panel must infer there has been none.
In the absence of a Response, there is silence on the question why a Respondent located in the Isle of Man would have an interest in Red Butte Garden.
In the absence of a Response, the balance of the evidence goes against Respondent and Panel finds bad faith registration of 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 <redbuttegarden.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 19, 2013
[i] See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy)). The Policy is consistently read in this way (see, for example, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006); Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007).
[ii] WIPO makes publicly available its so-called “Overview of WIPO Panel Views on Selected UDRP Questions,” the Second Edition of which asks at paragraph 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?
[iii] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
[iv] See Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
[v] See, for example, ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007)(rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites.
[vi] See, for example, Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006).
[vii] In particular, in the absence of a Response, Panel accepts Complainant’s submission that Respondent is operating a revenue driven website funded by referral fees. Panel has already found a likelihood of confusion.
[viii] 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.”).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page