The University of Utah v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1307001512656
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”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redbuttegardens.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch 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 <redbuttegardens.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@redbuttegardens.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 John J. Upchurch 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 name be transferred from Respondent to Complainant.
1. Policy ¶ 4(a)(i)
a. Complainant, The University of Utah, has acquired common law rights in the RED BUTTE GARDEN mark by virtue of its use of the mark in commerce.
i. Complainant uses the RED BUTTE GARDEN mark in connection with a botanical garden and arboretum it has owned and operated since 1986.
ii. Complainant hosts various concerts, performances, and art shows, as well as specials events including weddings and corporate outings, at its botanical garden. Complainant provides educational services relating to plants, gardening, and cooking at the venue, and also operates a gift shop there.
iii. Since the opening of its botanical garden and arboretum in 1986, Complainant has used the RED BUTTE GARDEN mark extensively throughout the Intermountain West, typically spending about USD 150,000 per year on advertising.
iv. Complainant’s botanical garden and arboretum saw 198,645 visitors during the 2011-12 fiscal year, and generates average annual revenues of around USD 5,500,000.
v. Complainant operates the <redbuttegarden.org> domain name.
b. Respondent’s <redbuttegardens.com> domain name is confusingly similar to Complainant’s RED BUTTE GARDEN mark.
2. Policy ¶ 4(a)(ii)
a. Respondent was not commonly known by the <redbuttegardens.com> domain name prior to registering it.
i. Complainant has not licensed or otherwise authorized Respondent to use the RED BUTTE GARDEN mark for any purpose.
b. Respondent uses the disputed domain name to resolve to a website featuring pay-per-click links to the websites of parties that are unaffiliated with Complainant, including websites that offer garden and event-related products and services that compete with those offered by Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet users searching for Complainant’s RED BUTTE GARDEN-branded goods and services to other websites that offer competing goods and services.
b. Respondent’s registration and use of the <redbuttegardens.com> domain name is likely to create confusion as to Complainant’s sponsorship and affiliation, allowing Respondent to draw customers away from Complainant in bad faith.
c. It is highly improbable that Respondent was unaware of Complainant’s rights in the RED BUTTE GARDEN mark at the time Respondent registered the disputed domain name.
i. Respondent registered the disputed domain name on June 21, 2002, nearly two decades after Complainant began using the mark in 1986.
ii. By the time Respondent registered the disputed domain name, Complainant’s botanical garden had become one of the largest in the Intermountain West.
B. Respondent did not submit a response to this proceeding.
1. Respondent’s <redbuttegardens.com> domain name is confusingly similar to Complainant’s RED BUTTE GARDEN mark.
2. Respondent does not have any rights or legitimate interests in the <redbuttegardens.com> domain name.
3. Respondent registered or used the <redbuttegardens.com> 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 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 admits that it has no registered trademark for the RED BUTTE GARDEN mark. Complainant notes, however, that past panels have not required such registration as a prerequisite for the establishment of rights under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The Panel agrees, opining that Complainant can establish rights in the mark under Policy ¶ 4(a)(i) even in the absence of a trademark registration.
Complainant claims to have acquired common law rights in the RED BUTTE GARDEN mark under Policy ¶ 4(a)(i) by virtue of its use of the mark in commerce. Complainant claims to have used the RED BUTTE GARDEN mark in connection with a botanical garden and arboretum it has owned and operated since 1986. Complainant says it hosts various concerts, performances, and art shows, as well as specials events including weddings and corporate outings, at its botanical garden. Complainant also claims to provide educational services relating to plants, gardening, and cooking at the venue, while also operating a gift shop there. Complainant claims to have used the RED BUTTE GARDEN mark extensively throughout the Intermountain West since the opening of its botanical garden and arboretum, typically spending about USD 150,000 per year on advertising. Complainant further claims to generate average annual revenues of around USD 5,500,000 from its botanical garden and arboretum, which purportedly saw 198,645 visitors during the 2011-12 fiscal year. Finally, Complainant notes its registration of the <redbuttegarden.org> domain name, illustrating Complainant’s presence on the Internet as well. In light of the evidence presented by Complainant, the Panel determines that the RED BUTTE GARDEN mark has achieved secondary meaning in the minds of consumers which associates that mark with Complainant. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). The Panel so determines and holds that Complainant has acquired common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also 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).
Complainant argues that Respondent’s <redbuttegardens.com> domain name is confusingly similar to Complainant’s RED BUTTE GARDEN mark. Complainant notes that the disputed domain name contains Complainant’s mark in its entirety, adding the generic top-level domain (“gTLD”) “.com.” The Panel notes that the disputed domain name also removes the spaces between words in Complainant’s mark and adds the letter “s” to the end of the mark. Previous panels have agreed that the elimination of spaces and affixation of gTLDs do not establish distinctiveness under the Policy, as these elements are necessary of all domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Past panels have also agreed that the addition of a single letter “s” to a complainant’s mark is insufficient to establish distinctiveness. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). As a result, the Panel concludes that Respondent’s <redbuttegardens.com> domain name is confusingly similar to Complainant’s RED BUTTE GARDEN mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant believes that Respondent was not commonly known by the <redbuttegardens.com> domain name prior to registering the domain on June 21, 2002. Complainant claims that it has not licensed or otherwise authorized Respondent to use the RED BUTTE GARDEN mark for any purpose, including use in a domain name. Complainant also notes that Respondent, who has failed to refute Complainant’s contentions with regard to Policy ¶ 4(c)(ii), is identified as “Privacy Ltd. Disclosed Agent for YOLAPT” in the WHOIS listing. In light of the dearth of evidence in the record to the contrary, the Panel holds that Respondent is not commonly known by the <redbuttegardens.com> domain name within the meaning of 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 alleges that Respondent uses the disputed domain name to resolve to a website featuring pay-per-click links to the websites of parties that are unaffiliated with Complainant, including websites that offer garden and event-related products and services that compete with those offered by Complainant. Complainant urges that this use demonstrates a lack of rights and legitimate interests in the domain as contemplated by Policy ¶ 4(a)(ii). The Panel notes that past panels have shared Complainant’s interpretation of this sort of use. See, e.g., 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). The immediate Panel finds similarly, holding that Respondent’s use of the <redbuttegardens.com> domain name coincides with neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that Respondent has registered and uses the <redbuttegardens.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by wrongfully disrupting Complainant’s business. Complainant complains that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet users searching for Complainant’s RED BUTTE GARDEN-branded goods and services to other websites that offer competing goods and services. Complainant avers that Respondent’s registration of a confusingly similar domain name was calculated specifically for this purpose. The Panel agrees with Complainant’s interpretation of the facts, and finds that Respondent registered and uses the <redbuttegardens.com> domain name in bad faith according to Policy ¶ 4(b)(iii) by registering a confusingly similar domain name which promotes competing goods and services. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant further contends that Respondent’s registration and use of the <redbuttegardens.com> domain name is likely to create confusion as to Complainant’s sponsorship and affiliation with Respondent’s website, allowing Respondent to draw customers away from Complainant in bad faith. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel held that the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by operating a website which featured links to commercial websites, some of which competed with the complainant’s business, from which the respondent presumably received referral fees. The Panel in this case similarly infers that Respondent collects fees each time one of the hyperlinks displayed on Respondent’s website is accessed. Accordingly, the Panel reasons that Respondent’s registration of a confusingly similar domain name was motivated by the prospect of such commercial gain. The Panel concludes that Respondent registered and uses the <redbuttegardens.com> domain name in bad faith under Policy ¶ 4(b)(iv) by seeking to divert Internet users for Respondent’s own economic gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Finally, Complainant alleges that it is highly improbable that Respondent was unaware of Complainant’s rights in the RED BUTTE GARDEN mark at the time Respondent registered the <redbuttegardens.com> domain name. Complainant notes that Respondent registered the disputed domain name on June 21, 2002, which Complainant liberally construes as being “nearly two decades” after Complainant began using the RED BUTTE GARDEN mark in 1986. Complainant asserts that by the time Respondent registered the disputed domain name, Complainant’s botanical garden had become one of the largest in the Intermountain West. The Panel accepts Complainant’s assertion that Respondent had actual knowledge of Complainant and Complainant’s rights in the RED BUTTE GARDEN mark at the time Respondent registered the <redbuttegardens.com> domain name, and opines that such actual knowledge is sufficient to prove that Respondent’s registration of the domain was in bad faith pursuant to Policy ¶ 4(a)(iii). See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <redbuttegardens.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 13, 2013
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