national arbitration forum

 

DECISION

 

The University of Utah v. Chou Lan fei

Claim Number: FA1307001512657

PARTIES

Complainant is The University of Utah (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA.  Respondent is Chou Lan fei (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <redbuttegardens.org>, registered with Gransy s.r.o. d/b/a subreg.cz.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2013. the National Arbitration Forum received payment on July 31, 2013. The Complaint was submitted in both Czech and English.

 

On August 2, 2013, Gransy s.r.o. d/b/a subreg.cz confirmed by e-mail to the National Arbitration Forum that the <redbuttegardens.org> domain name is registered with Gransy s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name.  Gransy s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy s.r.o. d/b/a subreg.cz 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 Czech language Complaint and all Annexes, including a Czech language 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.org.  Also on August 7, 2013, the Czech language 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 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Czech language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant makes the following contentions:

1.   Policy ¶ 4(a)(i)

a.   Complainant, The University of Utah, is the owner of a botanical garden and arboretum that is operated under the RED BUTTE GARDEN mark. Complainant’s garden consists of more than 100 acres of natural gardens, displays, paths, and trails. Complainant’s garden also hosts various concerts and special events such as weddings, corporate outings, and plant sales.

b.   Complainant has gained common law rights in the RED BUTTE GARDEN mark through its continuous use of the mark since 1986. Complainant has extensively advertised its garden under the RED BUTTE GARDEN mark through television and radio advertisements and outdoor billboards. Moreover, Complainant’s garden, operated under the RED BUTTE GARDEN mark, attracts hundreds of thousands of visitors each year and earns average annual revenues of about $5.5 million. The RED BUTTE GARDEN has accordingly developed a secondary meaning in the minds of the public, indicating the garden’s affiliation with Complainant.

c.   Respondent’s <redbuttegardens.org> domain name is identical to Complainant’s RED BUTTE GARDEN mark, because the domain name fully incorporates the mark and merely adds the general top-level domain (“gTLD”) “.org.”

2.   Policy ¶ 4(a)(ii)

a.   Respondent is not commonly known as <redbuttegardens.org>, because the WHOIS information identifies the registrant of the disputed domain name as “Chou Lan fei,” and nothing on the record suggests that Respondent is known as <redbuttegardens.org>. Moreover, Complainant has not authorized Respondent to use its RED BUTTE GARDEN mark in a domain name.

b.   Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the domain name resolves to a website promoting hyperlinks to various third-party websites, some of which are direct competitors of Complainant.

3.   Policy ¶ 4(a)(iii)

a.   Respondent’s registration and use of the <redbuttegardens.org> domain name disrupts Complainant’s business pursuant to Policy  ¶ 4(b)(iii), because the domain name targets Internet users seeking services under Complainant’s RED BUTTE GARDEN mark and diverts them to websites of third parties, some of which are direct competitors of Complainant.

b.   Respondent is commercially profiting from its registration and use of the <redbuttegardens.org> domain name in the form of click-through fees, and has thus demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).

c.   Respondent had actual knowledge of Complainant’s RED BUTTE GARDEN mark at the time it registered the disputed domain name, which tends to indicate Respondent’s bad faith under Policy ¶ 4(a)(iii).

4.   Respondent first registered the disputed domain name on November 24, 2006.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant alleges that it owns common law rights in the RED BUTTE GARDEN mark. The Panel notes that Policy ¶ 4(a)(i) does not require a complainant to register a mark with a government agency in order to sufficiently establish its right in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Rather, a complainant may demonstrate that it has developed consumer recognition and established common law rights in its mark.

 

Complainant alleges that through its continuous use of the RED BUTTE GARDEN mark since 1986, Complainant has gained common law rights in the mark, because the RED BUTTE GARDEN mark has developed secondary meaning indicating the garden’s affiliation with Complainant. To support this contention, Complainant states that that the garden operated under the RED BUTTE GARDEN mark attracts hundreds of thousands of visitors each year and earns average annual revenues of about $5.5 million. Complainant further states that it has spent approximately $150,000 per year advertising its garden under the RED BUTTE GARDEN mark through television and radio advertisements as well as outdoor billboards, and 198,645 customers visited the garden during fiscal year 2011-2012. Previous panels have held that secondary meaning indicating a complainant’s common law rights in a mark is established when, in the minds of the public, the mark indicates the complainant as the source of a product. 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.’”). Previous panels have suggested that a complainant can establish secondary meaning through evidence of the complainant’s continuous use of the mark in connection with its products or services, the amount of revenue gained from its use of the mark, its advertising expenditure, and its number of customers. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also 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.”). Here, Complainant has submitted evidence of the revenue gained from its use of the RED BUTTE GARDEN mark, as well as its advertising expenditures and its number of customers. Accordingly, the Panel determines that Complainant has established that its RED BUTTE GARDEN mark has developed secondary meaning in the minds of the public, indicating the mark’s affiliation with Complainant. The Panel holds that Complainant has gained common law rights in the RED BUTTE GARDEN, which also establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).

 

Complainant next alleges that Respondent’s <redbuttegardens.org> domain name is identical to its RED BUTTE GARDEN mark under Policy ¶ 4(a)(i), because the domain name fully incorporates the mark and merely adds the gTLD “.org.” The panel notes that the disputed domain name eliminates the spaces found in Complainant’s RED BUTTE GARDEN mark while adding one character, the letter “s,” to the mark. Previous panels have held that a disputed domain name’s addition of a gTLD such as “.org” is irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See, e.g., Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Similarly, previous panels have held that a domain name’s elimination of spaces found in a complainant’s mark is irrelevant for the purposes of a confusing similarity analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Previous panels have also held that a disputed domain name’s addition of the letter “s” to a complainant’s mark does not sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). The Panel therefore concludes that the <redbuttegardens.org> domain name is confusingly similar to the RED BUTTE GARDEN mark pursuant to Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or 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 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 contends that Respondent is not commonly known as <redbuttegardens.org>, because the WHOIS information identifies the registrant of the disputed domain name as “Chou Lan fei,” and nothing on the record suggests that Respondent is known as <redbuttegardens.org>. Complainant further argues that it has not authorized Respondent to use its RED BUTTE GARDEN mark in a domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that the respondent was not commonly known by the disputed 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. Applying this precedent, the Panel accepts Complainant’s contention that it did not authorize Respondent to use its RED BUTTE GARDEN mark and finds that the WHOIS information tends to show Respondent is known as “Chou Lan fei,” not <redbuttegardens.org>. The Panel determines that no other evidence on the record indicates that Respondent is commonly known as <redbuttegardens.org>, and it holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant further contends that Respondent’s use of the disputed domain name is not protected as 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), because the <redubttegardens.org> domain name resolves to a website promoting hyperlinks to various third parties, some of which are direct competitors of Complainant. Complainant has provided a screenshot of the website resolving from <redbuttegardens.org>, which appears to display hyperlinks to websites that are related to Complainant’s concert services, including Pacific Amphitheatre and TicketsNow, as well websites that are unrelated to Complainant’s offered goods and services, including the Southwest airline company. Various panel decisions have held that a respondent’s use of a disputed domain name to host advertising links to third-party websites is not a use protected by Policy ¶ ¶ 4(c)(i) or 4(c)(iii). 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). Here, as in H-D Michigan Inc., supra, Complainant has provided evidence that the website resolving from <redbuttegardens.org> features a series of advertising links to various third parties, some of whom offer products and services in direct competition with the concert services offered by Complainant. Therefore, the Panel determines that Respondent is not using the disputed domain name in a manner that is protected as 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).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant first alleges that Respondent’s registration and use of the <redbuttegardens.org> domain name disrupts Complainant’s business pursuant to Policy  ¶ 4(b)(iii), because the domain name targets Internet users seeking services under Complainant’s RED BUTTE GARDEN mark and diverts them to websites of third parties, some of which are direct competitors of Complainant. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel held that the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii) where the disputed domain name resolved to a website featuring links to third-party competitors of complainant. Similarly, in Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007), the panel held that bad faith disruption was present where the respondent’s websites featured hyperlinks to competing websites and also included a link to complainant’s website. In the instant proceeding, Complainant has provided evidence that the website resolving from Respondent’s <redbuttegardens.org> domain name features hyperlinks to websites of Complainant’s competitors, as well as a hyperlink to Complainant’s own website. Accordingly, the Panel determines that the disputed domain name likely diverts Internet users away from Complainant and the Panel determines that Respondent’s registration and use of the disputed domain name constitutes bad faith disruption of Complainant’s business pursuant to Policy  ¶ 4(b)(iii).

 

Complainant next alleges that Respondent demonstrated bad faith pursuant to Policy ¶ 4(b)(iv). Specifically, Complainant alleges that the <redbuttegardens.org> domain name misleads Internet users seeking Complainant’s own website and that Respondent is commercially profiting from its registration and use of the disputed domain name in the form of click-through fees in exchange for its promotion of hyperlinks to various third-party websites, some of which compete with Complainant in the offering of concert related services. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel held that the respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant. Similarly, in Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007), the panel held that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv). In the instant proceeding, Complainant asserts that the website resolving from the disputed domain name hosts hyperlinks to various websites, which are both related and unrelated to Complainant’s business, and the Panel determines that Respondent is receiving click-through fees for its promotion of these links. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

Finally, Complainant alleges that Respondent had actual knowledge of Complainant’s RED BUTTE GARDEN mark at the time it registered the disputed domain name, which tends to indicate Respondent’s bad faith under Policy ¶ 4(a)(iii). Complainant alleges that Respondent’s actual knowledge of Complainant’s rights in the mark can be inferred because Complainant’s RED BUTTE GARDEN mark is very well known, and the domain name was registered more than two decades after Complainant first began using the mark. Complainant further argues that the fact that the disputed domain name contains links to websites that compete with Complainant in the offering of concert-related services tends to show that Respondent knew of Complainant and its own offering of concert-related services. Previous panels have held that a respondent’s actual knowledge of a complainant’s rights in a mark indicating bad faith can be inferred under the circumstances. See, e.g. Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding bad faith registration and use under Policy ¶ 4(a)(iii) as there were reasonable grounds to infer that respondent had actual notice of complainant’s mark, since complainant’s Radio & Records Magazine was a leading business journal covering an industry towards which respondent’s services are marketed). In Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000), a previous panel held that the respondent’s registration and use of a confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was so famous as to allow the respondent’s actual knowledge of the mark to be inferred. Therefore, the Panel accepts Complainant’s contention that its RED BUTTE GARDEN mark is famous enough to support an inference that Respondent had actual knowledge of the mark and holds that this actual knowledge evidences Respondent’s bad faith registration and use of the <redbuttegardens.org> domain name under Policy ¶ 4(a)(iii). Further, in Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the panel held that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name.” Therefore, the Panel accepts Complainant’s argument that the at-issue website’s display of hyperlinks to Complainant’s competitors in the concert industry tends to show that Respondent had actual knowledge of Complainant and the Panel holds that this actual knowledge evidences Respondent’s bad faith registration and use of the <redbuttegardens.org> domain name under Policy ¶ 4(a)(iii).

 

Complainant has proven this element.

 

DECISION

Complainant 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.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  September 6, 2013

 

 

 

 

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