Sevenstar Yacht Transport B.V. v. Edith Angermo
Claim Number: FA1309001520579
Complainant is Sevenstar Yacht Transport B.V. (“Complainant”), represented by J. Michael Pennekamp of Fowler White Burnett, P.A., Florida, USA. Respondent is Edith Angermo (“Respondent”), Puerto Rico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sevenstarwarning.com>, registered with GoDaddy.com, LLC.
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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2013; the National Arbitration Forum received payment on September 20, 2013.
On September 20, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <sevenstarwarning.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 September 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@sevenstarwarning.com. Also on September 23, 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 October 4, 2013.
On October 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s leading provider of yacht transportation services on a lift-on, lift-off basis. Complainant has rights in the SEVENSTAR mark dating from 2000, substantially predating the registration of the <sevenstarwarning.com> domain name.
Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the SEVENSTAR mark (Reg. No. 4,345,760 filed Aug. 12, 2012; registered Jun. 4, 2013). See Complainant’s Exhibit K.
Complainant has common law rights in the SEVENSTAR mark. Since its founding in 1985, Complainant has continuously been engaged in the business of worldwide yacht transportation services. Since becoming a subsidiary of Spliethoffs Bevrachtingskantoor B.V., Complainant has expanded with offices in the United States, United Kingdom, Australia, and Turkey, with agents in many more countries. Complainant arranges for the transport of an estimated 1,400 yachts annually and is expanding its business into Asia, South America, and Africa. Complainant’s USPTO trademark registration shows a first use of the SEVENSTAR mark of December 19, 1999 with a first use in commerce date of December 12, 2000. The <sevenstarwarning.com> domain name is confusingly similar to the SEVENSTAR mark. Respondent’s addition of the generic term “warning” does not create a new or different mark and does not alleviate confusing similarity. The addition of the generic top-level domain (“gTLD”) “.com” is inconsequential to a confusing similarity analysis.
Respondent is inactively holding the disputed domain name. The resolving website for the <sevenstarwarning.com> domain name displays a photo of a SEVENSTAR ship with the statement, “PLEASE VISIT BACK IN A FEW DAYS!”
The sole purpose of Respondent’s registration of the <sevenstarwarning.com> domain name was to allow Respondent to extract money from Complainant, both based on the independent contract dispute between the parties and through the eventual sale of the disputed domain name to Complainant.
The <sevenstarwarning.com> domain name is likely to cause confusion. Respondent uses a picture of a ship of Complainant’s. The SEVENSTAR mark is distinct and is only associated with Complainant.
Respondent registered the disputed domain name with knowledge of Complainant’s rights in the SEVENSTAR mark. The <sevenstarwarning.com> domain name was registered long after the SEVENSTAR mark was registered with the USPTO, and the domain name was registered for the purpose of posting negative comments about Complainant.
Evidence establishes that the purpose of Respondent’s registration of the domain was to gain leverage in a commercial dispute between Complainant and Respondent’s husband and to obtain money from Complainant in connection with the dispute. The dispute arose following Complainant’s transport of a yacht pursuant to the terms of a Contract of Ocean Carriage (“COOC”) signed by Respondent’s husband in September 2010. One month later Respondent registered the <sevenstarwarning.com> domain name and on that same day Respondent’s husband notified Complainant of the registration and threatened to post negative content regarding Complainant if Complainant did not pay Respondent’s husband for damages to his yacht. Complainant refused to pay on the ground that it was not the responsible party under the COOC. Subsequently, the marine cargo insurer, with whom Respondent’s husband previously filed a claim, paid for the yacht damage. In July 2013, Respondent’s husband demanded that Complainant reimburse him for the amount of his insurance deductible, interest, and fees and also offered to sell Complainant the domain name <sevenstarwarning.com> domain name for an additional amount. After Complainant again refused to pay, Respondent’s husband reiterated his threats regarding posting negative content.
B. Respondent
The phrase “seven star” is used by hundreds of companies around the world, not just Complainant. Additionally, it is an astronomical name, a geographical name, and a hotel rating system.
Complainant does not even own the <sevenstar.com> domain name.
Respondent should be awarded monetary compensation for the inconvenience caused by Complainant’s filing of this dispute.
The filing of the Complaint was made only after Pantaenius, the insurance company for Complainant, was ordered by The Ombudsman in Germany to pay approximately “$40.000” for damages done by Complainant to Respondent’s yacht.
The Panel notes that Respondent registered the <sevenstarwarning.com> domain name on December 29, 2010.
Policy ¶ 4(a)(i) Confusingly Similar, Policy ¶ 4(a)(ii) Rights & Legitimate Interests, and Policy ¶ 4(a)(iii) Bad Faith Use & Registration and Policy ¶ 4(c)(i), Policy ¶ 4(c)(ii) have been violated by the Respondent.
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.
Complainant contends that it is the world’s leading provider of yacht transportation services on a lift-on, lift-off basis. Complainant argues that it has rights in the SEVENSTAR mark dating from 2000, substantially predating the registration of the <sevenstarwarning.com> domain name. Complainant demonstrates that it is the owner of the USPTO registration for the SEVENSTAR mark (Reg. No. 4,345,760 filed Aug. 12, 2012; registered Jun. 4, 2013). See Complainant’s Exhibit K. Panels have found that USPTO registrations establish rights in a mark and that those rights date back to the time of filing. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Further, the Panel notes that the location of the parties is irrelevant. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s USPTO registration confers rights in the SEVENSTAR mark under Policy ¶ 4(a)(i) dating back to August 12, 2012.
Complainant also argues that it has common law rights in the SEVENSTAR mark. Complainant states that, since its founding in 1985, Complainant has continuously been engaged in the business of worldwide yacht transportation services. Complainant claims that since becoming a subsidiary of Spliethoffs Bevrachtingskantoor B.V., Complainant has expanded with offices in the United States, United Kingdom, Australia, and Turkey, with agents in many more countries. Complainant alleges that it arranges for the transport of an estimated 1,400 yachts annually and is expanding its business into Asia, South America, and Africa. Complainant contends that its USPTO trademark registration shows a first use of the SEVENSTAR mark of December 19, 1999 with a first use in commerce date of December 12, 2000. Panel finds that the continuous and ongoing use of a mark establishes secondary meaning and thus common law rights. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant next asserts that the <sevenstarwarning.com> domain name is confusingly similar to the SEVENSTAR mark. According to Complainant, Respondent’s addition of the generic term “warning” does not create a new or different mark and does not alleviate confusing similarity, and the addition of the gTLD “.com” is inconsequential to a confusing similarity analysis. The panel finds that the addition of a generic term and a gTLD fails to create a distinctiveness that would remove the <sevenstarwarning.com> domain name from the realm of confusing similarity. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <sevenstarwarning.com> domain name is confusingly similar to the SEVENSTAR mark under Policy ¶ 4(a)(i).
While Respondent contends that the <sevenstarwarning.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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 argues that Respondent does not have rights or legitimate interests in the <sevenstarwarning.com> domain name. Complainant contends that the SEVENSTAR mark is distinct and is only associated with Complainant, and thus Respondent could not be known by the mark. The Panel notes that the respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record for the <sevenstarwarning.com> domain name lists “Edith Angermo” as the domain name registrant. The WHOIS record is often illustrative of whether the respondent is known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, the Panel finds that Respondent is not commonly known by the <sevenstarwarning.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant states that Respondent is inactively holding the disputed domain name. Complainant notes that the resolving website for the <sevenstarwarning.com> domain name displays a photo of a SEVENSTAR ship with the statement, “PLEASE VISIT BACK IN A FEW DAYS!” The Panel notes that in Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), the panel found that the inactive holding of a domain name indicates a lack of rights and legitimate interests. Therefore, the Panel finds that Respondent’s failure to place active content at the <sevenstarwarning.com> domain name’s resolving website and instead merely inactively holding the domain is 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 the sole purpose of Respondent’s registration of the <sevenstarwarning.com> domain name was to allow Respondent to extract money from Complainant, both based on the parties’ independent contract dispute and through the eventual sale of the disputed domain name to Complainant. Panels have found that the registration of a domain with the intent to eventually sell the domain to the complainant is evidence of bad faith. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). Therefore, the Panel finds that Respondent registered and is using the sevenstarwarning.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant next alleges that Respondent is inactively holding the disputed domain name. Complainant notes that the resolving website for the <sevenstarwarning.com> domain name displays a photo of a SEVENSTAR ship with the statement, “PLEASE VISIT BACK IN A FEW DAYS!” In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel held that the inactive holding of a domain name is evidence of bad faith registration and use. Therefore, the Panel finds that Respondent’s inactive holding of the <sevenstarwarning.com> domain name is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the disputed domain name with knowledge of Complainant’s rights in the SEVENSTAR mark. According to Complainant, the <sevenstarwarning.com> domain name was registered long after Complainant acquired rights in the SEVENSTAR mark, and the domain name was registered for the purpose of posting negative comments about Complainant. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the prior contractual relationship between the parties, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sevenstarwarning.com> domain name be TRANSFERRED from Respondent to Complainant
Hon. Nelson A. Diaz (ret.) Panelist
Dated: October 14, 2013
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