Bluegreen Corporation v. eGo
Claim Number: FA0210000128793
PARTIES
Complainant
is Bluegreen Corporation, Boca
Raton, FL (“Complainant”) represented by Helen
Hill Minsker and Holly M. Ford of Banner & Witcoff Ltd.
Respondent is eGo, Richmond, VA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com>, registered with BulkRegister.com, Inc.
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.
James
A. Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 30, 2002; the Forum received a hard copy of the
Complaint on October 30, 2002.
On
November 5, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that
the domain names <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com> are registered with BulkRegister.com, Inc.
and that Respondent is the current registrant of the names. BulkRegister.com,
Inc. has verified that Respondent is bound by the BulkRegister.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
November 5, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of November
25, 2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@shorecrest.com, postmaster@harbourlightsresort.com,
postmaster@mountainloft.com and postmaster@laurelcrest.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
December 11, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Crary as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com> domain
names are identical to Complainant’s SHORE CREST, HARBOUR LIGHTS RESORT,
MOUNTAINLOFT, and LAUREL CREST marks,
respectively.
Respondent does not have any rights or legitimate
interests in the <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com> domain
names.
Respondent registered and used the <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Bluegreen Corporation,
operates a business engaged in the acquisition, development, marketing, and
sale of timeshare resorts, golf communitites, and residential land.
Complainant’s resorts are located in such prominent places as Orlando, Florida;
Myrtle Beach, South Carolina; Branson, Missouri; and Wisconsin Dells,
Wisconsin. Complainant was named one of the nation’s Fastest Growing Companies
by Fortune Magazine in 1999, and has over forty resorts employing over
2,000 individuals worldwide.
Among Complainant’s forty resorts are its
Harbour Lights Resort (in operation since 1997); its Shore Crest Vacation
Villas (in operation since 1995); its MountainLoft Resort (in operation since
1994); and its Laurel Crest Resort (in operation since 1995). These resorts
have been widely advertised and promoted for many years, and Complainant has
expended a substantial amount of resources, money, time and effort promoting,
marketing, advertising, and building consumer recognition and goodwill in its
resort names. Concurrent with Complainant’s operation of its above mentioned
resorts, Complainant registered the <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com> domain
names.
In a letter dated February 9, 2001,
Respondent, eGo, contacted Complainant. The letter advised Complainant that
because of ongoing problems “with people missing their domain bill from Network
Solutions, it had assumed payment duties for all of our [Complainant’s] active
domains.” It wrote further:
You remain the registered owner of the
name. To make this work for us, we had to transfer the domains to another
registrar (this has already happened with no interruption in service) and pay
for an additional year…. As we have already pre-paid your registration, we
would appreciate your making this process as easy as possible for us and remit
for the enclosed invoice as soon as possible. In the future, the only bills you
should receive regarding the listed domain will be from eGO.
Although such transfer of Complainant’s
domain names had never been authorized by Complainant, Complainant nonetheless
raised no objection to the one year registration and paid the requisite fees to
Respondent.
Later that same year, Complainant decided
to bring all of its web hosting services in-house. Pursuant to this plan,
Complainant attempted to contact Respondent in order to achieve a termination
of its website/email service agreements. Respondent never responded to these
attempted communications, and Complainant subsequently attempted to access the
subject domain names to arrange to have the domain name server repointed to
Complainant’s in-house servers. It was at this point that Complainant
discovered that all of the subject domain names were redirecting Internet users
to Respondent’s website, advertising Complainant’s competitor’s resort properties,
and that all of the domain name registrations had been renewed in Respondent’s
name.
Again, Complainant attempted to contact
Respondent in order to resolve the dispute. This time Respondent replied,
claiming that Complainant had told Respondent that it “did not want the sites,”
and therefore Respondent had renewed the registrations for itself, an
allegation denied by Complainant. In an effort to resolve the situation
quickly, Complainant offered to reimburse Respondent for the registration
renewal costs, to which Respondent replied that Complainant “would have to do
much better than that.”
Complainant then sent a letter to
Respondent demanding transfer of the subject domain names. Respondent failed to
acknowledge receipt or respond to that letter, and Complainant initiated these
proceedings.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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) of the Policy requires that the 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.
Identical and/or Confusingly Similar
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. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4
(2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar.
23, 2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”). Complainant’s marketing, advertising, and
corporate materials all attest to the use, notoriety, and goodwill surrounding
Complainant’s common law SHORE CREST,
HARBOUR LIGHTS RESORT, MOUNTAINLOFT, and LAUREL CREST trademarks. In
light of Respondent’s failure to respond to the Complaint, the Panel finds
these showings conclusive, and determines that Complainant has sufficient
rights in these marks to bring this dispute under the UDRP. See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Furthermore,
the fact that Complainant previously held registrations for the <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com>
domain names attests to the fact that it has rights in its marks. See Am.
Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that the fact that Complainant held the domain name prior to the
Respondent’s registration, as well held a pending trademark application in the
mark, evidences rights in the domain name and the mark therein contained).
In light of this, Respondent’s <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com>
domain names are identical to Complainants SHORE CREST, HARBOUR LIGHTS RESORT,
MOUNTAINLOFT, and LAUREL CREST marks. The only difference between the disputed
domain names and the marks in which Complainant has rights is the elimination
of the spaces between the words of some of the marks and the addition of the
top-level domain “.com” to each mark. Neither of these types of differences are
sufficient to prevent a finding of indenticality between the disputed domain
names and Complainant’s marks. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9,
2000) (finding that the domain name <radioshack.net> is identical to
Complainant’s mark, RADIO SHACK); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that "the addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use of a gTLD is required
of domain name registrants").
Accordingly, the Panel finds that the disputed domain names are identical to Complainant’s SHORE CREST, HARBOUR LIGHTS RESORT,
MOUNTAINLOFT, and LAUREL CREST trademarks under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Policy paragraphs 4(c)(i)-(iii) list three circumstances illustrative
of situations where a respondent would have rights or legitimate interests in a
domain name. When a respondent has failed to respond to a Complaint, a showing
by a complainant that none of these three circumstances are present is sufficient
for that complainant to meet its burden under the Policy. At that point, the
burden shifts to Respondent to rebut Complainant’s allegations. See Do
The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name).
In these circumstances, Respondent’s
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
In the present dispute, Respondent
maintained the domain name registrations on Complainant’s behalf, implying that
Respondent was never “commonly known by” the domain names under Policy ¶
4(c)(ii). Subsequent to its actions performed “on behalf” of Complainant,
Respondent appropriated the disputed domain names for itself, without
permission by Complainant. In these circumstances, there is also no evidence
that Respondent was “commonly known by” the disputed domain names. See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Respondent’s use of the websites, which
it previously held for Complainant, currently redirect Internet users to websites
offering the services of Complainant’s competitors. In light of the method in which Respondent acquired the disputed
domain names, Complainant has shown that Respondent’s use of said domain names
is not a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use of the domain names under Policy ¶
4(c)(iii). See Hewlett Packard Co. v. Full Sys., FA
94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to
offer any evidence permits the inference that the use of Complainant’s mark in
connection with Respondent’s website is misleading and Respondent is
intentionally diverting business from Complainant); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev,
188
F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
it's use of the names was not in connection with the offering of goods or
services or any other fair use).
Finally, the facts before the Panel allow for the inference that
Respondent fraudulently hijacked the disputed domain names from Complainant.
This inference is in and of itself evidence that Respondent has no rights or
legitimate interests in the disputed domain names. See
Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat.
Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the
same domain name is a factor in considering Respondent’s rights or legitimate
interest in the domain name).
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
While Policy paragraph 4(b) lists four
circumstances evidencing bad faith use and registration of a domain name, that
list is not meant to be all-inclusive. See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b)
sets forth certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out in ¶4(b),
does not mean that the domain names at issue were not registered in and are not
being used in bad faith”).
The method in
which Respondent acquired the disputed <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com> domain names demand
the conclusion that Respondent was well aware that the domain names
incorporated marks in which Complainant had rights. Therefore, when Respondent
registered and used the disputed domain names, it did so in bad faith. See Albrecht
v. Natale, FA 95465
(Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where
there is no reasonable possibility, and no evidence from which to infer that
the domain name was selected at random since it entirely incorporated
Complainant’s name); see also Household
Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000)
(“Just as the employment of a well-known business name for no particularly good
reason undermines any claim to legitimate interest, so it may also support an
inference of a bad-faith attempt to use the name to harass or exploit its
legitimate owner… Respondent, if he
ever was serious in the registration of this domain name, must have relied on
the good chance he would attract [Complainant’s] customers”).
Additionally, Respondent has taken
advantage of its acquisition of Complainant’s domain names to divert Internet
users, presumably for commercial gain, to competitors of Complainant. This type
of activity evidences bad faith use and registration under Policy ¶ 4(b)(iv). See
Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy 4(b)(iv))); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where Respondent used the domain name, for commercial
gain, to intentionally attract users to a direct competitor of Complainant).
Finally, the
nature of the method by which Respondent acquired the disputed domain name
registrations (effectively hijacking Complainant’s previous registration of the
domain names) evidences bad faith use and registration of those domain names. See
InTest Corp. v. Servicepoint,
FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name
has been previously used by Complainant, subsequent registration of the domain
name by anyone else indicates bad faith, absent evidence to the contrary); see
also BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of Complainant’s failure to renew a domain name).
Accordingly, the Panel finds that
Respondent registered and used the subject domain names in bad faith, and
Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <shorecrest.com>, <harbourlightsresort.com>, <mountainloft.com> and <laurelcrest.com> domain
names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: December 16, 2002
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