CNL Income Darien Lake, LLC v. John Smith / Private Registration
Claim Number: FA1111001414892
Complainant is CNL Income Darien Lake, LLC (“Complainant”), represented by Mark S. Graham of LUEDEKA, NEELY & GRAHAM, P.C., Tennessee, USA. Respondent is John Smith / Private Registration (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <darienlake.com>, registered with UK2 GROUP 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2011; the National Arbitration Forum received payment on November 9, 2011.
On November 9, 2011, UK2 GROUP LTD. confirmed by e-mail to the National Arbitration Forum that the <darienlake.com> domain name is registered with UK2 GROUP LTD. and that Respondent is the current registrant of the name. UK2 GROUP LTD. has verified that Respondent is bound by the UK2 GROUP 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 November 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2011 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@darienlake.com. Also on November 14, 2011, 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 December 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Respondent submitted a response a week late on December 12, 2011. Respondent titled the late response an “Additional Submission” in an attempt to extend the deadline for filing a response, which is not accepted by the Panel.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <darienlake.com> domain name is identical to Complainant’s DARIEN LAKE mark.
2. Respondent does not have any rights or legitimate interests in the <darienlake.com> domain name.
3. Respondent registered and used the <darienlake.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CNL Income Darien Lake, LLC, is a large resort and theme park based in New York, USA. Complainant owns a federal trademark registration for the DARIEN LAKE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. October 5, 2004 filed September 30, 2003; registered October 5, 2004). Complainant has also used the mark in conjunction with its resort since 1964.
Respondent, John Smith / Private Registration, registered the disputed domain name on November 6, 2000. The disputed domain name resolves to a website offering links to Complainant’s competitors in the resort and tourism industry.
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 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.”).
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 has established its rights in the DARIEN LAKE mark by registering it with the USPTO (Reg. No. October 5, 2004 filed September 30, 2003; registered October 5, 2004). Complainant has submitted sufficient evidence to establish that the mark is duly registered and that it is the owner of said registration. Therefore, the Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i) dating back to September 30, 2003. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); 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”).
Complainant claims that it has established its common law rights in the DARIEN LAKE mark by creating a secondary meaning for the mark in the resort and theme park business. Complainant states that it receives over 1 million visitors a year at its resort and theme park location. Complainant offers evidence indicating that it spent millions of dollars advertising and promoting its business under the DARIEN LAKE mark. Complainant also uses the mark as its own domain name. Therefore, the Panel finds that Complainant has established its common law rights in the DARIEN LAKE under Policy ¶ 4(a)(i) by continuous using the mark in conjunction with its business and for over a period of 47 years. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also 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)).
Respondent’s disputed domain name is identical to Complainant’s DARIEN LAKE mark. The <darienlake.com> domain name includes the entire mark, merely removing the space between the terms of the mark and including the generic top-level domain (“gTLD”) “.com.” The Panel finds that the changes fail to differentiate the disputed domain name from Complainant’s DARIEN LAKE mark in any way, thereby making them identical under Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case against Respondent, effectively shifting the burden of proof under Policy ¶ 4(a)(ii) to Respondent. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent has failed to file a Response in this action which allows the Panel to assume that it lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will examine the record before making a determination regarding Respondent’s rights or legitimate interests in the disputed domain name in accordance with the factors listed in Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “John Smith / Private Registration.” There is no evidence to support a finding that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <darienlake.com> domain name resolves to a website offering links to Complainant’s competitors in the resort and theme park industry. Previous panels have determined that such a use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds accordingly.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name disrupts Complainant’s business, providing affirmative evidence of bad faith registration and use. Respondent’s disputed domain name resolves to a website offering links to third-party websites, many of which compete with Complainant in the resort and theme park industry. Internet users seeking out Complainant on the Internet may arrive at these linked sites and then purchase tickets to that theme park rather than Complainant’s. The Panel finds that Respondent’s disputed domain name disrupts Complainant’s business, and finds bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors in the theme park and resort industry. It is likely that Respondent generates revenue by collecting a click-through fee for each Internet user diverted to one of the linked sites. The Panel finds that Respondent registered and is using the disputed domain name to commercially gain and thus is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <darienlake.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 18, 2011
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