Brookdale Senior Living Inc. v. Domain Administrator / DVLPMNT MARKETING, INC.
Claim Number: FA1401001540964
Complainant is Brookdale Senior Living Inc. (“Complainant”), represented by Robert L. Brewer of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is Domain Administrator / DVLPMNT MARKETING, INC. (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brookdaleassistedliving.com>, registered with DNC Holdings, Inc..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on January 27, 2014; the National Arbitration Forum received payment on January 27, 2014.
On January 31, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <brookdaleassistedliving.com> domain name is reg-istered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 February 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brookdaleassistedliving.com. Also on February 4, 2014, 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 February 27, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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.
A. Complainant
Complainant is the largest operator of senior living communities in the United States, with more than 550 senior living and retirement communities.
Complainant uses the BROOKDALE mark to provide and promote its services across all sectors of the senior living industry, including residential retirement, assisted living, and long-term care facilities.
Complainant holds a registration for the BROOKDALE service mark, which is on file with the United States Patent and Trademark Office ("USPTO") (Registry No. 3,007,286, registered October 18, 2005.
Respondent registered the <brookdaleassistedliving.com> domain name on December 26, 2005.
The domain name is confusingly similar to Complainant’s BROOKDALE mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed otherwise authorized or by Complainant to use the domain name.
Respondent does not use the <brookdaleassistedliving.com> domain name in connection with a bona fide offering of goods or services.
The domain name resolves to a website featuring links to third-party websites, including those of direct competitors of Complainant.
Respondent presumably receives click-through fees for each Internet user diverted to its website through the promoted links.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent benefits commercially from its use of the BROOKDALE mark by confusing Internet users as to the possibility of Complainant’s association with or sponsorship of the resolving website.
Respondent registered the <brookdaleassistedliving.com> domain name with knowledge of Complainant’s rights in the BROOKDALE mark.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the BROOKDALE service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark auth-ority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), finding that a UDRP complainant had established rights to its mark under Policy ¶ 4(a)(i) through its federal trademark registration.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Saint Kitts and Nevis). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complain-ant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction). To the same effect, see Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007). See also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or oper-ates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude that the <brookdaleassistedliving.com> domain name is confusingly similar to Com-plainant’s BROOKDALE service mark. The domain name includes the entire BROOKDALE mark, and merely adds the generic terms “assisted” and “living,” which refer to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) (“.com”). These alterations to the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where the <kohlerbaths.com> domain name contained a UDRP complainant’s entire mark, while adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding, because every domain name requires a gTLD, that adding a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <brookdaleassistedliving.com>, and that Respondent is not licensed or otherwise authorized to use Complainant’s BROOKDALE service mark. Moreover, the per-tinent WHOIS record identifies the registrant of the disputed domain name only as “Domain Administrator / DVLPMNT,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legit-imate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel there concluding that a respondent was not commonly known by disputed domain names as pro-vided in Policy ¶ 4(c)(ii) where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was com-monly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name to resolve to a website featur-ing links to third party websites, including those of direct competitors of Com-plainant, and that it may be presumed that Respondent receives click-through fees for each Internet user diverted to its resolving website through the promoted links. This use of the disputed domain name 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). See 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).
Accordingly, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the dis-puted <brookdaleassistedliving.com> domain name as alleged in the Complaint disrupts Complainant’s business. This stands as evidence of bad faith in the registration and use of the domain name under ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are likewise convinced by the evidence that Respondent’s employment of the <brookdaleassistedliving.com> domain, which is confusingly similar to Complain-ant’s BROOKDALE service mark, creates confusion among Internet users as to the possibility of Complainant’s association with or sponsorship of the website resolving from the disputed domain name, from which Respondent seeks to profit. Under Policy ¶ 4(b)(iv), this too is proof of bad faith on the part of Re-spondent in the registration and use of the domain name. See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005):
The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Re-spondent’s domain name is identical to Complainant’s … mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the … domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, the record amply demonstrates that Re-spondent knew of Complainant and its rights in the BROOKDALE service mark when it registered the <brookdaleassistedliving.com> domain name. This is in-dependent evidence of Respondent’s bad faith in registering the domain name. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (concluding that, while constructive knowledge may be insufficient to sup-port a finding of bad faith, where the circumstances indicate that a respondent had actual knowledge of a UDRP complainant’s mark when it registered a con-fusingly similar domain name, bad faith registration may be found).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <brookdaleassistedliving.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 13, 2014
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