Atlanta Convention & Visitors Bureau, Inc. v. Domain Admin / Great Domain Names
Claim Number: FA1502001603955
Complainant is Atlanta Convention & Visitors Bureau, Inc. (“Complainant”), represented by Courtney P. Adams of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is Domain Admin / Great Domain Names (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlantanow.com>, registered with Domain.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2015; the Forum received payment on February 10, 2015.
On Feb 9, 2015, Domain.com, LLC confirmed by e-mail to the Forum that the <atlantanow.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 February 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2015 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@atlantanow.com. Also on February 12, 2015, 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 on March 4, 2015.
On March 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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" 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 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 alleges that it is the holder of the registration for ATLANTA NOW trademark with the USPTO, Registration No. 3,698,854, registered on October 20, 2009, some two years prior to the registration of the disputed domain name. Complainant alleges that the disputed domain name <atlantanow.com> and the Complainant’s registered trademark are confusingly similar. The Respondent merely adds the gTLD to its trademark to generate the disputed domain name. As such, Complainant alleges, Internet users are likely to reach the disputed domain name and be confused as to sponsorship or origin of what is posted on the disputed domain name.
Complainant also alleges that Respondent has no rights or legitimate interests in or to the disputed domain name and that it has engaged in bad faith use and registration of the same.
B. Respondent
Respondent claims that it “snagged” the disputed domain name on August 18, 2011. It asserts that it bid many times for the disputed domain name should it ever come available and on this date it did and it was able to out-bid other competitors for the disputed domain name.
Respondent vigorously asserts that it has not offered the disputed domain name for sale specifically to Complainant and that Respondent has “been using it continually since 2011 to offer people Atlanta links to info, products and services.” Response at 4. Respondent also seems to be alleging that the three year time lag between the time Respondent registered the disputed domain name and the receipt of the first cease and desist letter was unreasonable.
Although Respondent vigorously disputes central claim to Complainant’s Complaint, it offers no evidence to support those claims. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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.
The Complainant has used the appellation ATLANTA NOW since at least 2009 or two years prior to the Registrant obtaining the registration for the disputed domain name, <atlantanow.com>. Complainant alleges sufficient intermittent use of its trademark to secure a legitimate commercial interest in these proceedings.
Respondent has registered what amounts to the Complainant’s trademark plus the gTLD “.com.” Seeking to avoid responsibility for merely tacking on a gTLD at the end of another entity’s legitimate trademark is unreasonable. Complainant is right to rely on the panel opinion in Connections Academy, LLC v. bongjoosong, Nat. Arb. Forum FA100500132725 (July 29, 2010) for the proposition that the incorporation of another’s entire trademark into a disputed domain name will lead to a finding of confusing similarity.
Respondent does not dispute that the disputed domain name is confusingly similar to the Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Furthermore, it is clear that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has use and registration of the ATLANTA NOW trademark prior to Respondent’s registration of the disputed domain name. Complainant adopted and used the mark ATLANTA NOW on January 1, 1985 (Complaint Annex 5) and, by Respondent’s own admission, the Respondent acquired the registration for <atlantanow.com> on August 18, 2011.
Respondent is not commonly known by the disputed domain name. This Panel agrees that such a claim, even if it were made, is inherently suspect when the Respondent’s name sounds nothing like the disputed domain name.
Respondent has provided no evidence of its rights or legitimate interests in or to the disputed domain name. Respondent makes very important allegations which, if supported by any evidence, would certainly show that Respondent had some legitimate commercial interest in the disputed domain name. For example, Respondent states that “I've been using it continually since 2011 to offer people Atlanta links to info, products and services.” Response at 4. However, Respondent provides no evidence of such use. As such, it is merely an unsupported claim with no documented use.
In addition, from Respondent’s own admission, it claims that “I usually sell domains to the highest bidder. It is the best method I know to ensure the best possible website at a given Internet address.” Response at 3.
Further, Complainant alleges that the <atlantanow.com> web site a parked web site being offered for sale. Complainant alleges that Respondent attempts to direct Internet traffic away from Complainant by placing links to sites offering competitive services on <atlantanow.com>. The only evidence available to the Panel seems to support this claim. See Complainant’s Annex 10.
As such, this Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
This Panel agrees with Complainant that there are ample reasons in this matter to conclude that the Respondent has engaged in bad faith use and registration of the disputed domain name.
This Panel shall infer bad faith when, as here, the Respondent merely appropriates an entire trademark as its domain name and merely adds the gTLD “.com” at the end. Complainant does an excellent job pointing this Panel to very persuasive authority for this conclusion. See, e.g., Telstra Corp., Ltd., v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (Feb. 18, 2000).
Complainant alleges that, because Respondent adopted its trademark in total, this is evidence that it had actual knowledge of Complainant’s interests in or to the appellation ATLANTA NOW. Respondent claims that the mark is descriptive and therefore “weak”. As the trademark ATLANTA NOW had been registered on the Principal Register for two years by the time the Respondent acquired the disputed domain name (which is identical to the trademark save for the addition of the gTLD .com), it had constructive notice of its existence. In addition, Complainant provides actual evidence of its use of ATLANTA NOW as an indicator of it as the source of tourist information. Complainant Annex 6. As such, the Panel finds that Respondent had actual or constructive knowledge of Complainant’s interests in or to the trademark ATLANTA NOW when it acquired the registration for the disputed domain name.
Further, Complaint is right when it claims that ignoring Complainant’s reasonable requests for dialogue prior to filing a UDRP action implies bad faith use and registration. Here, Respondent completely ignored Complainant’s cease and desist letters. As such, it is reasonable for this Panel to conclude that it engaged in bad faith use and registration of the disputed domain name.
Finally, Respondent seems to be operating under the assumption that it is a legitimate business model to “snag” domain names which consist of trademarks held by others and offer them for resale. The Respondent seems to think that as long as it does not “specifically” offer the disputed domain name for sale to the trademark holder and UDRP Complainant, it is not engaging in bad faith use and registration and it has a legitimate commercial interest in do so.
Although Paragraph 4(b)(i) of the Policy does say that evidence of bad faith use and registration can be established by showing that the Respondent attempted to sell the disputed domain name “to the complainant who is the owner of the mark”, Paragraph 4(b)(ii) also states that evidence of bad faith can be shown by a Complainant when a Respondent has “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct.”
Most importantly, these two paragraphs are separated by the conjunction “or”. Therefore, these are two alternative ways to establish bad faith. Even more importantly here, by the Respondent’s own admission, it is engaged in a pattern of “snagging” domain names and reselling them. It bears repeating: “I usually sell domains to the highest bidder. It is the best method I know to ensure the best possible website at a given Internet address.” Response at 3. That is, Respondent seems to feel it knows how best to commercialize someone else’s trademark as a domain name and it has a right to do so. However, this position is inconsistent with the Policy.
Respondent apparently also argues that the Complainant engaged in unreasonable delay and therefore the Respondent can use and register the disputed domain name for any purpose. This argument is without merit. First, a delay of two years is not unreasonable. In fact, it is evidence that the Respondent was not using the disputed domain name in any legitimate commercial manner. Further, Respondent makes no showing of reliance on this delay. It, apparently, did not use the disputed domain name in anyway during the delay period in any legitimate commercial endeavor. Respondent further makes the novel claim that it should somehow be able to tack on the prior 18 years when the disputed domain name was not, according to the Respondent, put to its highest utilitarian value and not owned by Respondent.
Unfortunately for the Respondent, there is no place in the Policy or the UDRP that says the domain name should go to the entity that will put it to its highest utilitarian value. Rather, the Policy and the UDRP attempts to prevent a domain name registrant like the Respondent, from using another’s trademark (like the Complainant) to misdirect Internet traffic or:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Policy Para. 4(b)(iv). By Respondent claims that it provides information “to offer people Atlanta links to info, products and services.” Response at 4. Respondent offers no evidence to support this claim. Even if this claim were true, it would amount to an admission of the Respondent’s bad faith as it intentionally uses the disputed domain name which consists of a registered trademark of another to “intentionally attempt[…] to attract, for commercial gain, Internet users to [the Respondent’s] web site…”. Policy Para. 4(b)(iv).
Therefore, Respondent’s offer to sell the disputed domain name and its admission that it usually engages in this business, its redirecting Internet traffic away from Complainant, and failing to offer any evidence of commercial activity at the disputed domain name establishes that, under the totality of the circumstances, the Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <atlantanow.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
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