Lucian Lamar Sneed, individually and as Chairman, Georgia Tribe of Eastern Cherokee, Inc. v. Johnny Chattin
Claim Number: FA1502001607131
Complainant is Lucian Lamar Sneed, individually and as Chairman, Georgia Tribe of Eastern Cherokee, Inc. (“Complainant”), Georgia, USA. Respondent is Johnny Chattin (“Respondent”), represented by David S. Kennedy, Jr., Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thegeorgiatribeofeasterncherokee.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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2015; the Forum received payment on February 27, 2015.
On March 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thegeorgiatribeofeasterncherokee.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 March 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@thegeorgiatribeofeasterncherokee.com. Also on March 4, 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 and determined to be complete on March 13, 2015.
A timely Additional Submission was received from Complainant on March 17, 2015.
A timely Additional Submission was received from Respondent on March 23, 2015.
On March 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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 has made the following contentions:
1. Georgia Tribe of Eastern Cherokee, Inc. is a State recognized Indian Tribe and Native American charity.
2. Georgia Tribe of Eastern Cherokee, Inc. has been granted 501(c)(3) status from the United States Internal Revenue Service as a tax-exempt nonprofit organization.
3. Lucian Lamar Sneed is the Chairman of Georgia Tribe of Eastern Cherokee, Inc.
4. The name “Georgia Tribe of Eastern Cherokee” is registered as a trademark with the State of Georgia, belonging to Lucian Lamar Sneed, as Chairman of the Georgia Tribe of Eastern Cherokee, Inc.
5. Georgia Tribe of Eastern Cherokee, Inc. operates the web site <georgiatribeofeasterncherokee.com>.
6. In December 2000, Respondent was enjoined by the Superior Court of Lumpkin County, Georgia from using the name Georgia Tribe of Eastern Cherokee.
B. Respondent
Respondent has made the following contentions:
“The Georgia Tribe of Eastern Cherokee” was legislatively recognized by the State of Georgia in the year 1993.
C. Additional Submissions
Both Complainant and Respondent have provided additional submissions consisting primarily of personal attacks on each other.
1. Georgia Tribe of Eastern Cherokee, Inc. is a State recognized Indian Tribe and Native American charity.
2. Georgia Tribe of Eastern Cherokee, Inc. has been granted 501(c)(3) status from the United States Internal Revenue Service as a tax-exempt nonprofit organization.
3. Lucian Lamar Sneed is the Chairman of Georgia Tribe of Eastern Cherokee, Inc.
4. The name “Georgia Tribe of Eastern Cherokee” is registered as a trademark with the State of Georgia, belonging to Lucian Lamar Sneed, as Chairman of the Georgia Tribe of Eastern Cherokee, Inc.
5. Georgia Tribe of Eastern Cherokee, Inc. operates the web site <georgiatribeofeasterncherokee.com>.
6. In December 2000, Respondent was enjoined by the Superior Court of Lumpkin County, Georgia from using the name Georgia Tribe of Eastern Cherokee.
7. “The Georgia Tribe of Eastern Cherokee” was legislatively recognized by the State of Georgia in the year 1993.
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.
Under paragraph 4(a)(i) of the Policy, a complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Complainant has provided evidence that it is the owner of a State of Georgia registration of the mark “Georgia Tribe of Eastern Cherokee.” The ownership of a valid trademark is sufficient to satisfy the threshold requirement of having trademark rights. See F. Hoffman-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629. Complainant has thus established trademark rights under paragraph 4(a)(i), dating back to the listed initial registration date of March 1, 2004.
To satisfy paragraph 4(a)(i), the disputed domain name must be identical or confusingly similar to the Complainant’s trademark. Here, the disputed domain name consists of (i) the word “the”; (ii) Complainant’s registered State of Georgia mark; and (iii) the generic Top-Level-Domain (“gTLD”) suffix “.com”. The addition of a generic term to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. See eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307. The inclusion of the word “the” in the disputed domain is therefore not sufficient to avoid confusing similarity. gTLD suffixes may be disregarded for purposes of determining identity or confusing similarity. See Pomellato S.p.A. v. Tonetti, WIPO Case No. D2000-0493. The Panel concludes that Complainant has satisfied the first element of the Policy.
Under paragraph 4(a)(ii), a complainant must first show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain. After such a showing, the burden of rebuttal shifts to the respondent to show that it does have rights or legitimate interests. As expressed in paragraph 4(c)(i), rights or legitimate interests in a domain name may be demonstrated by showing that “before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
In the instant case, Complainant provided evidence that, in the year 2000, Respondent was permanently enjoined from using the term “Georgia Tribe of Eastern Cherokee” and from holding himself out as a member of such an organization. See Georgia Tribe of Eastern Cherokee v. Johnny Chattin, et al., No. 99-cv-078-DB (Sup. Ct. of Lumpkin County Dec. 21, 2000). Since Respondent appears to be enjoined from operating the disputed domain, Respondent is unable to utilize the domain in connection with a bona fide offering of goods or services. Therefore, the Panel concludes that Complainant has satisfied the second element of the Policy.
Under paragraph 4(a)(iii), a complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, are evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) the 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s web site or location or of a product or service on the respondent’s web site or location.
In the instant matter, Respondent appears to be operating the disputed domain in violation of a court-ordered permanent injunction. Complainant has alleged, and provided some plausible evidence, that Respondent registered the disputed domain primarily for the purpose of disrupting the business of the Complainant. Complainant has alleged, and provided some plausible evidence, that Respondent registered and operates the disputed domain to solicit funds from individuals who intend to visit the Complainant’s web page. Respondent has failed to rebut the showings made by Complainant, and in particular the showing that Respondent has been enjoined by a court of competent authority from using or holding himself out under the name reflected in the disputed domain name.
Accordingly, the Panel concludes that Complainant has satisfied the third element of the Policy.
RESPONDENT’S ALLEGATIONS OF REVERSE DOMAIN NAME HIJACKING
Complainant having prevailed on all three elements of the Policy, Respondent’s claim of Reverse Domain Name Hijacking is denied as moot.
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thegeorgiatribeofeasterncherokee.com> domain name TRANSFERRED from Respondent to Complainant.
Michael A. Albert Panelist
Dated: April 16, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page