EverBank v. Scarlett May
Claim Number: FA1503001610207
Complainant is EverBank (“Complainant”), Florida, USA. Respondent is Scarlett May (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <everbank-field.com>, <everbank-field.info>, <everbank-field.net>, <everbank-field.org>, <everbankfield-tickets.com>, <everbankfield-tickets.info>, <everbankfield.info>, <everbankfield.org>, <jaxevents-everbankfield.com>, <yieldpledge.com>, and <yield-pledge.com>, registered with Godaddy.Com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2015; the Forum received payment on March 18, 2015.
On March 19, 2015, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <everbank-field.com>, <everbank-field.info>, <everbank-field.net>, <everbank-field.org>, <everbankfield-tickets.com>, <everbankfield-tickets.info>, <everbankfield.info>, <everbankfield.org>, <jaxevents-everbankfield.com>, <yieldpledge.com>, and <yield-pledge.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@everbank-field.com, postmaster@everbank-field.info, postmaster@everbank-field.net, postmaster@everbank-field.org, postmaster@everbankfield-tickets.com, postmaster@everbankfield-tickets.info, postmaster@everbankfield.info, postmaster@everbankfield.org, postmaster@jaxevents-everbankfield.com, postmaster@yieldpledge.com, and postmaster@yield-pledge.com. Also on March 20, 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 April 9, 2015.
Complainant submitted a timely Additional Submission, which was received on April 14, 2015.
On April 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has registered both the EVERBANK FIELD mark (e.g., Reg. No. 3,955,082, registered May 3, 2011), and the YIELD PLEDGE mark (e.g., Reg. No. 3,940,874, registered Apr. 5, 2011) with the United States Patent and Trademark Office (“USPTO”). The EVERBANK FIELD mark is used on or in connection with entertainment services related to professional football games and other sports, while the YIELD PLEDGE mark is used on or in connection with banking services. The <everbank-field.com>, <everbank-field.info>, <everbank-field.net>, <everbank-field.org>, <everbankfield-tickets.com>, <everbankfield-tickets.info>, <everbankfield.info>, <everbankfield.org>, and <jaxevents-everbankfield.com> domain names are confusingly similar to the EVERBANK FIELD mark because they contain the entire mark and differ only by the addition of generic terms, punctuation, or generic top-level domains. The <yieldpledge.com> and <yield-pledge.com> domain names are confusingly similar to the YIELD PLEDGE mark because they contain the entire mark and differ only by the addition of punctuation and the top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known as the disputed domain names nor in possession of licensing rights. Respondent has shown no demonstrable preparations to use the disputed domain names in connection with a bona fide offering or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use by offering the domain names for sale.
B. Respondent
Respondent makes no contentions with regards to Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), or Policy ¶ 4(a)(iii). However the record contains an extensive amount of emails sent by Respondent most of which are irrelevant and some which appear to be misdirected to the Forum, such as emails containing snap shots which bear no apparent relationship to the domain names, the dispute, or the parties.
Respondent claims “the only legitimate interest at first with the domains was to protect Ever Bank on the Internet. I called and told them that the names were available and they said were not interested so I purchased them.”
Respondent has not registered or used the disputed domain names in bad faith, and Complainant is harassing her by filing this complaint.
Respondent has not used the domain names to address a website or otherwise use for an Internet related purpose.
Respondent had agreed to transfer the domain name at times, but at other times states she will not transfer the domain names.
Respondent has never used the names or purchased them in bad faith.
C. Additional Submissions
In its Additional Submissions Complainant contends as follows:
Response does not respond specifically to the statements and allegations made in the original complaint. Respondent fails to provide information required in UDRP Rule 5 ¶ 5(b)(ii)-(vi), and that it fails to state that a copy of the Response was sent to Complainant and did not conclude with the prescribed certification. The Panel should give no weight to any statements in the Response in making its decision in this proceeding.
Complainant has rights in the EVERBANK FIELD and YIELD PLEDGE marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent offered to sell the at-issue domain names to Complainant for an amount in excess of its relevant out of pocket costs.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant has registered both the EVERBANK FIELD (e.g., Reg. No. 3,955,082, registered May 3, 2011), and the YIELD PLEDGE marks (e.g., Reg. No. 3,940,874, registered Apr. 5, 2011) with the USPTO. The EVERBANK FIELD mark is used on or in connection with entertainment services related to professional football games and other sports, while the YIELD PLEDGE mark is used on or in connection with banking services. Complainant’s USPTO registrations establishes its rights in the EVERBANK FIELD and YIELD PLEDGE marks for the purposes of the Policy ¶4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
In eight of the ten at-issue domain names - <everbank-field.com>, <everbank-field.info>, <everbank-field.net>, <everbank-field.org>, <everbankfield-tickets.com>, <everbankfield-tickets.info>, <everbankfield.info>, <everbankfield.org>, <jaxevents-everbankfield.com>, <yieldpledge.com>, and <yield-pledge.com>- Respondent removes the space between “everbank” and “field” in Complainant’s EVERBANK FIELD trademark or replaces the space with a hyphen. Respondent then appends a top level domain name to the resulting strings. In forming the <jaxevents-everbankfield.com> Respondent prefixes the generic terms “jaxevents” and a hyphen to Complainant’s EVERBANK FIELD trademark -less its space- and appends the top level domain name “.com” thereto. Similarly, in forming the remaining two at-issue domain names -<yieldpledge.com> and <yield-pledge.com>- Respondent removes the space between the terms in Complainant’s YIELD PLEDGE trademark or replaces it with a hyphen, and adds the top-level domain name “.com.” The subsequent differences between each domain name and Complainant’s relevant trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that each at-issue domain name is confusingly similar to a mark in which Complainant’s has rights. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also, Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also, Am. Int’l Group, Inc. v. Domain Admin. Ltd. FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore … the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
WHOIS information for each of the at-issue domain names lists “Scarlett May” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the any of the domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent has shown no demonstrable preparations to use any at-issue domain name. Moreover and as discussed below, the Respondent offered to sell the domain names to Complainant for an amount in excess of out-of-pocket costs. Using the at-issue domain names in this manner 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Each domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
The Panel notes that although by an objective standard there appears to be bad faith under the Policy, it is clear from the litany of emails that Respondent did not believe that her actions in registering and holding the domain names should be considered in bad faith. Moreover, Respondent, via some of her emails, indicates that she desired to transfer the domain names to Complainant but was unable to do so because of the transfer lock placed on the domain names by the registrar. It is thus unfortunate that the parties were together unable to effectuate the transfer of the domain names in advance of the instant proceeding.
Notwithstanding the foregoing, Complainant shows that Respondent, at least once, attempted to sell the disputed domain name to Complainant. In an email sent from Respondent to Complainant, Respondent states that “The ‘standard rate’ is $250.00 per name. That is a fair price. From your insults its [sic] now $450.00 per name.” Without more, Respondent’s behavior with regard to the confusingly similar at-issue domain names demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(i) and allows an inference that the confusingly similar domain names were registered with an eye to selling them to Complainant in the future. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Respondent should understand that the Panel’s decision here is in no way a reflection on her character or her moral turpitude, but rather the result of what the Panel perceives are the facts of the case and the application of the operative UDRP Policy and Rules to such facts.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <everbank-field.com>, <everbank-field.info>, <everbank-field.net>, <everbank-field.org>, <everbankfield-tickets.com>, <everbankfield-tickets.info>, <everbankfield.info>, <everbankfield.org>, <jaxevents-everbankfield.com>, <yieldpledge.com>, and <yield-pledge.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 23, 2015
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