Shaunda A. Gazdzicki DBA The Ministry at San Antonio and William C. Sanders v. Darron Lapointee
Claim Number: FA1507001629289
Complainant is Shaunda A. Gazdzicki DBA The Ministry at San Antonio and William C. Sanders (“Complainant”), Texas, USA. Respondent is Darron Lapointee (“Respondent”), represented by Brian Knowlton, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marriageislandweddingofficiant.com>, <marriage-island.com>, and <marriageislandweddings.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.
Scott R. Austin as Panelist
Complainant submitted a Complaint to the Forum electronically on July 16, 2015; the Forum received payment on July 16, 2015.
On July 17, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marriageislandweddingofficiant.com>, <marriage-island.com>, and <marriageislandweddings.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 July 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@marriageislandweddingofficiant.com, postmaster@marriage-island.com, postmaster@marriageislandweddings.com. Also on July 21, 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 August 10, 2015.
A timely Additional Submission was received from Complainant on August 17, 2015
A timely Additional Submission was received from Respondent on August 23, 2015
On August 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Since approximately 2008, Complainant has owned and operated a business for providing civil marriage ceremony services in San Antonio, Texas, which it operates today.
2. In 2008, Complainant retained and directed Respondent to create a web site using the disputed domain name <marriageislandweddings.com>, purchased and registered by Respondent in July 2008, but who ultimately refused Complainant’s demands to turn over the domain and wrongfully withheld transfer of the disputed domain name Respondent had been directed to purchase on Complainant’s behalf, as well as denying Complainant’s access to the completed site, even after Complainant had paid Respondent its final payment for its services and the domain name in August 2010.
3. Complainant purchased and registered an additional domain name <marriageisland.com> and retained an additional web developer to create the additional site using that domain name when Respondent was non-responsive to requests to transfer the <marriageislandweddings.com> or provide access to the site it was paid to create at <marriageislandweddings.com> as agreed even though final payment for the domain had been made.
4. Respondent was fully aware of Complainant’s use of both sites and took no action to challenge or prohibit Complainant’s advertising, growth and development of its wedding services business using the <marriageislandweddings.com> site and domain name until July 2015.
5. Complainant has common law trademark rights in the United States with respect to the marks MARRIAGE ISLAND WEDDING OFFICIANTS,
MARRIAGE ISLAND and MARRIAGE ISLAND WEDDINGS (each a “Mark” and collectively, the “Marks”) prior to the date of registration of the disputed domain names and at all times since.
6. Complainant has been continuously using and promoting the Marks since at least as early as 2008 as the source for providing its wedding services to hundreds of couples in San Antonio, Texas.
7. Complainant has registered the MARRIAGE ISLAND WEDDING OFFICIANTS mark with the United States Patent and Trademark Office ("USPTO"), Reg. No. 3,950,356, filed July 22, 2010, and registered April 26, 2011, for “Conducting civil marriage ceremony services; Providing and conducting non-denominational, non-religious civil marriage ceremonies” and referencing a first use in commerce date of May 1, 2008.
8. Complainant and its services were exclusively identified on the websites <marriageislandweddings.com> and MarriageIsland.com using the Marks and from 2008-2015, the information, phone numbers and services on both sites were identical and exclusively related to Complainants;
9. Complainant’s domain name <marriageisland.com> was registered on September 27, 2007 and is still registered to Complainant today.
10. Respondent registered the domain name <marriage-island.com> on April 14, 2010, over two and a half years after Complainant’s <marriageisland.com> domain name was registered and Complainant began using its Marriage Island Mark.
11. Respondent’s <marriage-island.com> domain name is confusingly similar to the Marks, and but for the “-“ inserted between the two words comprising Complainant’s Mark and the addition of the top level domain “.com”, virtually identical to Complainant’s MARRIAGE ISLAND Mark.
12. While Complainant utilized the domain <marriageislandweddings.com> since at least as early as 2008 in connection with its bona fide offering of wedding ceremony services, during this same time Respondent was not operating any business related to wedding and/or officiant services.
13. Respondent registered the <marriageislandweddingofficiant.com> domain name on January 8, 2015, nearly seven (7) years after Complainant began using the Marks in commerce.
14. Respondent’s <marriageislandweddingofficiant.com> domain name is confusingly similar to the Marks, and but for the final “s”, it is virtually identical to Complainant’s MARRIAGE ISLAND WEDDING OFFICIANTS Mark registered on April 26, 2011, with the USPTO, nearly 4 years before Respondent registered this disputed domain name.
15. Respondent’s <marriage-island.com> domain name is confusingly similar to the Marks, and but for the “-“ inserted between the two words comprising Complainant’s Mark, virtually identical to Complainant’s MARRIAGE ISLAND Mark.
16. Complainant through its longstanding use of the Marks has invested in and operated its successful business specializing in providing wedding services to hundreds of couples in San Antonio, Texas over 7 years.
17. Respondent, Darren Lapointe, an individual, listed as the registrant for each of the disputed domain names, is not commonly known by the <marriageislandweddingofficiant.com> name, the <marriage-island.com> name or the <marriageislandweddings.com> name, nor has Complainant authorized Respondent’s use of the Marks.
18. Respondent, Darron Lapointe, is not, nor ever has been a member or officer of Marriage Island, LLC, is not and never has been a registered proprietor, registered partner, or officer of the DBA The Ministry at San Antonio.
19. Respondent registered the domain names and is hosting active websites at these domains primarily for the purpose of disrupting Complainant’s business showing Respondent has engaged in bad faith registration and use.
20. Respondent registered and is using the disputed domain names <marriageislandweddingofficiant.com>, <marriage-island.com>, and <marriageislandweddings.com> in bad faith.
21. Respondent has attempted to capitalize on Complainant’s goodwill by using the mark to lure users to the disputed domain names respective associated websites and away from Complainant’s web sites.
22. Respondent’s inactive holding of the disputed domain name <marriage-island.com> for five years evinces bad faith.
23. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s Marks.
24. The disputed domain name <marriageislandweddings.com> used to resolve to a webpage displaying Complainant’s contact information, but now resolves to a webpage where Respondent is operating a competing business using Respondent’s contact information.
B. Respondent makes the following contentions:
1. Respondent does not make specific contentions with regard to confusing similarity.
2. Respondent has rights in the <marriage-island.com> and <marriageislandweddings.com> domain names that predate Complainant’s rights in Complainant’s marks.
3. Respondent has rights or legitimate interests because it is making a bona fide offering of goods or services.
4. Complainants’ actions constitute bad faith and reverse domain name hijacking.
C. Complainant’s Additional Submission – A Reply to Respondent’s Contentions
1. Respondent did not use the disputed domain name <marriageislandweddings.com> until 2015 when he changed the marriageislandweddings.com site to alter the page that had exclusively been used by Complainant.
2. On July 16, 2015, Respondent uploaded an entirely new website to MarriageIslandWeddings.com mimicking the look and content of the MarriageIsland.com website, owned and operated solely by Complainant Shaunda Gazdzicki.
3. Respondent hijacked Complainants domains and began using them in an effort to divert customers for his own gain;
4. On or about January 4, 2015 Respondent informed Complainant that he had received an offer of $25,000.00 for the disputed domain name <weddingislandweddings.com>, which significantly exceeds the cost of acquiring and maintaining the disputed domain name, and then asked Complainant how much she was going to give him and that he wanted more than the reported offer which is evidence of bad faith.
5. Respondent’s intention to sell the Domain Name to a third party shows that Respondent lacks rights and legitimate interests in the domain name.
6. Shortly thereafter, on January 8, 2015 Respondent purchased the domain <marriageislandweddingofficiant.com further infringing on Complainants Marks.
7. Although the domain name <marriage-island.com> was registered to Respondent in 2010, the first posting of a website at the domain <marriage-Island.com> occurred in 2015 when Respondent created a page for a competing company.
8. Respondent not only published infringing websites at the disputed domain names, but also began answering his phone with the name “Marriage Island”.
9. On July 22, 2015 Respondent filed a Petition for Cancellation of Complainants registered service mark with the United States Patent and Trademark Office, Trademark Trial and Appeal Board.
10. On August 2, 2015 Respondent withdrew his request and the proceeding was terminated.
D. Respondent’s Additional Submission – A Reply to Complainant’s Additional Submission
1. Respondent has rights or legitimate interests because it is making a bona fide offering of goods or services.
2. Respondent has not acted in bad faith because the domain names were registered in connection with a business in which Respondent has rights.
3. The dispute brought by Complainant is Reverse Domain Hijacking.
Complainant has been continuously using and promoting the Marks since at least as early as 2008 as the source of services civil marriage ceremony services.
Complainant asserted it first retained Respondent for web site services and directed him to purchase the domain name marriageislandweddings.com and provided evidence of final payment in 2010 for Respondents services to develop Complainant’s web site on that domain name purchased by Respondent for Complainant, but which Respondent then refused to transfer to Complainant, forcing Complainant to purchase an additional domain name <marriageisland.com> and retain an additional web developer to create the additional site using that domain name, which assertions Respondent has not refuted.
Complainant’s mark MARRIAGE ISLAND WEDDING OFFICIANTS was in use in the U.S nearly seven (7) years before Respondent registered its disputed domain name on January 8, 2015.
Complainant has established trademark rights in its registered mark MARRIAGE ISLAND WEDDING OFFICIANTS mark, Reg. No. 3,950,356, filed July 22, 2010, and registered with the USPTO on April 26, 2011, for “Conducting civil marriage ceremony services; Providing and conducting non-denominational, non-religious civil marriage ceremonies,” referencing a first use in commerce date of May 1, 2008.
Complainant’s Mark MARRIAGE ISLAND WEDDING OFFICIANTS,
MARRIAGE ISLAND and MARRIAGE ISLAND WEDDINGS are comprised of distinctive terms which are suggestive of Complainant’s civil marriage ceremony services but not descriptive or generic.
Respondent and Complainant are both based in the United States and as such Respondent was aware of Complainant’s use of the Marks at least 2 and one half years prior to Respondent’s registration of the disputed domain name <marriage-island.com> and 7 years prior to its use by Respondent; at least 7 years prior to Respondent’s registration of the disputed domain name <marriageislandweddingofficiant.com>; and at least 7 years prior to Respondent’s conversion of the use of the disputed domain name purchased by Respondent on behalf of Complainant, <marriageislandweddings.com>, by uploading an entirely new website to that disputed domain name on July 16, 2015, mimicking the look and content of Complainant’s <marriageisland.com.> website.
Complainant has asserted facts and submitted evidence establishing Complainant’s common law trademark rights in the Marks through advertising at its websites, from 2008 using the Marks supporting over 7 years of continuous use.
The disputed domain name, <marriageislandweddingofficiant.com> , is confusingly similar to Complainant’s registered MARRIAGE ISLAND WEDDING OFFICIANTS mark because it incorporates Complainant’s mark in its entirety in the disputed domain name, but for the final “s” and adds only the generic TLD “.com.” As such, this addition does not distinguish the disputed domain name from Complainant’s Marks.
The disputed domain name, <marriageislandweddings.com> is confusingly similar to Complainant’s MARRIAGE ISLAND WEDDING OFFICIANTS registered mark because it incorporates the initial three terms of Complainant’s Mark in their entirety in the disputed domain name, omitting only the final common term “officiants” and adds only an “s” to WEDDING and the generic TLD “.com.” As such, this does not distinguish the disputed domain name from Complainant’s mark.
The disputed domain name <marriage-island.com> domain name is confusingly similar to Complainant’s MARRIAGE ISLAND WEDDING OFFICIANTS registered mark because it incorporates the initial two terms of Complainant’s mark in their entirety in the disputed domain name, adding only “-“ inserted between the two words comprising the initial two terms of Complainant’s registered Mark and the addition of the generic TLD “.com.”; this disputed domain is also virtually an identical typosquatting version of Complainant’s <marriageisland.com> domain name and MARRIAGE ISLAND Mark.
Complainant’s evidence submitted in Exhibit E to its Additional Submission shows the WHOIS lookup data for Complainant’s domain name <marriageisland.com> lists Complainant Shaunda Gazdzicki, individually, under the heading “REGISTRANT NAME” and lists Complainant’s assumed name or d/b/a, The Ministry at San Antonio, under the heading “REGISTRANT ORGANIZATION”.
Respondent alleges a partnership with Complainant, but other than a checked box on a State of Texas Assumed Name application for River City Event Planners, Respondent shows no evidence of a partnership agreement or evidence sufficient to show transfer or ownership by such partnership in any of Complainant’s domain names or Respondent’s disputed domain names as assets of such partnership operating under the assumed name River City Event Planners.
Respondent’s WHOIS information for each of the disputed domain names under the heading “REGISTRANT NAME” identifies only Respondent Darron Lapointee, individually, and lists nothing under “REGISTRANT ORGANIZATION”. None of the registration WHOIS data provided to the Panel for the disputed domain names lists Respondent’s alleged partnership under the assumed name River City Event Planners or any other party to this proceeding.
Respondent is not commonly known by Complainant’s Marks MARRIAGE ISLAND WEDDING OFFICIANTS, MARRIAGE ISLAND and MARRIAGE ISLAND WEDDINGS, nor is Respondent licensed by Complainant to use any of the Marks.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Respondent has offered the disputed domain name for sale at a premium above cost.
The disputed domain name <marriageislandweddings.com> that had been used for many years to resolve to a webpage displaying Complainant’s contact information, has due to the actions of Respondent since July 16, 2015 resolved to a webpage mimicking the look and content of Complainant’s web site where Respondent is operating a competing business using Respondent’s contact information.
Respondent registered and is using the disputed domain names <marriageislandweddingofficiant.com>, <marriage-island.com>, and <marriageislandweddings.com> in bad faith.
A finding of reverse domain name hijacking is not warranted as Complainant is not acting 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 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.
Identical and/or Confusingly Similar: Policy ¶ 4(a)(i)
The at-issue domain name is confusingly similar to a mark in which the
Complainant has trademark rights.
Complainant has registered the mark MARRIAGE ISLAND WEDDING OFFICIANTS with the United States Patent and Trademark Office ("USPTO"), Reg. No. 3,950,356, filed July 22, 2010, and registered April 26, 2011, for “Conducting civil marriage ceremony services; Providing and conducting non-denominational, non-religious civil marriage ceremonies” and referencing a first use in commerce date of May 1, 2008. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The Panel also notes that Complainant has asserted it first retained Respondent in 2008 for web site services and directed him to purchase the domain name marriageislandweddings.com and provided evidence of final payment in 2010 for Respondents services to develop Complainant’s web site on that domain name purchased by Respondent for Complainant, but which Respondent then refused to transfer to Complainant, forcing Complainant to use an additional domain name <marriageisland.com> and retain an additional web developer to create the additional site using that domain name, which assertions Respondent has not refuted. The Panel also notes Respondent was aware of Complainant’s use of both sites and took no action to challenge or prohibit Complainant’s advertising, growth and development of its wedding services business using the <marriageislandweddings.com> site and domain name until July 16, 2015, when Respondent uploaded an entirely new website to that disputed domain name, mimicking the look and content of Complainant’s <marriageisland.com.> website.
The panel finds that based on the evidence submitted Complainant registered its domain name <marriageisland.com> on September 26, 2007 and Respondent registered on Complainants behalf <marriageislandweddings.com> on July 20, 2008 and established a site displaying Complainant’s marks. As such the panel finds that Complainant began using the Marks at least as early as May 1, 2008 on its web site as set forth in its registration for MARRIAGE ISLAND WEDDING OFFICIANTS and has since at least as early as September 26, 2007, used the Marks MARRIAGE ISLAND and MARRIAGE ISLAND WEDDINGS.
In order to acquire common law rights in a trademark under the UDRP, Complainant must show that the mark has acquired secondary meaning. Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). Complainant’s Marks MARRIAGE ISLAND WEDDING OFFICIANTS, MARRIAGE ISLAND and MARRIAGE ISLAND WEDDINGS are comprised of distinctive terms which are suggestive of Complainant’s civil marriage ceremony services but not descriptive or generic. Complainant claims the mark has acquired considerable distinctiveness due to Complainant’s longstanding use, advertising, and sales and has provided evidence of online advertising in exhibits to its Amended Complaint and Additional Submission and the specimens submitted with Complainant’s applications for U.S. trademark registration as filed with the USPTO. Complainant has asserted facts and submitted evidence establishing Complainant’s common law trademark rights in the Marks through advertising at its websites, from 2008 using the Marks supporting over 7 years of continuous use. As a result, the Panel finds that Complainant has demonstrated continuous use of the MARRIAGE ISLAND WEDDING OFFICIANTS, MARRIAGE ISLAND and MARRIAGE ISLAND WEDDINGS marks to promote its wedding services and the subsequent acquisition of secondary meaning that establish Complainant’s common law rights in the marks for the purposes of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding complainant’s continuous and ongoing use of its mark for many years in association with complainant and its tuxedo rental services was sufficient to establish secondary meaning for common law rights to exist); Cybertania, Inc. v. Right Mobile, Inc. Do-main Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding complainant had acquired secondary meaning sufficient to establish common law rights in a mark under Policy ¶ 4(a)(i) where that complainant had invested substantial resources in promoting the goods and services marketed under the mark over an extended period).
Complainant argues that the <marriageislandweddingofficiant.com>, <marriage-island.com>, and <marriageislandweddings.com> domain names are confusingly similar to the MARRIAGE ISLAND WEDDING OFFICIANTS trademark. For purposes of clarity, Complainant’s arguments as to confusing similarity will be addressed in separate paragraphs below.
Complainant notes that all of the <marriageislandweddingofficiant.com> domain name merely omits the letter “s” and adds the gTLD “.com.” As a general rule, the gTLD “.com” can never distinguish a domain name from the trademark at issue, nor can the elimination of spaces. See 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 panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Also, prior panels have established a confusing similarity where the domain name contains the entire mark and merely omits the letter “s.” See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Thus, the Panel finds that the <marriageislandweddingofficiant.com> domain name is confusingly similar to the MARRIAGE ISLAND WEDDING OFFICIANTS mark.
Complainant notes that the disputed domain name <marriage-island.com> contains the initial two terms comprising the dominant portion of the MARRIAGE ISLAND WEDDING OFFICIANTS mark and merely omits the words “wedding” and “officiants,” while also adding a hyphen and the gTLD “.com.” Prior panels have found the addition of hyphens to provide no distinguishing relief for the respondent. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). As noted above, adding the gTLD “.com” also provides no distinguishing relief. Panels have also established a confusing similarity where the domain name contains the entire mark and omits certain words, expecially the final common terms in a multi-term mark. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Therefore, the Panel finds that omission of the words “wedding” and “officiants” to be of no consequence, and finds that the <marriage-island.com> domain name is confusingly similar to the MARRIAGE ISLAND WEDDING OFFICIANTS mark.
Complainant further notes that the <marriageislandweddings.com> domain name contains the dominant portion of the mark and merely omits the word “officiants,” while also adding an ”s” and the gTLD “.com.” Once again, a gTLD such as “.com” will not distinguish a domain name from the trademark at issue, nor will the elimination of spacing between words. Panels have also established a confusing similarity where the domain name at issue merely omits the letter “s” or a single final and descriptive word from the trademark such as “officiant”. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark);see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Thus, based on the foregoing the Panel finds, as it did with the prior two disputed domain names, that the disputed domain name <marriageislandweddings.com> is confusingly similar to the MARRIAGE ISLAND WEDDING OFFICIANTS trademark and confusingly similar, if not virtually identical to Complainants common law marks MARRIAGE ISLAND and MARRIAGE ISLAND WEDDINGS pursuant to Policy ¶ 4(a)(i).
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not commonly
known by any of the disputed domain names, <marriageislandweddingofficiant.com>, <marriage-island.com>, and <marriageislandweddings.com> name, nor has Complainant authorized Respondent’s use of the Marks.
Respondent alleges a partnership with Complainant, but other than a checked box for general partnership on a State of Texas Assumed Name application for River City Event Planners, Respondent shows no evidence of a partnership agreement or evidence sufficient to show transfer to, contribution to or ownership by such partnership in any of Complainant’s domain names or Respondent’s disputed domain names as assets of such partnership operating under the assumed name River City Event Planners.
There is no need for the panel to reach the partnership issues raised by respondent in this summary proceeding limited to UDRP policy and domain name dispute resolution, as Respondent’s WHOIS information for each of the disputed domain names under the heading “REGISTRANT NAME” identifies only Respondent Darron Lapointee, individually, and lists nothing under “REGISTRANT ORGANIZATION”. None of the registration WHOIS data provided to the Panel for the disputed domain names lists Respondent’s alleged partnership under the assumed name River City Event Planners or any other party to this proceeding.
In contrast the panel notes that Complainant’s evidence submitted in Exhibit E to its Additional Submission shows the WHOIS lookup data for Complainant’s domain name <marriageisland.com> lists Complainant Shaunda Gazdzicki, individually, under the heading “REGISTRANT NAME” and lists Complainant’s assumed name or d/b/a, The Ministry at San Antonio, under the heading “REGISTRANT ORGANIZATION”.
As Respondent’s rebuttal is unable to rely on Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by any of the disputed domain names. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant has asserted that the disputed domain name <marriageislandweddings.com> that had been used since 2008 to resolve to a webpage displaying Complainant’s contact information during which time Respondent was not operating any business related to wedding and/or officiant services. Complainant contends <marriageislandweddings.com> has only since July 16, 2015 resolved to a webpage mimicking the look and content of Complainant’s web site where Respondent is operating a competing business using Respondent’s contact information. Complainant has also asserted that although the domain name <marriage-island.com> was registered to Respondent in 2010, the first posting of a website at the domain <marriage-Island.com> occurred in 2015 when Respondent created a page for a competing company.
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that each of the domain names resolves to a webpage displaying a competing business. Prior panels have declined to grant a respondent rights under Policy ¶¶ 4(c)(i) and (iii) where the respondent used a confusingly similar domain name to operate a competing business. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As such, the Panel finds that to be the case in this instance, and declines to grant Respondent rights under Policy ¶¶ 4(c)(i) and (iii).
Further, Complainant claims that Respondent’s willingness to sell the disputed domain name is additional evidence that Respondent lacks rights in this domain name. In its additional submission, Complainant notes that on or about January 4, 2015 Respondent informed Complainant that he had received an offer of $25,000.00 for the disputed domain name <marriageislandweddings.com>, which significantly exceeds the cost of acquiring and maintaining the disputed domain name, and then asked Complainant how much she was going to give him and that he wanted more than the reported. See Compl., Add’l Sub. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name. The Panel agrees that Respondent’s offer to sell the <marriageislandweddings.com>domain name for in excess of $25,000 is further evidence that Respondent lacks rights in the domain name.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. To support this claim, Complainant argues that Respondent is operating a competing business on the resolving webpage on the disputed domain names. Complainant contends <marriageislandweddings.com> has since July 16, 2015 resolved to a webpage mimicking the look and content of Complainant’s web site where Respondent is operating a competing business using Respondent’s contact information. Complainant has also asserted that although the domain name <marriage-island.com> was registered to Respondent in 2010, the first posting of a website at the domain <marriage-Island.com> occurred in 2015 when Respondent created a page for a competing company.
Prior panels have found bad faith under Policy ¶ 4(b)(iii) where the respondent was using a confusingly similar domain name to operate a competing business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). If the Panel finds that Respondent is using a confusingly similar domain name to operate a competing business, they may find bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant argues that Respondent’s use of all three of the disputed domain names to operate a competing business will create a likelihood of confusion, which also shows Respondent’s attempt at profit from such use. Where the complainant has shown that a likelihood of confusion exists, and that the respondent is commercially profiting, panels have been willing to find bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Based on the foregoing and the evidence presented the Panel finds that Respondent has registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Reverse Domain Name Hijacking
Deciding that Complainant has met its burden in this case does not,
however, end the Panel’s inquiry. Under the Rules, the Panel must also consider whether Complainant is guilty of Reverse Domain Name Hijacking (“RDNH”). Respondent here has requested such a finding, and even in the absence of such a request or of a response, the Rules specifically put the burden on the Panel to determine whether a complainant has tried to use “the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” Rules, paragraph 1 and 15(e).
If the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), or any or all of the elements of Policy ¶ 4(a), the Panel may find that Complainant has not engaged in Reverse Domain Name Hijacking. Since Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in Reverse Domain Name Hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marriageislandweddingofficiant.com>, <marriage-island.com>, and <marriageislandweddings.com> domain names be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: August 31, 2015
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