Chicago Southland Convention & Visitors Bureau v. Daniel
Claim Number: FA1606001679347
Complainant is Chicago Southland Convention & Visitors Bureau (“Complainant”), represented by Kourtney A. Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is Daniel (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chicagosouthland.com>, registered with Dynadot, 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, Chair, as Panelist.
Sandy Franklin, as Panelist.
Houston Putnam Lowry, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2016; the Forum received payment on June 15, 2016.
On June 15, 2016, Dynadot, LLC confirmed by e-mail to the Forum that the <chicagosouthland.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 June 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2016 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@chicagosouthland.com. Also on June 16, 2016, 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 July 11, 2016.
Complainant’s Additional Submission was received on July 18, 2016 and determined to be timely on July 20, 2016 per Forum Supplemental Rule 7.
Respondent’s Additional Submission was received on July 19, 2016 and determined to be timely on July 20, 2016 per Forum Supplemental Rule 7.
On July 22, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Kenneth L. Port, Chair, as Panelist, Sandy Franklin, as Panelist, and Houston Putnam Lowry, 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
Complainant is engaged in the business of destination management and markets its services nationally, more specifically in the Chicago, Illinois region. Complainant has held itself out to the public under the CHICAGO SOUTHLAND mark in a manner that demonstrates rights in the mark under the common law. Complainant also owns a service mark with the Secretary of State for the State of Illinois (Reg. No. 100,842, first use Sept. 3, 1986, registered Sept. 11, 2009). See Compl., at Attached Ex. B. The <chicagosouthland.com> domain name registered by Respondent is identical to the CHICAGO SOUTHLAND mark as the mark is included entirely, less the space, with the generic top-level domain (“gTLD”) “.com” appended.
Respondent lacks rights or legitimate interests in or to the <chicagosouthland.com> domain name. Complainant has not given Respondent any license or permission to use the CHICAGO SOUTHLAND mark. Further, Respondent is not commonly known by the disputed domain as the WHOIS indicates “Daniel” as registrant of record. See Compl., at Attached Ex. L. In addition, there has been no bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent uses the disputed domain to display adult-oriented material.
Respondent has registered and used the <chicagosouthland.com> domain in bad faith. Respondent’s presentation of adult-oriented material on the resolving website exemplifies bad faith per Policy ¶ 4(a)(iii). Respondent assumed registration and use of the <chicagosouthland.com> domain name on April 1, 2016.
B. Respondent
Complainant’s service mark for the CHICAGO SOUTHLAND mark is in class 35 (advertising and business) and does not confer exclusive universal rights.
The phrase “Chicago Southland” is a geographic term referring to the suburban region south and southwest of the City of Chicago, and constitutes a generic phrase.
Respondent purchases expired domains for their link authority. Its market is the adult (porn) industry, and therefore does not compete with Complainant’s offerings. Further, Complainant has offered to purchase the disputed domain from Respondent through myriad brokers. See Resp., at pp. 10–12.
Respondent had no knowledge of Complainant or its offerings when registering the disputed domain name.
Because Complainant saw that Respondent was not competing and decided to initiate this proceeding, Complainant has demonstrated reverse domain name hijacking.
C. Additional Submission—Complainant
Complainant reasserts that it has established rights in the CHICAGO SOUTHLAND mark, and notes that the disputed domain is identical to its trademark and that Respondent does not dispute this fact.
Respondent and Complainant engaged in negotiations for the purchase of the <chicagosouthland.com> domain name. When they could not reach an agreement, Complainant initiated the instant proceedings for the transfer of the disputed domain. See Compl. Add. Sub., at Attached Ex. 1. Respondent admitted in its Response that it has never used the <chicagosouthland.com> domain name (or any domain name) in connection with bona fide offering of goods or services. Respondent also conceded that it has never been commonly known by the disputed domain. Further, diverting Internauts to a website displaying adult-oriented material does not amount to a legitimate noncommercial or fair use.
Respondent’s offer to sell the disputed domain for $6,000.00 constitutes bad faith under the language of Policy ¶ 4(b)(i). Further, given Respondent’s geographic location and alleged activities as a domain purchaser and engagement in the pornography industry, there does not seem to be any cognizable reason for why Respondent would have chosen the terms of the mark, CHICAGO SOUTHLAND, in registering and subsequently using the disputed domain. This leads to a nonexclusive embodiment of bad faith under Policy ¶ 4(a)(iii).
D. Additional Submission—Respondent
Respondent again refutes Complainant’s rights in the CHICAGO SOUTHLAND mark because they are comprised of general geographical terms.
Respondent is engaged in a legal and common activity in utilizing the disputed domain for adult-oriented material. Respondent is not trying to drive Internet users anywhere, it only holds the domain for its value in “gain[ing] points” for its other sites.
Respondent reiterates that it had no knowledge of Complainant at registration, and emphasizes that while Complainant characterizes Respondent’s offer to sell of $6,000 as “exorbitant,” Complainant itself previously offered $4,000, indicating that both parties engaged in legitimate negotiations.
The Panel finds that the disputed domain is at least confusingly similar to the valid and subsisting trademark rights of the Complainant, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has 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 Panel finds that there can be little doubt that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark rights in or to CHICAGO SOUTHLAND. The Complainant has adequately pled common law rights in or to this trademark. It has used the mark continuously since 1986. The record clearly supports this conclusion.
The <chicagosouthland.com> disputed domain name registered by Respondent is identical to the CHICAGO SOUTHLAND mark as the mark is included entirely, less a space, with the gTLD “.com” appended. The Panel, therefore, finds the disputed domain name to be at least confusingly similar to the Complainant’s trademark.
The Respondent argues that the Complainant’s trademark is comprised of common, geographically descriptive words and, as such, cannot be an enforceable trademark. However, the Panel’s jurisdiction does not stretch so far as to comment on the strength of Complainant’s trademark. Complainant has adequately plead its rights in or to the trademark CHICAGO SOUTHLAND by showing the mark has secondary meaning. For purposes of the Policy, Complainant therefore has cognizable trademark rights.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel further finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. Complainant has not given Respondent any license or permission to register the CHICAGO SOUTHLAND mark as a domain name. Further, Complainant argues (and Respondent does not challenge) that Respondent is not commonly known by the disputed domain name as the WHOIS database indicates “Daniel” as registrant of record. See Compl., at Attached Ex. L. Therefore, the Panel finds that the Respondent is not commonly known by the disputed domain name or any close approximation thereto under Policy ¶ 4(c)(ii).
The Panel further finds that there has been no bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent uses the disputed domain to display adult-oriented material. See Compl., at Attached Ex. K. Forum precedent supports that use of a confusingly similar domain name to propagate adult-oriented content does not constitute rights or legitimate interests. See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
In addition, the Respondent and the Complainant have engaged in negotiations for the purchase and sale of the <chicagosouthland.com> domain name. When they could not reach an agreement, Complainant initiated the instant proceedings for the transfer of the disputed domain. See Compl. Add. Sub., at Attached Ex. 1. Complainant notes that Respondent admitted in its Response that it has never used the <chicagosouthland.com> domain name (or any domain name) in connection with bona fide offering of goods or services.
Respondent notes that Complainant has offered to purchase the disputed domain from Respondent through myriad brokers. See Resp., at pp. 10–12. In Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002), the panel found that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses.” However, here, the Respondent did far more than merely receive and respond to an offer to purchase. The disputed domain name resolves to a porn site which detracts Complainant’s purchasers from their intended Internet target. Respondent has also demanded far more than “market price” for the disputed domain name.
The Panel, therefore, finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that the Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent assumed registration and use of the <chicagosouthland.com> domain name on April 1, 2016. Although Complainant offered to buy the disputed domain name for $4,000, given the totality of the circumstances, Respondent’s offer to sell the disputed domain for $6,000.00 constitutes bad faith under the language of Policy ¶ 4(b)(i). See Compl. Add. Sub., at Attached Ex. 1. Panels have found excessive offers in negotiating the price to be paid for a domain name to impute Policy ¶ 4(b)(i). See Bear River Mutual Insurance Company v. Dzone Inc., FA1311001528522 (Forum Dec. 11, 2013) (concluding that the respondent’s offer to sell the disputed domain name to the general public and to the complainant in the form of counter-offers demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i)). Therefore, the Panel finds that Respondent has engaged in bad faith use and registration under Policy ¶ 4(b)(i).
In addition, and more importantly, Respondent uses the disputed domain name to tarnish the reputation of Complainant and, as such, exemplifies bad faith per Policy ¶ 4(a)(iii). Although Complainant makes arguments regarding Respondent’s physical location, the Panel is less concerned with Respondent’s location and more concerned with the effect of Respondent’s use of the disputed domain name. Respondent uses the disputed domain name on pornographic web sites. Registering and subsequently using the disputed domain in a manner that misleads Internet users into believing the Complainant is somehow related to a pornographic web site is what offends the Policy. See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). Similar to the Harley-Davidson case, Respondent’s use of the disputed domain name tarnishes the reputation of the CHICAGO SOUTHLAND mark.
The Respondent claims that it did not know CHICAGO SOUTHLAND was a valid and subsisting trademark at the time of the registration of the disputed domain name. This is unpersuasive. It is quite clear, from the totality of the circumstances, that Respondent knew of its trademark significance. Respondent is a self-proclaimed “purchaser of expired domain names for their link authority.” The most valuable link authority comes from domain names that are trademarks. The notion that they were an innocent purchaser of a generic word, therefore, is spurious.
The Panel, therefore, finds that Respondent’s registration and use constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <chicagosouthland.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Chair,
Sandy Franklin, and Houston Putnam Lowry, as Panelists
Dated: July 26, 2016
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