Georgia Stage, LLC v. Amanda Gray / Georgia Expo
Claim Number: FA1803001778995
Complainant is Georgia Stage, LLC (“Complainant”), represented by Lori S. Meddings of Quarles & Brady LLP, Wisconsin, USA. Respondent is Amanda Gray / Georgia Expo (“Respondent”), represented by Ian Van Sice of Georgia Expo Manufacturing Corporation, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <georgiastage.com>, registered with GoDaddy.com, LLC (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2018; the Forum received payment on March 26, 2018.
On March 28, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <georgiastage.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 April 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2018 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@georgiastage.com. Also, on April 3, 2018, 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 27, 2018.
On May 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed 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, Georgia Stage, LLC, is in the business of manufacturing, marketing and selling custom stage and theatre curtains and related products, including theatrical costumes.
The relevant WHOIS record indicates that the Disputed Domain Name, <georgiastage.com>, was registered on or about February 24, 2005. The Registrant is Amanda Gray, and the Registrant Organization is Georgia Expo.
Complainant has strong common law rights in Complainant’s GEORGIA STAGE trademark (“Complainant’s Mark”), having expended considerable time, effort, and money to create the requisite goodwill.
The Disputed Domain Name is identical to or confusingly similar to Complainant’s Mark.
Complainant never licensed or otherwise authorized Respondent to use the Complainant’s Mark.
Respondent is using and/or has used the Disputed Domain Name to complete with Complainant in two ways. Firstly, Respondent has used the Disputed Domain Name to direct to Respondent’s own website where it sells products that directly compete with those of Complainant. At other times, the Disputed Domain Name has resolved to a parking page that included links to third party websites whose goods compete with those of the Complainant. These related third-party links are:
“Georgia • Georgia Flag • Georgia State Flag • Flag Of Georgia • New Georgia State Flag • Flags Of Georgia • Acting Schools • Acting School • Play Therapy • Dance Floors • Texas Music • California Art • Art In California • Dance Floor • Art California • Arts And Entertainment • Music • Entertainment Industry • Fine Art • Buy Music.” (Attached exhibit of a Wayback screenshot)
Respondent is not commonly known by the Disputed Domain Name.
By using the Disputed Domain Name to compete with Complainant, Respondent is intentionally attempting to disrupt the business of Complainant. Further, Respondent’s registration and use of the Disputed Domain Name is to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark.
On November 2, 2015, Complaint’s counsel sent a cease and desist letter to Respondent demanding that Respondent stop using the Disputed Domain Name.
B. Respondent
Respondent does not dispute Complainant’s common law rights to its mark, and Respondent does not dispute the similarity between the Disputed Domain Name and Complainant’s Mark.
Respondent does not dispute that Respondent is not commonly known by the Disputed Domain Name.
Respondent is using the Disputed Domain Name for a bona fides and legitimate purpose. Respondent offers a variety of goods through various domain names purchased for the purpose of search engine optimization. Combinations of geographic terms and product terms are commonly employed in internet marketing through domain names as well as content driven marketing.
In November 2015, it was brought to Respondent’s attention that Complainant felt that the Disputed Domain Name was potentially confusing, and in response, Respondent opted to cease use of the Disputed Domain Name without relinquishing ownership thereof.
Simply registering a domain name with common geographic and trade terminology before a competitor does so is not evidence of registration in Bad Faith nor is continued ownership of a domain name evidence of continued use in Bad Faith.
Complainant shows an initial cease and desist letter from Complainant’s Counsel but fails to address the subsequent correspondence. These subsequent communications show reasonable efforts by both parties to avoid confusion among customers.
Beginning in March 2018, Respondent began forwarding its various unused domain names to its primary domain name, <georgiaexpo.com>. This led to the Disputed Domain Name being inadvertently forwarded despite its intent to leave it unused. The relevance of this use and the involved third-party links speaks for itself.
Communications between Respondent and Complainant resulted in deactivation of redirects of the Disputed Domain Name both in 2015, and more recently, in early 2018. This is evidence of a good faith attempts to avoid potential confusion among customers and constitutes a legitimate fair use of the Disputed Domain Name by showing an absence of intent for commercial gain by misleadingly diverting customers or tarnishing the trademark at issue.
Complainant and Respondent are direct competitors with respect to the sale of theatrical curtains and related products.
The Dispute Domain Name was registered February 24, 2005, and the registrant is not known by the Disputed Domain Name.
Respondent’s purpose and intent in registering and using the Disputed Domain Name was and is to use it in connection with search engine optimization. Respondent’s use of the Disputed Domain Name to directly compete with Complainant was done in the mistaken belief that it could do so, and when challenged, such usage stopped.
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.
Respondent admits that Complainant has common law rights in Complainant’s Mark and that the Disputed Domain Name is confusingly similar to Complainant’s Mark.
As such, the Panel finds that Complainant has established the first element of the Policy.
Under the second element of the Policy, Policy ¶4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant met its initial burden. The Complaint asserts that it never gave permission to Respondent to use Complainant’s Mark, and Respondent admits that it is not commonly known by the Disputed Domain Name. Further, Complainant presents evidence that Respondent used the Disputed Domain Name to direct to a website upon which are sold products that compete with those of Complainant, which is not a bona fides offering of goods and services. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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 also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Respondent countered that it is a company involved with internet marketing and search engine optimization and that it commonly uses geographic and product terms in said business, which it asserts is a legitimate interest in the Disputed Domain Name.
The Panel agrees with Respondent and so finds. Respondent is using the Disputed Domain Name, which consists of a geographic name coupled with a generic word, for search engine optimization, which the Panel finds is a legitimate interest in the Disputed Domain Name under the Policy. See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the <fmcu.com> domain name because it was a generic domain name reseller who owned numerous four-letter domain names); see also Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).
As such, Complainant has failed to establish the second element of the Policy.
Complainant has not demonstrated or established that under the facts of this matter the use of the Disputed Domain Name, which consists of a geographic identifier coupled with a generic term, as a tool of search engine optimization is a use in bad faith under the Policy.
As such, Complainant has failed to establish the third element of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief is DENIED.
Accordingly, it is Ordered that the <georgiastage.com> domain name REMAIN WITH Respondent.
Kendall C. Reed, Panelist
Dated: May 16, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page