RDC Inn at Perry Cabin LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1901001826175
Complainant is RDC Inn at Perry Cabin LLC (“Complainant”), represented by Sean D. Garrison of Bacal & Garrison Law Group, Arizona, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <innatperrycabin.com>, registered with Media Elite Holdings Limited.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2019; the Forum received payment on January 21, 2019.
On January 22, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <innatperrycabin.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 January 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2019 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@innatperrycabin.com. Also on January 22, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, RDC Inn at Perry Cabin LLC, uses the mark THE INN AT PERRY CABIN in connection with hotel, hotel reservations and restaurant services. Complainant has rights in the THE INN AT PERRY CABIN mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,421,412, registered Jan. 16, 2001). Respondent’s <innatperrycabin.com>[i] domain name is confusingly similar to Complainant’s THE INN AT PERRY CABIN mark, as it merely omits the term “THE” from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <innatperrycabin.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the THE INN AT PERRY CABIN mark in any manner.
3. Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the domain name to gain click-through revenue by redirecting users to competing, third-party websites.
4. Respondent registered and is using the <innatperrycabin.com> domain name in bad faith. Respondent’s offer to sell the domain name for $500 constitutes bad faith.
5. Respondent also intentionally seeks to disrupt Complainant’s business and attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, Respondent is using the domain name to gain click-through revenue by redirecting users through an affiliate program to competing, third-party websites.
6. Further, Respondent had actual or constructive notice of Complainant’s rights in the THE INN AT PERRY CABIN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THE INN AT PERRY CABIN mark. Respondent’s domain name is confusingly similar to Complainant’s THE INN AT PERRY CABIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <innatperrycabin.com> domain name and that Respondent registered and uses the domain name 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the THE INN AT PERRY CABIN mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,421,412, registered Jan. 16, 2001). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <innatperrycabin.com> domain name is confusingly similar to the THE INN AT PERRY CABIN mark, as it merely omits the term “THE” from Complainant’s mark and adds the gTLD “.com.” Deletion of a word from a complainant’s mark and/or the addition of a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). The Panel agrees that the <innatperrycabin.com> domain name is confusingly similar to Complainant’s THE INN AT PERRY CABIN mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <innatperrycabin.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <innatperrycabin.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the THE INN AT PERRY CABIN mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may be evidence that the respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the <innatperrycabin.com> domain name as “DOMAIN ADMINISTRATOR / FUNDACION PRIVACY SERVICES LTD” and no information in the record indicates Respondent was authorized to register a domain name with Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <innatperrycabin.com> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <innatperrycabin.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead has shown that the domain name resolves to a website which is being used to obtain click-through revenue by redirecting users to competing, third-party websites. Use of a domain name that incorporates the mark of another to commercially benefit by redirecting users to websites that compete with a complainant is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). Complainant has provided screenshots of the <innatperrycabin.com> domain name’s resolving website in support of its contentions. Therefore, Respondent does not have rights or legitimate interests in the <innatperrycabin.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is indicated by Respondent’s offer to sell the <innatperrycabin.com> domain name for at least $500. A respondent’s offer to sell a domain name incorporating the mark of another may constitute bad faith per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant has provided a screenshot of the WHOIS data for the <innatperrycabin.com> domain name, which offers the domain name for sale. Therefore, the Panel agrees with Complainant that Respondent registered and uses the <innatperrycabin.com> domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also contends that Respondent’s bad faith is indicated by its use of the <innatperrycabin.com> domain name to link to third party websites, some of which compete with Complainant’s business. Use of a domain name incorporating the mark of another to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Complainant has shown that the domain name resolves to a webpage displaying links to third party websites, some of which belong to competitors of Complainant. The Panel holds that Respondent has registered and used the <innatperrycabin.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends that in light of the fame and notoriety of Complainant's THE INN AT PERRY CABIN mark, it is inconceivable that Respondent could have registered the <innatperrycabin.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant, however, that because Respondent incorporated Complainant’s mark in the domain name almost identically, Respondent most certainly had actual knowledge of Complainant's rights in the mark prior to registering the domain name. Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Complainant has satisfied 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 <innatperrycabin.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 23, 2019
[i] The <innatperrycabin.com> domain name was registered on August 11, 2002 and renewed on July 12, 2018.
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