Barefoot Landing, Inc. v. barefootlanding
Claim Number: FA0507000520091
Complainant is Barefoot Landing, Inc. (“Complainant”),
represented by John C. McElwaine, of
Nelson Mullins Riley & Scarborough,
LLP, Post Office Box 1806, Charleston, SC 29402. Respondent is barefootlanding
(“Respondent”), General Delivery, Georgetown, Grand Cayman GT, KY.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <barefootlanding.com>,
registered with Address Creation.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 22, 2005.
On
July 26, 2005, Address Creation confirmed by e-mail to the National Arbitration
Forum that the domain name <barefootlanding.com>
is registered with Address Creation and that Respondent is the current
registrant of the name. Address
Creation has verified that Respondent is bound by the Address Creation registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
July 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 15, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@barefootlanding.com by e-mail.
Having received no Response from Respondent, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <barefootlanding.com> domain name is identical to Complainant’s BAREFOOT LANDING mark.
2. Respondent does not have any rights or
legitimate interests in the <barefootlanding.com>
domain name.
3. Respondent registered and used the <barefootlanding.com> domain name
in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Barefoot Landing, Inc.,
is a well-known retail shopping and resort services company in Myrtle Beach,
South Carolina. Complainant has continuously
used the trademark since 1987 and has developed a significant amount of
positive goodwill and recognition.
Complainant hosts approximately nine-million guests annually and has
been honored by the South Carolina Department of Parks, Recreation and Tourism
for three years as the “Most Popular Tourist Attraction in South
Carolina.”
Complainant has spent a significant
amount of time and money advertising and promoting its mark through various
channels, including local newspapers, billboards, chamber guides and local
trade publications.
Complainant has
registered its BAREFOOT LANDING mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,109,224 issued October 28, 1997).
Respondent
registered the <barefootlanding.com>
domain name on July 19, 2001.
Respondent’s domain name resolves to a website featuring links to
third-party commercial websites that directly compete with Complainant’s
business.
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."
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(e), 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 (Nat. Arb. 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.").
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.
Complainant
asserts that it has established rights in the BAREFOOT LANDING mark through
registration with the USPTO. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
Additionally,
Complainant asserts that Respondent’s <barefootlanding.com>
domain name is identical to Complainant’s BAREFOOT LANDING mark pursuant to
Policy ¶ 4(a)(i), as the domain name fully incorporates the mark and merely
adds the generic top-level domain “.com.”
See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to the complainant's registered trademark GAY
GAMES); see also Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain
name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent does
not have rights or legitimate interests in the <barefootlanding.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts
to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights or legitimate
interests in the domain name); see also
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar.
9, 2000) (finding that by not submitting a response, the respondent has failed
to invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name).
Moreover,
Respondent is not commonly known by the <barefootlanding.com>
domain name. Thus, the Panel may
conclude that Respondent has not established rights or legitimate interests in
the disputed 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 respondent was not
commonly known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see
also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum
Aug. 29, 2000) (finding that the respondent has no rights or legitimate
interests in domain names because it is not commonly known by the complainant’s
marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using the <barefootlanding.com>
domain name to operate a website featuring commercial links to Respondent’s
own website. The Panel may find that
Respondent’s use of a domain name that is identical to Complainant’s mark to
divert Internet users to third-party websites for Respondent’s own commercial
gain does not constitute a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
respondent’s diversionary use of complainant’s marks to send Internet users to
a website which displayed a series of links, some of which linked to competitors
of complainant, was not a bona fide
offering of goods or services); see also
Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona
fide offering of goods or services); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to its
commercial website. Respondent
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iv), as Respondent is using the <barefootlanding.com>
domain name to intentionally
attract, for commercial gain, Internet users to its website, by creating a
likelihood of confusion with Complainant as to the source, sponsorship,
affiliation or endorsement of its website.
See H-D Michigan, Inc. v.
Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through the respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using the complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
Furthermore,
Respondent has used the <barefootlanding.com>
domain name, which contains Complainant’s BAREFOOT LANDING mark, to
redirect Internet users to third-party websites featuring resorts, hotels and
golf products that compete with Complainant’s business. This suggests that Respondent had actual knowledge
of Complainant’s rights in the mark when it registered the domain name and
chose the disputed domain name based on the goodwill Complainant has acquired
in its BAREFOOT LANDING mark.
Furthermore, Complainant’s registration of the BAREFOOT LANDING mark
with the USPTO bestows upon Respondent constructive notice of Complainant’s
rights in the mark. Respondent’s
registration of a domain name containing Complainant’s mark in spite of
Respondent’s actual or constructive knowledge of Complainant’s rights in the
mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Am. Online, Inc.
v. Miles, FA 105890 (Nat. Arb. Forum May
31, 2002) (“Respondent is using the domain name at issue to resolve to a
website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding
that because the link between the complainant’s mark and the content advertised
on the respondent’s website was obvious, the respondent “must have known about
the Complainant’s mark when it registered the subject domain name”); see also Orange
Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <barefootlanding.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
August 31, 2005
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