Leisuremax, Inc. v. None a/k/a Stevens, BS
Claim Number: FA0606000724481
Complainant is Leisuremax, Inc. (“Complainant”), represented by Julie A. Rosser, of Best Best & Krieger, LLP, 74-760 Highway 111, Suite 200, Indian Wells, CA 92210. Respondent is None a/k/a Stevens, BS (“Respondent”), 16122 4th St. East, St. Pete, FL 33708.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <leisuremax.com> and < leisuremaxspas.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2006.
On June 1, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <leisuremax.com> and <leisuremaxspas.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 June 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 29, 2006 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@leisuremax.com and postmaster@leisuremaxspas.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <leisuremax.com> and <leisuremaxspas.com> domain names are confusingly similar to Complainant’s LEISUREMAX LIVE BETTER mark.
2. Respondent does not have any rights or legitimate interests in the <leisuremax.com> and < leisuremaxspas.com> domain names.
3. Respondent registered and used the <leisuremax.com> and <leisuremaxspas.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Leisuremax, Inc., is a retail store company featuring a wide variety of leisure consumer goods, including, but not limited to, spas. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its LEISUREMAX LIVE BETTER mark (Reg. No. 2,998,120 issued September 20, 2005). Complainant has used its mark continuously and extensively since at least October 22, 2002, when Complainant first incorporated. Since that time, Complainant has expended over $1.3 million dollars in promoting and advertising its goods and services. Complainant also has received official governmental recognition of its first use of the mark on its USPTO registration and also operates websites at the <leisuremax.us>, <leisuremax.net> and <lesuremaxusa.com> domain names. Due to this extensive and continuous use, Complainant has established common law rights in the mark that predate its official USPTO registration.
Respondent registered the <leisuremax.com> and <leisuremaxspas.com> domain names on January 17, 2003 and February 8, 2003 respectively. Respondent’s disputed domain names previously resolved to Respondent’s competing website, but are currently being, and have been, passively held since at least late February 2005.
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 is not required to own a trademark registration to establish rights in the LEISUREMAX LIVE BETTER mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant established common law rights in the LEISUREMAX LIVE BETTER mark prior to its federal trademark registration with the USPTO through continuous and extensive use of the mark in connection with its retail store business. Complainant has expended over $1.3 million dollars in promoting and advertising its goods and services. Complainant also has received official governmental recognition of its first use of the mark on its USPTO registration. Additionally, Complainant operates websites at the <leisuremax.us>, <leisuremax.net> and <lesuremaxusa.com> domain names. Therefore, Complainant’s LEISUREMAX LIVE BETTER mark has acquired secondary meaning sufficient to establish common law rights in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent’s <leisuremax.com> and <leisuremaxspas.com> domain names are confusingly similar to Complainant’s LEISUREMAX LIVE BETTER mark under Policy ¶ 4(a)(i) as they use the dominant features of Complainant’s mark and add a generic top-level domain name. The <leisuremaxspas.com> domain name also adds the descriptive word “spas” to Complainant’s mark. The Panel finds that neither the addition of a generic top-level domain name nor the addition of a word that describes an aspect of Complainant’s business is enough to negate the confusing similarity between the disputed domain names and Complainant’s mark. See 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); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Additionally, the Panel finds that the omission of two words of Complainant’s mark (“LIVE BETTER”) does not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain names. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <leisuremax.com> and <leisuremaxspas.com> domain names. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to respond to the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <leisuremax.com> and <leisuremaxspas.com> domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not suggest that
Respondent is commonly known by the disputed domain names. There is also no evidence in the record to
suggest that Respondent is or has ever been known by the disputed domain
names. Additionally, Complainant
asserts that Respondent is not authorized to use Complainant’s mark and that
Respondent is not associated with Complainant in any way. In Ian Schrager
Hotels, L.L.C. v. Taylor, FA 173369 (Nat.
Arb. Forum Sept. 25, 2003), the panel found that without demonstrable evidence
to support the assertion that a respondent was commonly known by a domain name,
the assertion must be rejected. See
Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any
derivation.”). Accordingly, the Panel
finds that Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii).
Respondent’s disputed domain names
previously resolved to Respondent’s competing website. In Hewlett-Packard Co. v. Inversiones HP
Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002), the panel found
that the respondent’s use of the confusingly similar domain name
<hpmilenium.com> to sell counterfeit versions of the complainant’s HP
products was not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that such use of the
disputed domain names to trade on the goodwill of Complainant’s name is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).
Moreover, the Respondent is currently passively holding the disputed domain names, and has been doing so for at least several months. Respondent has made no showing of any demonstrable preparations of use of the disputed domain names since Respondent began passively holding them. The Panel finds that such use of the disputed domain names 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 TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.”).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent has used the <leisuremax.com> and <leisuremaxspas.com>
domain names to redirect Internet users to a website that the Panel infers is
operated for Respondent’s commercial gain.
In G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002), the panel found 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. See Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and
services.”). Accordingly, the Panel
finds that Respondent registered and used the disputed domain names in bad
faith according to Policy ¶ 4(b)(iv).
Additionally, the Respondent has been passively holding the disputed domain names since at least late February 2005. The Panel finds that such non-use of the disputed domain names is evidence of bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
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 <leisuremax.com> and < leisuremaxspas.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 18, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum