B.W.I. of Central Florida, Inc. v. USA2NET c/o Dave Dockery
Claim Number: FA0705000975556
Complainant is B.W.I. of Central Florida, Inc. (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blackwaterinn.com>, registered with Register.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 4, 2007 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@blackwaterinn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <blackwaterinn.com> domain name is identical to Complainant’s BLACKWATER INN mark.
2. Respondent does not have any rights or legitimate interests in the <blackwaterinn.com> domain name.
3. Respondent registered and used the <blackwaterinn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, B.W.I. of
Central Florida, Inc., is the owner of the restaurant and lounge Blackwater
Inn, located in
Respondent registered the <blackwaterinn.com> domain name on Februay 26, 2002, in connection with web development services Respondent was performing for Complainant. Respondent’s domain name presently resolves to a website with content advertising Complainant’s restaurant and making use of Complainant’s BLACKWATER INN mark, yet Complainant has no control over the disptued domain name or its use. Further, Respondent has offered to sell the disputed domain name to Complainant for an undisclosed “big figure” cash offer.
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.
Policy ¶ 4(a)(i) does not require that Complainant own a trademark
registration to establish rights in the BLACKWATER INN mark. See
Considering that the Blackwater Inn restaurant has been in
existence for almost five decades and in light of Respondent’s failure to
respond or provide any other evidence to the contrary, the Panel concludes
Complainant’s BLACKWATER INN mark has acquired secondary meaning sufficient to
establish common law rights. See Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum
Respondent’s <blackwaterinn.com> domain name consists solely of Complainant’s BLACKWATER INN mark and the generic top-level domain “.com.” As the addition of a generic top-level domain is irrelevant in determining the similarity between the disputed domain name and Complainant’s BLACKWATER INN mark, the Panel finds that Respondent’s <blackwaterinn.com> domain name is identical to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first set forth a prima facie case demonstrating Respondent’s lack of rights or legitimate interests in the disputed domain name before Respondent is required to proffer evidence in support of Respondent’s rights or legitimate interests in the disputed domain name and Complainant has established such prima facie case. See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds that Complainant has satisfied the initial burden and now examines whether Respondent has put forth any evidence demonstrating rights or legitimate interests in the <blackwaterinn.com> domain name.
In lieu of Respondent’s failure to respond to Complainant’s
allegations, the Panel may infer Respondent has no rights or legitimate
interests in the <blackwaterinn.com>
domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Based on the evidence in the record, the Panel concludes
that Respondent is not commonly known by the <blackwaterinn.com> domain name as Respondent has failed to
provide the Panel with any evidence and there is no evidence in the record
refuting Complainant’s assertion that Respondent is not authorized to maintain
control of the disputed domain name, procured for Complainant and consisting
exclusively of Complainant’s BLACKWATER INN mark. Moreover, Respondent’s WHOIS information does
not suggest that Respondent is commonly known by the <blackwaterinn.com> domain name.
See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Further, the panel in Map Supply Inc. v. On-Line Colour Graphics, FA 96332 (Nat. Arb. Forum Feb. 6, 2001), found that the respondent, an independent contractor engaged in a compensation dispute over web development services, failed to establish “that there is any chance that the law would permit [Respondent], without the consent of the client, to take control of a domain name, and then retain control as a security against payment for web-design work.” (Emphasis in original.). In light of Respondent’s failure to submit a Response or any evidence asserting any rights or legitimate interests as suggested by the panel in Map, the Panel infers Claimant’s assertions are correct and Respondent holds no rights or legitimate interests in the <blackwaterinn.com> domain name in connection with a genuine dispute for payment of web development fees.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Evidence in the record suggests to the Panel that Respondent
is attempting to inappropriately commercially benefit from the sale of the <blackwaterinn.com> domain name to
Complainant for valuable consideration in excess of Respondent’s expenses. While a specific dollar has not been quoted,
the Panel finds such behavior constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated
bad faith when he requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name);
see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan.
14, 2000) (finding that the respondent used the domain name in bad faith
because he offered to sell the domain name for valuable consideration in excess
of any out-of-pocket costs); see also
Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
Moreover, the Panel is not restricted to the circumstances set forth in Policy ¶¶ 4(b)(i)-(iv) in determining that Respondent has engaged in bad faith use and registration. Conduct other than that set forth in Policy ¶¶ 4(b)(i)-(iv) can lead the Panel to conclude Respondent’s behavior fails to comport with Policy ¶ 4(a)(iii). The Panel finds that the record supports Complainant’s assertion that Respondent is retaining the <blackwaterinn.com> domain name, incorporating Complainant’s BLACKWATER INN mark, for the sole purpose of achieving a superior bargaining position against Complainant, calling on Complainant to “come with a big figure,” evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”); c.f. Map Supply Inc. v. On-line Colour Graphics, FA 096332 (Nat. Arb. Forum Feb. 6, 2001) (finding no basis for independent contractor to retain the disputed domain name as security for payment of web development services when compensation dispute was with third party and not the complainant).
The Panel finds that 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 <blackwaterinn.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated: June 14, 2007
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