CAS Properties, LLC d/b/a The Big Tree
Inn v. N/A
Claim
Number: FA0508000550357
Complainant is CAS Properties, LLC d/b/a The Big Tree Inn (“Complainant”), represented by Paul I. Perlman of Hodgson Russ LLP, One M&T Plaza, Suite 2000,
Buffalo, NY 14203. Respondent is N/A (“Respondent”), P.O. Box 191, St.
Bruno, QC J3V 4P9, CA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <thebigtreeinn.com>, registered with Tucows
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
August 30, 2005; the National Arbitration Forum received a hard copy of the
Complaint on September 1, 2005.
On
August 30, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the <thebigtreeinn.com> domain name is registered with
Tucows Inc. and that Respondent is the current registrant of the name. Tucows
Inc. has verified that Respondent is bound by the Tucows Inc. 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
September 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 21, 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@thebigtreeinn.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 29, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
James A. Carmody, Esq., 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 <thebigtreeinn.com>
domain name is confusingly similar to Complainant’s BIG TREE INN mark.
2. Respondent does not have any rights or
legitimate interests in the <thebigtreeinn.com> domain name.
3. Respondent registered and used the <thebigtreeinn.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, CAS
Properties, through its predecessors-in-interest and title, has operated a
historic inn in Geneseo, New York, for more than 100 years under the name “Big
Tree Inn.” Complainant claims common-law
rights in the BIG TREE INN mark as evidenced by its use of the service mark in
connection with hotel and inn services, namely, providing lodging, restaurant,
banquet, and tavern services since 1886.
Complainant has made widespread use of its BIG TREE INN mark via its
website at <bigtreeinn.com> and through advertising in interstate
commerce.
Respondent, N/A,
registered the <thebigtreeinn.com> domain name on August 3,
2005. The Panel accepts the following
facts from the Complaint and attached Exhibits:
The
disputed domain name initially linked to <theannabellee.com>, the website
of a competing inn located one block away from Complainant. Council for Complainant sent a cease and
desist letter to Mr. and Mrs. Mark Scoville, the owners of the Annabel Lee
Bread & Breakfast Inn. The owners
of the Annabel Lee Inn admitted registering the disputed domain name, impliedly
under the pseudonym “N/A.” Respondent
states that it was “making a point of [Complainant’s] incompetence by
registering the <thebigtreeinn.com> domain name and referring its
traffic to the <theannabellee.com> domain name. Additionally, Respondent states that it purchased the disputed
domain name registration in retaliation after Complainant “boldly went onto MY
property at The Annabel Lee and took my only employee to work for you without
even knowing her last name or whether she was even qualified for the
position.” Respondent also claims that
it stopped referring the <thebigtreeinn.com> domain name to the
website at the <theannabellee.com> domain name on Monday August 1,
2005—the same day the cease and desist letter arrived. Respondent asserts that “[t]he website was
taken down at 10am yesterday long before [it] received [Complainant’s] bully letter.”
Complainant
alleges that Respondent’s attorney contacted Complainant’s attorney to state
that Respondent would not transfer the domain name without receiving a payment
of $20,000. Complainant’s attorney has
signed an affidavit attesting to this offer to sell, and Complainant has
submitted this affidavit as an attachment to the Complaint.
Presently, the
disputed domain name resolves to a page entitled “future home” with a blinking
“smiley face.”
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.
Panels have
interpreted the Policy to allow complainants to demonstrate rights in a mark
pursuant to Policy ¶ 4(a)(i) by establishing common law rights. A complainant may demonstrate common law
rights by submitting evidence that its mark has established secondary
meaning. 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 British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23,
2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
Complainant
asserts that it has common law rights in the BIG TREE INN mark. To support it claim, Complainant has
submitted extensive evidence of interstate advertising through print media and
its website. The Panel accepts this
evidence as establishing that the BIG TREE INN mark has acquired secondary
meaning as a source identifier. Therefore,
Respondent has established common law rights pursuant to Policy ¶ 4(a)(i). See 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); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”).
The Panel finds
that the <thebigtreeinn.com> domain name is confusingly similar to
Complainant’s BIG TREE INN mark. The
only difference between the domain name and the mark is the addition of the
definite article “the,” which does not significantly distinguish the domain
name from the mark. See John Fairfax
Publ’ns Pty Ltd. v. Pro-Life Domains Not for Sale, FA 213460 (Nat. Arb.
Forum Jan. 6, 2004) (“The addition of the article ‘the’ does not significantly
distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i).”); see
also Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004)
(the domain name merely omitted the definite article “the” and the preposition
“of” from the complainant’s mark and thus, failed to “sufficiently distinguish
the domain name from the mark pursuant to Policy ¶ 4(a)(i)”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
After
Complainant has made a prima facie allegation that Respondent lacks
rights or legitimate interests, the burden shifts to Respondent to demonstrate
its rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); 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 has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
By failing to
submit a Response, Respondent has not rebutted Complainant’s allegations that
Respondent is Complainant’s competitor and that Respondent registered the <thebigtreeinn.com>
domain name to divert Internet traffic to Respondent’s competing website at the
<theannabellee.com> domain name.
Registering a domain name that is confusingly similar to a competitor’s
mark to divert the competitor’s traffic to the competition is neither a bona
fide use of a domain name pursuant to Policy ¶ 4(c)(i) nor a non-commercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
Respondent has
neither rebutted Complainant’s allegation that Respondent was “making a point”
about Complainant by registering the disputed domain name nor rebutted
Complainant’s allegation that Respondent subsequently offered to sell the
domain name to Complainant for $20,000.
The Panel finds that Respondent’s actions strongly indicate that it
registered the <thebigtreeinn.com> domain name to target
Complainant; the Panel also finds that selling the domain name to Complainant
became part of this plan. The Panel
finds that Respondent’s plan to acquire the domain name and sell it to
Complainant is neither a bona fide use of a domain name pursuant to Policy ¶
4(c)(i) nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4,
2003) (stating that “Respondent’s lack of rights and legitimate interests in
the domain name is further evidenced by Respondent’s attempt to sell its domain
name registration to Complainant, the rightful holder of the RED CROSS mark”); see
also Kinko’s Inc. v. eToll, Inc.,
FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the respondent has no
rights or legitimate interests in the domain name where it appeared that the
respondent registered the domain name, ultimately, for the complainant’s use).
There is nothing
in the record, including the WHOIS registration information, that demonstrates
that Respondent is commonly known by the <thebigtreeinn.com>
domain name. The Panel finds that
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum
Oct. 16, 2001) (finding that the respondent was not
commonly known by the <mobilitytrans.com> domain
name because it was doing business as
“Mobility Connections”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
As mentioned in
the “Rights and Legitimate Interests” section above, the Panel accepts
Complainant’s evidence on Respondent’s motives in registering the <thebigtreeinn.com>
domain name: Respondent intended to
target Complainant by registering the disputed domain name and referring
Complainant’s customers to Respondent’s business. The Panel finds that Respondent’s motives are an effort to divert
Complainant’s customers to Respondent, which is evidence of bad faith pursuant
to Policy ¶ 4(b)(iii). See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding that the disputed domain names were
registered and used in bad faith where the respondent registered domain names
which infringed upon the complainant’s mark, had no resemblance to the
respondent’s business name and where the respondent’s competing business was
located one and a half blocks from the complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com,
FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the
respondent’s sites pass users through to the respondent’s competing business).
The Panel also
accepts Complainant’s well-supported assertion that Respondent offered the
disputed domain name for sale at a price of $20,000. The Panel finds that Respondent’s offer is to sell the domain
name registration for an amount far in excess of out-of-pocket costs is
evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent
registered the disputed domain name and offered to sell it to Complainant for
$10,600. This demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(i).”); see also Tech.
Props., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding
bad faith where the respondent verbally offered the domain names for sale for
$2,000).
The Panel finds
that Complainant has established 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 <thebigtreeinn.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
October 12, 2005
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