RockResorts Jamaica Limited v. Oytun Gencer / OTTI
Complainant is RockResorts Jamaica Limited (“Complainant”), represented by Marc C. Levy of Faegre Baker Daniels LLP, Colorado. Respondent is Oytun Gencer / OTTI (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <halfmoonjamaica.com>, registered with GoDaddy.com, LLC.
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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2013; the National Arbitration Forum received payment on September 10, 2013.
On September 10, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <halfmoonjamaica.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2013 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@halfmoonjamaica.com. Also on September 11, 2013, 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.
A timely Response was received and determined to be complete on September 13, 2013.
On September 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
1. it is a leader in luxury, destination based travel to iconic locations.
2. it manages the award-winning Half Moon resort in Rose Hall, Jamaica (“Half Moon”), on Jamaica’s northern coast, four hundred acres feature beautifully landscaped gardens, luxury guest rooms, and luxury villas ribboned by two miles of private, white-sand shoreline, known as one of the finest stretches of beach in Jamaica;
3. Half Moon has set the standard for luxury Jamaica resorts since its inception in 1954. Over the course of nearly sixty years, Half Moon has developed a substantial and valuable body of goodwill symbolized by the service mark HALF MOON (“the HALF MOON Mark”);
4. the HALF MOON Mark is registered with the U.S. Patent and Trademark Office (U.S. Reg. No. 3,590,113) in class 43 for hotel reservation services and providing information about hotel resort accommodations and hotel resort services via a global computer network. Half Moon Bay Limited owns the HALF MOON Mark, which is depicted below:
[redacted]
5. it holds an exclusive license from Half Moon Bay Limited to use the HALF MOON Mark in connection with resort services. This license agreement provides that RockResorts must obtain Half Moon Bay Limited’s express written consent to take enforcement actions with respect to the HALF MOON Mark. Half Moon Bay Limited has granted RockResorts permission to take all steps necessary to secure the transfer of the Domain Name to RockResorts, including but not limited to executing a UDRP proceeding;
6. the goodwill embodied by the HALF MOON Mark is of great value to RockResorts. RockResorts controls the use and reproduction of the HALF MOON Mark to ensure that all current and potential customers can rely upon the Mark as a symbol of high quality services and integrity;
7. Respondent registered the Domain Name on July 9, 1999, forty-five years after the first use of “Half Moon” in connection with the services offered by Half Moon;
8. Respondent is using the Domain Name to redirect consumers to Respondent’s own website purporting to be affiliated with Half Moon and/or RockResorts and is attempting to mislead consumers into believing that they have reached the official site for Half Moon or to otherwise deceive consumers into believing that the site is affiliated with or sponsored by Half Moon and/or RockResorts. In particular, Respondent’s website prominently displays the HALF MOON Mark without authorization, and purports to offer room reservations, excursions, and other services associated with Half Moon;
9. Respondent’s attempt to redirect consumers to Respondent’s own website is further evidenced by the fact that no legitimate services associated with Half Moon are available from Changes in Latitudes. Specifically, when a consumer calls Changes in Latitudes at the phone number listed on the website (1-888-330-8272), the agent who answers reports that the caller has reached Caribbean Cruise Lines and has won a free cruise to the Bahamas. No information about Half Moon is available;
10. the Domain Name is confusingly similar to the federally registered HALF MOON Mark to which RockResorts holds an exclusive license, Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name was registered and used in bad faith in violation of ICANN Policy;
11. the domain name entirely incorporates the federally registered HALF MOON Mark followed by the geographic term “Jamaica” and the generic top- level domain (gTLD) “.com;”
12. the addition of the geographic term “Jamaica” does not distinguish the Domain Name from the HALF MOON Mark;
13. the Domain Name is confusingly similar to the HALF MOON Mark under ICANN Policy ¶4(a)(i);
14. at the time Respondent registered the Domain Name, he had no trademark or intellectual property rights in the Domain Name;
15. Respondent is not, and has never been, a licensee of Half Moon or RockResorts;
16. Respondent is not using the Domain Name in connection with the bona fide offering of goods and services under ICANN Policy ¶4(c)(i). Upon information and belief, the purpose of Respondent’s website associated with the Domain Name is to divert Internet traffic to Respondent’s own website and Respondent’s commercial activities and away from the legitimate Half Moon website. Respondent’s website prominently displays the HALF MOON Mark without authorization. Further, Respondent’s website purports to offer room reservations, excursions, and other services associated with Half Moon. Respondent is clearly attempting to pass itself off as Half Moon, to disrupt Half Moon’s business, or to trade on the goodwill associated with the HALF MOON Mark by deceiving consumers into believing that Half Moon and/or RockResorts are associated with Respondent’s commercial activities. Such deceitful conduct cannot be considered a basis for any legitimate interest in the Domain Name;
17. Respondent is not making legitimate noncommercial or fair use of the Domain Name under ICANN Policy ¶4(c)(iii). Respondent’s use is commercial in nature. The purpose of the website is to attract consumers to Respondent’s website and to create a false association with Half Moon and/or RockResorts;
18. Respondent lacks any valid rights or legitimate interests in the domain name under ICANN Policy ¶ 4(a)(ii);
19. Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the HALF MOON Mark as to the source, sponsorship, affiliation and endorsement of Respondent’s website and the services offered thereon. Respondent’s inclusion of the HALF MOON Mark compounds the likelihood of confusion and the mistaken belief that Half Moon and/or RockResorts in some way authorized, sponsored, approved, or endorsed Respondent’s activities related to the Domain Name;
20. RockResorts has not authorized and exercises no control over Respondent’s use of the Domain Name or any activities associated with the Domain Name. Respondent’s services directly compete with Half Moon, and Respondent is not a licensee of Half Moon. The competitive use of a confusingly similar domain name further indicates bad faith under ICANN Policy ¶4(b)(iii);
21. the purpose of Respondent’s website is to confuse and mislead existing and potential customers who are looking for information about and services related to Half Moon. The effect of Respondent’s registration and use of the Domain Name is to interfere with Half Moon and RockResort’s business and goodwill, presumably for Respondent’s own commercial gain, and is evidence of bad faith registration and use. In light of these circumstances, Respondent has registered and used the Domain Name in bad faith under ICANN Policy ¶ 4(a)(iii).
B. Respondent
Respondent contends that:
1. in 2008, one of his workers bought <halfmoonjamaica.com> from Namejet.com, an online auction;
2. in his town in Turkey, there was a disco-bar named “Jamaica Moon,” and he wanted to use this domain name there, until he made a disco-bar website;
3. his business was not good;
4. he paid $85 for the domain name and $50 for Godaddy but will transfer the domain to the RockResorts Jamaica Limited on his terms.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible, credible evidence that Respondent’s Domain Name is confusingly similar to a trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, admissible, credible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible, credible evidence that Respondent’s Domain Name has been registered and is being used 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.
Complainant is exclusive licensee of the HALF MOON mark and its USPTO Registration (Reg. No. 3,590,113 registered March 17, 2009). Although the Registration is for a stylized mark, the dominant part of the mark is the words “Half Moon.” The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) by demonstrating its rights in the HALF MOON mark via USPTO registration and an exclusive license. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant’s rights in the HALF MOON mark satisfy the required showing under Policy ¶ 4(a)(i), regardless of Respondent’s country of residence. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant urges that the domain name is confusingly similar to its HALF MOON mark, claiming that the words in the mark are included in the domain name in their entirety, followed by the geographic term “Jamaica,” and the generic top-level domain (“gTLD”) “.com.” The domain name omits the space found between the words of the mark, and asserts that the omission does not distinguish the domain name from the HALF MOON mark. The Panel agrees, and find that by using Complainant’s mark in the domain name, omitting the spacing, and adding a geographic term and a gTLD, the domain name is confusingly similar to Complainant’s mark, pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
Respondent held no trademark or intellectual property rights in the domain name at the time of the <halfmoonjamaica.com> domain name’s registration, nor had Respondent even been a licensee of Complainant’s company. The respondent was not licensed to use the mark in a domain name; the respondent does not have rights or legitimate interests in the domain name at issue. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel notes that the registrant associated with the disputed domain name is identified in the WHOIS information as “Oytun Gencer,” and determines that the WHOIS information provides guidance when determined whether a respondent is commonly known by a domain name in dispute. The Panel finds that, Complainant’s contention that Respondent has neither intellectual property rights in the HALF MOON mark nor permission to use the mark, and evidence of the WHOIS information showing the registrant is known by a different name, all demonstrate that Respondent is most likely not commonly known by the <halfmoonjamaica.com> domain name under Policy ¶ 4(c)(ii). Indeed, Respondent does not claim to be.
Complainant alleges that Respondent uses the <halfmoonjamaica.com> domain name to host a website featuring competing services. Complainant provides a screen shot of the website resolving from the disputed domain name, titled “OTTI Travel,” and includes links to hotel reservations, tours, flight tickets, and other travel accommodations, as well as a map of featured locations. Complainant claims that upon calling the number listed at the website, the answer reports that the caller has reached Caribbean Cruise Lines and has won a free cruise to the Bahamas. Complainant argues that “such deceitful conduct cannot be considered a basis for any legitimate interest” in the disputed domain name. The Panel concludes that Respondent’s use of the resolving website to offer competing travel services fails to meet the standard for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <halfmoonjamaica.com> domain name. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Respondent concedes that it is willing to part with the domain name on its own terms, and states “that includes a certain amount as well[,]” which the Panel interprets to mean Respondent will not transfer the domain name without an associated fee. The Panel finds that Respondent’s statement amounts to an attempt to sell the domain name, and concludes that Respondent thus registered the disputed domain name in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant argues that Respondent uses the disputed domain name to directly compete with Complainant, which misleads existing and potential customers who are looking for information about services related to Complainant’s business. Complainant contends that the effect of Respondent’s registration and use of the <halfmoonjamaica.com> domain name is to interfere with Complainant’s business and goodwill, presumably for commercial gain, demonstrating bad faith. The panel in Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), stated that the respondent registered a domain name substantially similar to the complainant’s mark in order to operate a competing online website, which disrupted the complainant’s business and was found to be in bad faith. The Panel similarly concludes that Respondent’s registration and use of the <halfmoonjamaica.com> domain name is in bad faith under Policy ¶ 4(b)(iii), as it competes with Complainant’s travel and accommodations business by offering similar services.
Complainant also contends that Respondent seeks to make a financial gain, by intentionally attracting Internet users to its website by creating confusion between Complainant’s HALF MOON mark and Respondent’s website along with the services offered thereon. Complainant argues that including the HALF MOON mark at the resolving website compounds the likelihood of confusion and the mistaken belief by consumers that Complainant in some way authorized or endorsed Respondent’s activities related to the domain name. The Panel finds that the <halfmoonjamaica.com> domain name fosters confusion to online consumers, particularly in conjunction with the resolving website which offers competing services, and may thus conclude that Respondent registered the <halfmoonjamaica.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <halfmoonjamaica.com> domain name be TRANSFERRED from Respondent to Complainant.
M. Kelly Tillery, Esquire, Panelist
Dated: September 20, 2013
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