Great Eastern Resort Management, Inc. v. Ki Sung
Claim Number: FA1409001578239
Complainant is Great Eastern Resort Management, Inc. (“Complainant”), represented by William P. Dickinson of Williams Mullen, Virginia, USA. Respondent is Ki Sung (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <massanutten.com>, registered with 1&1 Internet AG.
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.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2014; the National Arbitration Forum received payment on September 4, 2014.
On September 10, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <massanutten.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2014 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@massanutten.com. Also on September 10, 2014, 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 22, 2014.
On September 26, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Siew Ling Tan 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the management company for Massanutten Resort, a 6,000 acre resort located in Rockingham County, Virginia. The resort comprises hotel accommodations, restaurants, timeshare projects, swimming pools, golf courses, ski trails, a spa and other amenities. Complainant, its licensees and predecessors in interest have used the trade mark MASSANUTTEN since around the late 1960s. Complainant is the registered owner of the MASSANUTTEN mark and other marks incorporating the word MASSANUTTEN in connection with several classes of services. Complainant also owns registered copyright in visual material depicting the “MASSANUTTEN M logo”.
Substantial amounts have been spent on marketing the Massanutten Resort and its facilities throughout the word. Complainant’s domain name <massresort.com> was registered in 1996. A federal judge found in 2002 that the name MASSANUTTEN had by then become “specifically associated with [Complainant’s] resort” (Great Eastern Resort Corp., 189 F.Supp.2d at 473).
The disputed domain name was registered on July 12, 2004. Respondent operates a website at the domain. The website displays the MASSANUTTEN and MASSANUTTEN RESORT trade marks and other content which falsely suggests that the disputed domain name is associated with the Massanutten Resort.
The disputed domain name is identical and/or confusingly similar to Complainant’s said trade marks. It incorporates the MASSANUTTEN trade mark in its entirety. The addition of the top level domain “.com” does not obviate the confusion. Confusion is all the more so with Respondent’s use of Complainant’s MASSANUTTEN marks.
Respondent has no rights or legitimate interests in respect of the disputed domain name and this is borne out by the fact that Respondent has no license, permission or authorization from Complainant to use the MASSANUTTEN and MASSANUTTEN RESORT marks or any other marks; Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services; Respondent makes no legitimate non-commercial or fair use of the disputed domain name; and to the best of Complainant’s knowledge, Respondent is not commonly known by the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s intention is to attract customers to the website by creating a likelihood of confusion with Complainant’s registered marks, for commercial gain. Internet users could easily mistake Respondent’s website as being affiliated to or authorized by Complainant. Respondent’s bad faith is also demonstrated by his placement of advertisements and links to the websites of competing businesses and the fact that he has registered other domain names incorporating well-known marks.
B. Respondent
Respondent has been operating the domain name since 2006, long before Complainant’s MASSANUTTEN mark was registered with the USPTO in 2013. Further, Massanutten is a geographically descriptive term. The content provided on the webpage is not in bad faith and only local area information of the Massanutten area is provided on this portal. Other organizations and places in that area which names contain the word “Massanutten” include the Massanutten Mountain, Massanutten Trail, Massanutten Military Academy, Massanutten Technical Center, etc. Respondent’s portal site provides information on golf clubs, restaurants, hotels, resorts, mountain trails, ski resorts, camp sites, and vacation rental housing in the area. The names, contact number and official links of the various ski resorts, golf clubs, etc. are stated clearly.
(a) The disputed domain name is identical to the MASSANUTTEN trade mark in which Complainant has rights.
(b) There is no prima facie evidence that Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) Complainant has not established that the disputed 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 has proven it has rights in the trademark MASSANUTTEN.
The Panel agrees that Respondent’s domain name is identical to Complainant’s trademark. The only difference between the two lies in the generic top level domain “.com” which is of no consequence in relation to the issue under consideration under paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(i) of the Policy has therefore been established.
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, after which, the burden shifts to Respondent to show he has rights or legitimate interests. (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).)
The Panel is of the view that Complainant has failed to show that Respondent lacks a legitimate interest in the disputed domain name. Whilst Complainant has registered trademark rights in MASSANUTTEN, “Massanutten” is also a generic term for a geographical location. The disputed domain name was registered in 2004 and, according to Respondent, used since 2006. On the other hand, Complainant secured the registration of MASSANUTTEN only in 2013.
The Panel is of the view that the principle cited in the case of Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucia.Com Limited (WIPO Case No. D2006-0749) applies in this case: “… if a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest”. The registration of Complainant’s MASSANUTTEN trade mark which consists exclusively of a generic word as a means of identifying its services should not extend to it an entitlement to prevent the use of the word “Massanutten” by others in commerce in accordance with its primary generic meaning and significance. There is a lack of clear evidence that Respondent had in mind Complainant or its competitors when he registered the disputed domain name and on the face of it, Respondent’s use of the domain name for a website providing information on the location and resorts located in Massanutten appears to be bona fide use. (See Southern Highlands, LLC v. Realtor a/k/a Matt Sarner, NAF Claim No. FA070700125866; Kur-und Verkehrsverein St., Moritz v. Domain Finance Ltd, WIPO Case No. D2004-0158.) What is presented on Respondent’s website appears to relate to the generic meaning of the domain name and the offering on the website is, in the Panel’s view bona fide. (See Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network (WIPO Case No. D2007-1318; Gorstew Limited v. Worldwidewebsales.com, WIPO Case No. D2002-0744.) The Panel does not find Respondent’s website to be misleading and Complainant has failed to show that Internet users would undoubtedly be led into thinking that Respondent’s website is the official website of Complainant.
Paragraph 4(a)(ii) of the Policy has therefore not been established.
As Complainant has not met its burden of showing that Respondent lacks rights or a legitimate interest in respect of the disputed domain name, the Panel need not review in depth the issue of bad faith. Suffice to say, Respondent registered the domain name almost 9 years before registration rights to the generic word and name of a geographical location, “Massanutten”, were secured by Complainant and the Panel finds no evidence of bad faith use by Respondent.
Paragraph 4(a)(iii) of the Policy has therefore not been established.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <massanutten.com> domain name REMAIN WITH Respondent.
Francine Siew Ling Tan, Panelist
Dated: October 4, 2014
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