Pade Publishing, LLC, a Colorado limited liability company v. Desert Resorts Inc
Claim Number: FA1411001588977
Complainant is Pade Publishing, LLC, a Colorado limited liability company (“Complainant”), represented by Robert J. Evans of Anderholt Whittaker LLP, California, USA. Respondent is Desert Resorts Inc (“Respondent”), represented by Jerome D. Stark of Law Offices of Jermone D. Stark, P.C., California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <desertgolf.com>, registered with Network Solutions, 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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2014; the National Arbitration Forum received payment on November 17, 2014.
On November 7, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <desertgolf.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 November 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 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@desertgolf.com. Also on November 24, 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 December 15, 2014.
On December 22, 2014, an additional submission was received in a timely manner.
On December 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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
Since 2001, Complainant has published Desert Golf & Tennis, a luxury magazine illustrating golf and tennis lifestyles and activities. Complainant uses the domain name <desertgolfer.com> for its primary website. Complainant registered the <desertgolfer.com> domain name on July 19, 2001. The <desertgolf.com> domain name is confusingly similar to the DESERTGOLFER.COM mark as the domain name merely removes the “e” and “r” from the mark.
Respondent is not commonly known by the <desertgolf.com> domain name. It has never operated a business under the “desert golf” name, nor has it operated an active commercial website under the name. Respondent’s Desert Resorts, Inc. is a defunct corporation. Respondent has engaged in a scheme of registering popular domain names since at least 1995, and holds the domain names hostage to the highest bidder. Respondent has not used the disputed domain name for any legitimate commercial purpose. The disputed domain name resolved to some stagnant pages from 1995, and now resolves to an “Under Construction” page. To further demonstrate Respondent’s lack of rights, Respondent has refused to sell the domain name for $50,000.
Respondent’s re-registration is designed to thwart Complainant’s business efforts, thwart its ability to acquire legitimate intellectual property, and extort Complainant to pay inordinate sums for the domain name. Respondent re-registers the disputed domain name with the express purpose of capitalizing on Complainant’s success.
B. Respondent
The <desertgolf.com> is not similar to <desertgolfer.com> or any mark that Complainant claims rights. There is no evidence in the record to support secondary meaning in Complainant’s alleged common law mark. In 1998, Complainant filed the DESERT GOLF with the United States Patent and Trademark Office ("USPTO"). On October 2, 2000, Complainant abandoned this mark.
Respondent registered the disputed domain name in 1995, and put it to commercial use. Respondent has used the disputed domain name to receive and process golf tee-times and lodging reservations. Now, the disputed domain name has been re-purposed for a legitimate noncommercial function of archiving the appearance of HTML v.1 coding, circa 1995.
Respondent did not register the domain name in bad faith as there was no competing mark or domain name comprised of “Desert Golf.” Respondent’s subsequent renewals of the subject domain name were not made with the intent to thwart Complainant, or even with Complainant in mind. Respondent has made no attempt to sell the disputed domain name, and the allegation that it refused to sell Complainant the domain for $50,000 is untrue and unsubstantiated. Respondent has not engaged in bad faith as there is no evidence of disruption or evidence of commercial gain from user confusion. Further, Respondent is not a serial cybersquatter. Respondent has never been subject to an objection or formal change to the registration and use of any domain name until this Complaint.
Respondent requests a finding of reverse domain name hijacking. Complainant, itself, engaged in cybersquatting by registering the <desertgolfer.com> domain name several years after Respondent registered the subject domain name.
C. Additional Submissions
Complainant filed an additional submission on December 22, 2014. It contends it held numerous telephone calls with Respondent’s agents, including Taylor and counsel for Complainant, Mr. Jerome “Jerry” Stark, Esq. (Stark) wherein Complainant offered to purchase the domain desertgolf.com, including the most recent offer of $50,000.00 which Respondent misconstrued as “fifty” and terminated negotiations because he was offended. While it is true, Complainant does not have a specific email or written offer in its possession to support that $50,000 offer, Complainant does have e-mails from Complainant’s principal Mr. Tim Pade (“Pade”) to Stark as agent for Respondent that demonstrate Complainant had a long history of serious efforts to purchase an interest in the domain, and cites four telephone calls to Jerome Stark as evidence thereof.
Complainant also contends that contrary to Respondent’s attempt to misdirect the Panel, Complainant never abandoned the use of Desert Golf Magazine for any amount of time, and certainly not for a period of 14 years. Complainant simply forgot to re-register its USPTO mark several years ago, but has continuously published Desert Golf Magazine through those years, constantly ripening its common law rights in that mark.
Complainant further contends that Respondent has never raised a concern over complainant’s actual commercial use of its registered domain desertgolfer.com; and, because of Complainant’s consistent effort to acquire Respondent’s domain desertgolf.com over all these years, Respondent has clearly waived its rights to a claim for reverse cybersquatting. The response to the Claimant is merely a simple denial. Respondent’s only evidentiary document relates to Complainant’s registered trademark, which is not the subject at issue. Respondent fails to provide any credible documentary evidence to support its theory that it is a legitimate commercial venture.
The Respondent also submitted an Additional Submission, but it was received after the deadline for submissions had passed, and was not in compliance with Supplemental Rule #7. Therefore, the Panel will not consider it.
(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.
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.
While Complainant has not provided trademark registration to demonstrate Policy ¶ 4(a)(i) rights in the subject mark, the Panel notes that such registration is not necessary to satisfy this prong of the Policy if Complainant can demonstrate common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims it has published Desert Golf & Tennis, a luxury magazine illustrating golf and tennis lifestyles and activities since 2001, that it uses the domain name <desertgolfer.com> for its primary website, and that this domain name was registered July 19, 2001. Complainant has submitted evidence of the <desertgolfer.com> registration. This evidence is sufficient to show that consumers identify DESERTGOLFER.COM as the source of Complainant’s magazine and related offerings, dating back to 2001. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”); Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Nat. Arb. Forum Jan. 17, 2007) (“Complainant’s . . . registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s rights in the mark.”).
Complainant argues that the <desertgolf.com> domain name is confusingly similar to the DESERTGOLFER.COM mark as the domain name merely removes the “er” from the mark. Prior panels have determined that minor alterations such as the removal of letters from an otherwise incorporated mark fail to dispel confusing similarity. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark). Accordingly, the Panel finds that the <desertgolf.com> domain name is confusingly similar to the DESERTGOLFER.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel notes that 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). If it does, the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). Complainant asserts that Respondent is not commonly known by the <desertgolf.com> domain name. Complainant claims that Respondent has never operated a business under the “desert golf” name, nor has Respondent operated an active commercial website under the name. Complainant also asserts that Respondent’s “Desert Resorts, Inc.” is now a defunct corporation. The Panel notes that Respondent’s rebuttal is not based on the premise that it is commonly known by the disputed domain name. Given the available evidence, the Panel determines that there is insufficient information to show Respondent is commonly known by the <desertgolf.com> domain name pursuant to Policy ¶ 4(c)(ii). See, e.g., True Value Co. v. Andrew Bucklin d/ba True Value Web, FA 1497691 (Nat. Arb. Forum June 13, 2013).
Complainant contends that Respondent has not used the disputed domain name for any legitimate commercial purpose. The Panel determines that Respondent has not put the disputed domain name toward a protected use, and finds Respondent’s inactivity indicative of Respondent’s lack of rights in the subject domain name. Alternatively, the Panel determines that Respondent’s links are related to or compete with Complainant and therefore finds that such competing use shows Respondent is making no bona fide offering of goods or services, or any legitimate noncommercial or fair use of the domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007).
To further demonstrate Respondent’s lack of rights, Complainant asserts that Respondent has refused to sell the domain name for $50,000, per Complainant’s request. The Panel declines to address this issue.
Complainant does not allege that Respondents primary purpose in initially registering the domain desertgolf.com was intended to disrupt Complainant’s business or to interfere by competing with it since Complainant did not yet have its own domain desertgolfer.com until a few years after Respondent registered derertgolf.com. However, Complainant does allege that as years passed and Respondent observed Complainant’s commercial success, Respondent subsequently re-registered desertgolf.com with the express purpose of capitalizing on Complainant’s success, and leverage what Respondent observed to be a need to acquire Respondent’s domain desertgolf.com.
The Panel agrees that the present circumstances are so extraordinary as to warrant consideration of Complainant’s re-registration argument that Respondent’s use of the disputed domain name to feature links such as “Spa Vacations,” “California Golf,” and “Course Tee Times” is in competition with Complainant, and therefore disrupts Complainant’s own offerings in violation of Policy ¶ 4(b)(iii). See Schmidheiny v. Weber, 319 F.3d 581, 583 (3rd Cir. 2003) (holding that the “registration” of a domain name for the purposes of the Anti-cybersquatting Consumer Protection Act includes both the initial registration of the domain name or a subsequent reregistration of that domain name with a different registrar by a different registrant). We therefore conclude that Respondent is acting in bad faith.
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <desertgolf.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: January 3, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page