Peabody Management, Inc. v. Shawn Boedecker
Claim Number: FA1708001746738
Complainant is Peabody Management, Inc. (“Complainant”), represented by Belinda Scrimenti of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Shawn Boedecker (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <peabodyroanoke.com> and <thepeabodyroanoke.com> (‘the Domain Names’), registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2017; the Forum received payment on August 29, 2017.
On September 1, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <peabodyroanoke.com> and <thepeabodyroanoke.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2017 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@peabodyroanoke.com, postmaster@thepeabodyroanoke.com. Also on September 5, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarised as follows:
The Peabody is a famous luxury hotel located in Memphis, Tennessee. Since at least as early as 1869 and long prior to registration of the Domain Names Complainant has offered, inter alia, hotel services under and has registered various marks including PEABODY, THE PEABODY, and PEABODY HOTEL GROUP, registered in the USA since at least 2002. It owns domain names containing PEABODY, including peabodyhotels.com and peabodymemphis.com.
Complainant first announced its plan to open a new PEABODY hotel in Roanoke Texas on June 29, 2017 via press release. The Domain Names were registered on July 1, 2017 the day after several news outlets reported this.
The Domain Names resolve to landing pages that state ‘Learn How You Can Get
This Domain’.
The Domain Names are confusingly similar to Complainant’s marks. Adding a geographical location and a gTLD to another’s trademark is not sufficient to avoid confusion.
Complainant has no relationship with Respondent and Complainant has not authorised Respondent to use its marks or to register the Domain Names.
Using the Domain Names for a passive landing page is not a bona fide offering of goods and services or a legitimate non commercial or fair use.
Respondent is not commonly known by the Domain Names.
Inactive holding of a domain name can constitute registration and use in bad faith. The Domain Names disrupt Complainant’s business and were deliberately registered for commercial gain either to attract Internet users to Respondent’s web site based on a likelihood of confusion with Complainant’s PEABODY mark or to seek compensation for Complainant to acquire it, all of which is bad faith. Particularly clear evidence of this bad faith is the timing of the registration of the Domain Names 2 days after Complainant’s press release that it was to open a PEABODY hotel in Roanoke Texas. This shows actual knowledge of Complainant and its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Peabody is a famous luxury hotel located in Memphis, Tennessee. Since at least as early as 1869 and long prior to registration of the Domain Names Complainant has offered, inter alia, hotel services under various marks including PEABODY, and including the word marks THE PEABODY and PEABODY HOTEL GROUP, registered in the USA, since at least 2002. It owns domain names containing PEABODY, including peabodyhotels.com and peabodymemphis.com.
Complainant first announced its plan to open a new PEABODY hotel in Roanoke Texas on June 29, 2017 via press release. The Domain Names were registered on July 1, 2017 the day after several news outlets reported Complainant’s intentions.
The Domain Names registered in 2017 resolve to landing pages that state ‘Learn How You Can Get This Domain’.
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.
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(f), 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 (Forum July 31, 2000) (holding that 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.”).
Identical and/or Confusingly Similar
The Domain Names in this Complaint consist of signs confusingly similar to Complainant’s THE PEABODY and PEABODY HOTEL GROUP marks (registered in the USA for hotel services with first use recorded as 1869), the geographical term ‘roanoke’ and the gTLD .com.
The omission of the word ’the’ in peabodyroanoke.com does not distinguish it from THE PEABODY mark, nor does the non use of ‘hotel group’ in both Domain Names distinguish them from Complainant’s PEABODY HOTEL GROUP mark as the distinctive part of those marks PEABODY is still recognisable in the Domain Names. It is noted, in any event, that Complainant offers services under PEABODY without ‘the’ or ‘hotel group’ as for example in its domain name peabodymemphis.com where PEABODY is used with a non distinctive geographical term and so Complainant appears to have common law rights in PEABODY simpliciter for hotel services in any event.
The addition of the geographical term ‘roanoke’ does not serve to distinguish the Domain Names from Complainant’s THE PEABODY or PEABODY HOTEL GROUP registered marks or its PEABODY unregistered mark as geographical terms have been found not to distinguish domain names from a Complainant’s mark. See General Motors LLC v Domain Admin, Privacy Protection Service INC dba PrivacyProtect.org, FA 1656166 (Forum Feb 12, 2016)(finding the addition of ‘uzbekistan’ to a Complainant’s trade mark in a domain name is inconsequential to a Policy 4 (a)(i) analysis.) It is noteworthy, however, that the use of the geographical term ‘roanoke’ here is likely to add to confusion as Complainant announced its intention to open a THE PEABODY/PEABODY hotel in ‘Roanoke’ two days before the Domain Names were registered.
The gTLD .com does not serve to distinguish the Domain Names from Complainant’s THE PEABODY or PEABODY HOTEL GROUP registered marks or its PEABODY unregistered mark. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Names are confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
There has been no use of the Domain Names. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i). )
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not answered this Complaint or explained why it should be allowed to register domain names confusingly similar Complainant’s well known THE PEABODY or PEABODY HOTEL GROUP registered marks or Complainant’s unregistered mark PEABODY and a reference to a destination where Complainant has announced it will open another THE PEABODY/PEABODY hotel two days after that announcement. The timing and specific content of the Domain Names shows Respondent was aware of Complainant and its business at the time of their registration.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. It is noted that the pages attached to the Domain Names state “Learn how you can get this domain’ suggesting the Domain Name is for sale for profit contrary to Policy 4 (b)(i).
In any event passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
In addition this case appears to be an opportunistic registration two days after Complainant announced it intended to trade using its PEABODY marks in Roanoke Texas and a day after this was reported by the press which is clearly bad faith aimed at selling the Domain Names to Complainant for profit or at the very least disrupting its business. See Arizona Board of Regents, for and on behalf of Arizona State University v Weiping Zheng, FA 1504001613780 (Forum May 28, 2015)(finding that Respondent had acted in opportunistic bad faith according to Policy 4 (a)(iii) when it registered a disputed domain name corresponding to a complainant’s trade mark very shortly after Complainant’s applications for that trade mark were made public). Accordingly, the Panel also holds that Respondent registered the Domain Names in bad faith contrary to Policy 4 (b)(iii).
As such, the Panel holds that Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peabodyroanoke.com> and <thepeabodyroanoke.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne Panelist
Dated: October 8, 2017
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