DECISION

Margaritaville Enterprises, LLC v. Callaway, Joann

Claim Number: FA2208002009673

PARTIES

Complainant is Margaritaville Enterprises, LLC (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Callaway, Joann (“Respondent”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <margaritavillenews.com>, (“the disputed domain name”) registered with Register.com, Inc..

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

The Honorable Neil Anthony Brown KC, (Chair), Dawn Osborne and Alan L. Limbury as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 24, 2022; the Forum received payment on August 25, 2022.

On August 29, 2022, Register.com, Inc. confirmed by e-mail to the Forum that the <margaritavillenews.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the domain name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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”). The Complaint has therefore been filed pursuant to the Policy.

On August 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2022 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@margaritavillenews.com. Also on August 30, 2022, 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 19, 2022.

Complainant submitted an additional submission on September 22, 2022.

Respondent submitted an additional submission on September 23, 2022.

On September 29, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed The Honorable Neil Anthony Brown KC, (Chair), Dawn Osborne and Alan L. Limbury as Panelists.

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.

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

1.Complainant is a United States company engaged in the provision of restaurants, fan club services rendered via on-line computer network, entertainment services, live musical performances and conducting a series of live musical concerts, retail store services, bar services and related goods and services.

2. Complainant has rights in 70 live United States trademark and service mark registrations for the MARGARITAVILLE mark, including:

MARGARITAVILLE (U.S. Reg. No. 1926809) for a restaurant, attached hereto as Annex 4;

MARGARITAVILLE (U.S. Reg. No. 2082231) for fan club services rendered via on-line computer network;

MARGARITAVILLE (U.S. Reg. No. 3002007) for entertainment services, namely, providing live musical performances and conducting a series of live musical concerts; and

MARGARITAVILLE (U.S. Reg. No. 3501784) for bar services.

3.Complainant has provided its goods and services under the MARGARITAVILLE mark for over 30 years.

4. Respondent registered the disputed domain name on August 2, 2009.

5. The disputed domain name is confusingly similar to the MARGARITAVILLE trademark because it contains the mark in its entirety and the addition of the generic word “news” to the mark which does not distinguish the domain name from the trademark.

6. Respondent does not possess any legitimate rights or interests in the disputed domain name. Respondent cannot demonstrate that it comes within any of the criteria set out under paragraph 4 (c) of the Policy.

7. Further, the disputed domain name resolves to an inactive website displaying the error message, “This site can’t be reached” and as Respondent is not currently using the disputed domain name for an active website, she is not using the domain name for a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(1) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii).

8. Respondent registered and is using the disputed domain name in bad faith because Respondent had actual knowledge of the MARGARITAVILLE mark when she registered the disputed domain name, which can be inferred from the fame and notoriety of the mark; is passively holding it and, upon notice of the dispute, Respondent did not unconditionally transfer it to Complainant. The only use to which the disputed domain name has been put is to support a webpage showing an error message, showing that it is not used for any legitimate purpose and that Respondent was motivated by bad faith in registering the disputed domain name. Respondent did not, within a reasonable time, transfer or agree to transfer the disputed domain name to Complainant, which is evidence of bad faith.

B. Respondent

Respondent made the following contentions.

1. Respondent has been prejudiced by the delay of 13 years in Complainant bringing this Complaint which should therefore be dismissed under the equitable doctrine of laches, a position maintained in prior UDRP decisions.

2. The proceeding should also be dismissed because Complainant has not adduced evidence that the disputed domain name was registered in bad faith and used in bad faith.

3. In that regard, Complainant has relied solely on alleged inference without evidence.

4. In particular, Complainant’s trademark rights are not as strong as contended and it must show bad faith intention in the registration of the disputed domain name, which has not been done.

5. Complainant does not allege that Respondent registered the disputed domain name for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant and Respondent confirmed that the disputed domain name was not registered to sell, rent, or transfer. Thus, there was no bad faith at the time of registration.

6. No pattern of conduct has been alleged or proven.

7. It has not been alleged or proven that Respondent purchased the disputed domain name to disrupt Complainant’s business within the meaning of the Policy. Respondent did not register the disputed domain name to disrupt Complainant’s business. Nor did she act in bad faith.

8. Nor is it alleged or proven that Respondent registered the disputed domain name intentionally to attract internet users to her website by creating a likelihood of confusion.

9. It is insufficient and of no effect for Complainant to allege that Respondent had constructive knowledge of Complainant’s mark. In particular, knowledge of a song title cannot establish bad faith.

10. Even if Respondent had knowledge of Complainant’s trademark, that knowledge is insufficient to establish bad faith without more.

11. Complainant’s contentions regarding passive holding cannot establish bad faith registration and fail to establish bad faith use.

12. It is entirely inappropriate to regard this case as one of passive holding, as it is not such a case. The alleged inferences relied on do not establish bad faith.

13. Complainant’s contention that a failure to transfer a domain name establishes bad faith registration and use is fundamentally flawed.

14. The four trademarks Complainant cites have no relation to the news services Respondent contemplated establishing by means of the disputed domain name.

15. Respondent has a legitimate right to register a domain name for use in connection with a news website related to fun and activities of a fictitious geographic area.

As Part of Respondent’s case, she submitted a Declaration to which detailed attention will be given later in this decision, but the salient points in the Declaration are

(a) Respondent is and was in 2009 when she registered the disputed domain name, a real estate broker in Fort Myers, Southwest Florida.

(b) She conceived the idea of registering a domain name to cover “the fun crazy things people did while hanging out in South West Florida.” She was aware of the song Margaritaville but was not aware of the Complainant or any of its trademarks until 2022. However, she did not have the necessary time to construct the website because of her real estate business;

(d) She was threatened with the current proceeding if she did not voluntarily transfer the disputed domain name to Complainant.

C. Additional Submissions

Both parties have filed additional submissions that have expanded on their original submission and have added some salient points which will be dealt with if and when they arise in the course of this decision.

RESPONDENT’S APPLICATION TO DISMISS THE PROCEEDING

Respondent has submitted that the Panel should dismiss the proceeding as being outside the Policy and as being a trademark dispute about the scope of Respondent’s trademarks. The Panel rejects that application, as the proceeding is clearly within the Policy and is a normal UDRP proceeding which will be accepted or rejected depending on the evidence.

In support of the application, Respondent submitted that “the four trademarks Complainant cited have no relation to the news services … contemplated with the domain name.”

The four trademarks referred to are those specified above in the Contentions section of this decision.

In support of its application to dismiss, Respondent submits that “(n)one of them (i.e. the trademarks) relate to news services.” It is also submitted by Respondent that, apart from the four specified trademarks, the 70 other trademark and service marks relied on by Complainant, but not specified in detail are also “not related to news services.” The Respondent’s conclusion is that there are therefore “questions” regarding the scope of rights Complainant has related to the trademark MARGARITAVILLE and that the Panel should dismiss the proceeding as being outside the Policy and based on a trademark dispute.

The Panel does not agree with that analysis or its conclusion.

In the first place, the obligation on Complainant is not to show that the trademarks relied on by Complainant relate to news services or anything else, and it is a complete misreading of the Policy to suggest that it is. The obligation on the Complainant is to show that it has “a trademark” (emphasis added) with which the disputed domain name is either identical or confusingly similar. If Complainant passes that test, the inquiry will then become one of whether the Respondent has a right or legitimate interest in the domain name and whether Respondent registered and is using it in bad faith. At that time, the activities of the Complainant as revealed by the terms of its trademarks and other relevant circumstances may be examined to see if the remaining elements in the Policy have been made out.

Secondly, it is clear from the evidence that Complainant has “a trademark” and, in fact, four major trademarks for MARGARIVAVILLE and 70 others which give more details of its activities. This information can then be used to answer the remaining two issues under the Policy. But at this stage, the trademarks relied on by Complainant appear to be valid and should be accepted as such until they are shown to be otherwise, which has not occurred.

Thirdly, the Respondent is in any event wrong in submitting that none of the four principal trademarks “relate to news services.” The four trademarks cover services including: “fan club services rendered via on-line computer network”, “mail order services featuring books”; and “retail shops featuring books and entertainment services”. Such services are clearly “related” to news services as they involve communications with prospective customers and news of the services being provided under the trademarks. They are in reality essential to news services and could not survive without news of them being disseminated. It is therefore untrue to say that the four trademarks have “no relation to news services”. The 70 other trademarks referred to also cover a vast range of entertainment and hospitality services which “relate to“ news services as they depend on communications with potential customers and news of offerings that are being made in those fields to customers and to enlist new customers.

The proceeding is therefore well within the Policy and is not a trademark dispute about the scope of the Complainant’s trademarks. Accordingly, the proceeding is within the Policy and one where Complainant is in the course of making out its first ground and it should be permitted to proceed.

The Panel will therefore not dismiss the proceedings as being outside the Policy or as being a trademark dispute.

LACHES

Respondent has also submitted that this proceeding should be barred because of laches or delay in bringing the proceeding. The Chair of the Panel is of the view that, subject to argument, it may be in some cases, that a proceeding should be barred or stayed for that reason, but this is not such a case. The Respondent maintains that it is prejudiced by the time it has taken for the Complainant to bring the proceeding. However, 13 years have passed since the Respondent registered the disputed domain name and Respondent herself has done nothing with it in any practical sense during that time except retain it and, in particular, Respondent has not used it to set up a website. Moreover, Respondent has made it plain that the use of the disputed domain name is only in a hiatus because Respondent has not had “the necessary time” to construct the website and that, far from being prejudiced, Respondent states that she is keen to resume activities and the use of the disputed domain name for the purpose that is only too apparent from the terms of the disputed domain name itself, namely to disseminate news concerning Margaritaville. Respondent still has, as she put it, the “goal” “to pick up where I left off” and resume using the disputed domain name to “share the news”. That does not sound like prejudice being suffered by Respondent, but rather a degree of heightened enthusiasm to continue to own and use the disputed domain name so that it may be used for Respondent’s alleged original purpose in acquiring it. Accordingly, even if laches can in some cases be a ground for staying a proceeding, a case has not been made out why the present proceeding is one that calls for the proceeding to be barred. The delay has been caused substantially by Respondent herself and Respondent has therefore not shown that this is an appropriate case for barring the proceeding.

The Panel will therefore not order that the proceeding be barred or stayed on the ground of laches.

FINDINGS

The following findings are made by the majority of the Panel.

1. Complainant is a United States company engaged in the provision of goods and services, including news, in the hospitality, entertainment, tourism and related industries.

2. Complainant has established its trademark rights in the four registered trademarks set out above (“the Complainant’s trademarks”).

3. Respondent registered the disputed domain name on August 2, 2009.

4. The evidence shows that the disputed domain name is confusingly similar to the Complainant’s trademarks.

5. The evidence shows that Respondent does not have a right or legitimate interest in the disputed domain name.

6. The evidence shows that Respondent has registered and used the disputed domain name in bad faith.

DISCUSSION

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.

The Panel will now turn to consider each of those elements.

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MARGARITAVILLE mark based upon a series of registrations of the mark with the USPTO (e.g., reg. no. 1,926,809, registered October 17, 1995). See Compl. Annexes 4-7. In particular, Complainant submits that it has the four registered trademarks for MARGARITAVILLE set out above and a total of 70 registered trademarks for MARGARITAVILLE in the United States. Thus, although under the Policy, Complainant is obliged to prove only one trademark, it is useful to know that it also owns numerous other registered trademarks for MARGARITAVILLE relating to various goods and services. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under paragraph 4(a)(i)) of the Policy. Since Complainant has provided evidence of registration of the MARGARITAVILLE mark with the USPTO, the Panel finds that Complainant has rights in the mark under paragraph 4(a)(i) of the Policy.

The next question that arises is whether the disputed <margaritavillenews.com> domain name is identical or confusingly similar to Complainant’s MARGARITAVILLE mark. It is not identical to the trademark as it includes the word “news” in addition to the trademark. However, Complainant argues that the domain name is confusingly similar to the mark because it contains the MARGARITAVILLE mark in its entirety and adds the word “news” and the gTLD “.com” to form the disputed domain name. As the word “news” is a generic word, it should be said here that the addition of generic or descriptive words and gTLDs to a mark, as in the present case, does not distinguish the disputed domain name from the mark incorporated therein per paragraph 4(a)(i) of the Policy and does not prevent a domain name from being confusingly similar to the relevant trademark. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, some internet users may well think that the disputed domain name relates to Complainant’s MARGARITAVILLE mark and the provision of news by means of the domain name and they would conclude that the domain name is confusingly similar to the mark. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered MARGARITAVILLE mark within the meaning of paragraph 4(a)(i) of the Policy.

The Panel finds that Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that Complainant must first 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. If and when that is done, the burden of proof then shifts to Respondent to show evidence that it does have a right or legitimate interest in the domain name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)). When all of the evidence is submitted, it remains for the Complainant to show on the balance of probabilities that the Respondent probably does not have a right or legitimate interest in the domain name.

Following that process, the majority of the Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a)Respondent has, prima facie, chosen to take Complainant’s MARGARITAVILLE mark and to use it in the disputed domain name without permission, adding only the word “news” to the mark, which does not negate the confusing similarity between the disputed domain name and the trademark;

(b) Respondent registered the disputed domain name on August 2, 2009 long after the Complainant had registered and used its trade mark and established a reputation therein;

(e) Respondent has failed since 2009 to make an active use of the disputed domain name, which resolves to an inactive webpage with an error message, but appears to have kept the disputed domain name since registration and presumably paid the registration renewal fees on it, and has not otherwise put it to any practical use;

(d) Respondent has engaged in these activities without the consent or approval of Complainant.

As Complainant has made out the prima facie case that it must establish, it now falls to the Panel to determine if Respondent has rebutted that case and to determine in the light of all of the evidence if Respondent has a right or legitimate interest in the disputed domain name.

To make out its case that it can rebut the prima facie case and that it has such a right or legitimate interest, Respondent may take either or both of two approaches. First, Respondent may try to come within one of the specific grounds set out in paragraph 4(c) of the Policy, proof of any of which will give rise to a right or legitimate interest in the domain name. Secondly, and whether or not Respondent comes within any of those specific grounds, Respondent may also make out any other ground that would give her a right or legitimate interest in the disputed domain name.

It is convenient to deal with each of those two approaches in turn.

THE GROUNDS UNDER Policy ¶ 4(c) FOR SHOWING A RIGHT OR LEGITIMATE INTEREST IN THE DISPUTED DOMAIN NAME

Taking the first approach, the Policy sets out three specific grounds on which Respondent may rely to show that she has a right or legitimate interest in the disputed domain name.

The first ground, which is set out in paragraph 4 (c)(i) of the Policy, is that Respondent has used or made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. However, that provision will not give Respondent in the present case a right or legitimate interest in the disputed domain name. That is because Respondent has not relied on this ground, has not used the disputed domain name to offer goods or services, has not made any demonstrable preparations to use the disputed domain name for any purpose and, in fact, has submitted that she has not used the disputed domain name at all in the 13 years since she registered it. So, that clause cannot be relied on in the present case.

The second ground, which is set out in paragraph 4 (c)(ii) of the Policy, is that Respondent has been commonly known by the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name and has not been licensed or authorized to use the MARGARITAVILLE mark and therefore does not have rights or legitimate interests in the domain name. UDRP panels have consistently held that evidence of a registrant’s name that is materially different from the domain name at issue is competent evidence to show that the respondent is not commonly known by the domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). All the evidence in the present case points to the fact that Respondent’s name is Joann Callaway and there is no dispute about this. Moreover, Respondent has not alleged that her name is “margaritavillenews” or anything other than Joann Callaway. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per paragraph 4(c)(ii) of the Policy.

The third ground, which is set out in paragraph 4(c)(iii) of the Policy, is that a respondent is making a legitimate noncommercial or fair use of the domain name. Clearly, that ground cannot be relied on in the present case as Respondent does not claim that she is using the disputed domain name for a legitimate noncommercial or fair use and there is no evidence that it is or has been used for any such purpose or for any other purpose.

The ground is quite specific, and mandates that “you (the respondent) are making a legitimate noncommercial or fair use of the domain name…” ( emphasis added”) and not that “you” plan to do this in the future.

It certainly does not cover a respondent who has had the opportunity to use a domain name for 13 years but has done nothing about it.

Moreover, the ground specifically says that the use should be “without intent for commercial gain”. It would be naïve in the extreme to assume that any such use as proposed by Respondent would be non-commercial and Respondent does not establish this or even assert it.

Respondent says the opposite of what the ground requires, namely that she is not using the disputed domain name and has not used it since she bought it 13 years ago. Her case is simply that she was entitled to register and keep the disputed domain name so that she could use it in the future which she would like to do when she has time, or as she says, “when time permits”. The only relevant evidence of what the Respondent has done with the disputed domain name is a printout of the disputed domain name’s resolving webpage, showing its error message and inactive status, so there is no evidence that the disputed domain name has been or is being used for a noncommercial use or for a fair use or any other use. Thus, the Panel finds that Respondent is not using the disputed domain name for a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

The Respondent is therefore not able to come within any of the specific grounds set out in the Policy that would give Respondent a right or legitimate interest in the disputed domain name. Up to this point, therefore, the Respondent has not been able to show that she has a right or legitimate interest in the domain name, based on any of the specific grounds listed in paragraph 4(c) of the Policy.

But that is not the end of the matter as Respondent is able to rely on any other ground, even if not listed in paragraph 4(c) that would show a right or legitimate interest in the disputed domain name if she can do so by evidence or argument. Respondent has taken up that opportunity.

OTHER GROUNDS FOR SHOWING A RIGHT OR LEGITIMATE INTEREST IN THE DOMAIN NAME

In that regard, Respondent additionally relies on the ground that she has a legitimate right to register the disputed domain name <margaritavillenews.com> for use in connection with a news website related to fun and activities of a fictitious geographic area.

Respondent specifically submits in the Response that she “registered the domain name to be used with a website that conveyed news related to Southwest Florida, a location that is known for its sea shells, margaritas and hanging out in outdoor restaurants. (Ex. 1 at ¶ 2-3.) It is an attitude and way of life that Complainant does not and cannot own.”

The Response goes on to say that Respondent is minded to create “a website that reported on the fun and adventure of the area.” (Id.) More specifically, Ms. Callaway wanted to report on “the fun and crazy things people did while hanging out in Southwest Florida.”

Respondent has also filed a Declaration that she has certified is true and correct. Her Declaration invokes the ambience of the region as:

“a perfect place to collect shells, drink margaritas, and hang out in outdoor restaurants…”.

She goes on to say that the Fort Myers area “has a lot of similarities to the song Margaritaville by Jimmy Buffet. Margaritas are served at local restaurants. The area also has the feel of six strings on front porches, old men wearing tank tops, many gift shops and people wearing flip flops.”

In essence, Respondent therefore says that she registered the disputed domain name because she wanted to create a website to cover the fun and adventure of South West Florida and not because she knew of any rights in the trademark MARGARITAVILLE, the Complainant company itself or “any of its trademarks until 2022”. The majority does not accept this.

The Panel must be satisfied not merely that Respondent’s explanation was possible, but that it was probable, or, at the very least, that it is evidence that is cogent enough to rebut the prima facie case. The Respondent must show that it probably was her intention to establish a news site to cover the fun and adventure of South West Florida and not because she knew of any rights in the trademark MARGARITAVILLE, the Complainant company itself, or any of its trademarks and wished to take advantage of the Complainant’s goodwill. In other words, Respondent must show that her conduct was consistent with that intention and that it went at least as far as enabling the Panel to say that in substance this is probably what was being done and that it was probably legitimate.

The Panel has considered the evidence on this issue very carefully but the majority of the Panel is unable to conclude on the balance of probabilities that it is even close to the evidence required. The majority of the Panel is not persuaded on the evidence that the Respondent had or has the intention of setting up a website devoted to the ambiance of Florida or part of it in the way she has expressed.

That is so for several reasons:

(a) the disputed domain name is <margaritavillenews.com>, not <margaritanews.com> or anything else that might invoke the ambiance of the relevant region of Florida. MARGARITAVILLE is Complainant’s trademark, a trademark that is, on the evidence, associated only with the Complainant. The addition of the word “news” must therefore mean news about or disseminated by and as part of the use of that trademark. The disputed domain name thus plainly appears to be not about the ambiance of the relevant region of Florida or the other cultural phenomena which interest the Respondent, but solely about the Complainant’s trademark and news about it.

(b) The majority of the Panel is far from convinced that the Respondent was ever intending to set up a website covering the ambiance of the region. If she were, Respondent would have done something about it other than ignore it for 13 years. The Respondent registered the disputed domain name 13 years ago and says that she has been too busy to set up her website. The majority of the Panel finds this singularly unpersuasive. The website could at least have been started to be built in 13 years, a consultant could have been retained, some preliminary arrangements could have been undertaken, some preliminary work could have been done or some notes could have been kept or even some record created as to what would be included on the website. None of this happened and the majority of the Panel therefore concludes that it cannot find that it was the intention of Respondent ever to create the website proposed.

(c) The period at issue was covered in part by the COVID -19 pandemic lockdowns where many people had more personal time at home, professions and businesses were less busy than usual and many activities of all kinds which were not already online were forced to take steps to get on line. Had the Respondent ever intended to work on the proposed website the majority of the panel would have expected some progress to have been made during this time.

(d) even accepting all that Respondent says, the proposal is too vague, as it is expressed to relate only to a proposed website about a “fictitious geographic area”. In the absence of at least some clarity and substance, the majority is unable to say on the balance of probabilities that this can give rise to a right or legitimate interest in the disputed domain name.

(e) Respondent has provided her own domain name in the Response as <gulfharbourproperties.com> and the Panel has thus determined that it is appropriate to look at Respondent’s website based on that domain name via the Wayback Machine at www.archive.org. On doing so, the Panel has noticed that as at 2 August 2009, when the domain name <gulfharbourproperties.com> was registered it shows, first of all, an active real estate business conducted by Respondent in the region which must have brought Respondent into contact with Complainant’s use of the MARGARITAVILLE mark and its extensive use of business and trade names for MARGARITAVILLE by the time the disputed domain name was registered. In particular, www.gulfharbourproperties.com at that time carried real estate and related references to Orlando, Florida[i]. At the time, when the disputed domain name was registered, there was an obviously active business of Complainant in Orlando under the trademark MARGARITAVILLE, as is shown by the links and screenshots, and that it was known as Margaritaville Orlando. It is therefore not unreasonable to say that by the time Respondent registered the disputed domain name, she was probably aware of Complainant’s commercial activities. Moreover, at that time, when the disputed domain name was registered, there were also other businesses that had been set up by Complainant, using the name Margaritaville[ii] as its business or trade name. It therefore seems more likely than not that at the time the disputed domain name was registered, Respondent was in proximity to Complainant and its business conducted under the name Margaritaville and that Complainant was making extensive use of the name MARGARITAVILLE in business. The basis of the Respondent’s argument is that she “did not know of Margaritaville Enterprises, LLC at the time I registered the domain name…” and that she did not know “about any rights to the “MARGARITAVILLE mark” at that time”. However, the disputed domain name was registered on 2 August 2009 and, at that time, Respondent was involved in real estate in the region where Complainant was active and where it was using the name MARGARITAVILLE in its business. The majority of the Panel therefore infers from all the circumstances that when Respondent registered the disputed domain name, she was probably aware of the MARGARITAVILLE mark and that she created the disputed domain name to invoke the trademark and use it for her own purposes.

For all of those reasons, it seems to the majority of the Panel that Respondent registered the disputed domain name in its present form because it included the Complainant’s trademark MARGARITAVILLE and to take advantage of the Complainant’s goodwill in that name.

The majority of the Panel therefore concludes that Respondent has not rebutted the prima facie case that Respondent does not have a right or legitimate interest in the disputed domain name.

The majority of the Panel also finds that no other ground has been established for concluding that Respondent has a right or legitimate interest in the disputed domain name.

The majority of the Panel therefore finds that Complainant has made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith.

Paragraph 4(b) the Policy sets out some criteria which, if proved, will establish bad faith registration and use.

They are, together with important introductory words, as follows:

Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that (the Respondent) has registered or (has) acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of (the Respondent’s) documented out-of-pocket costs directly related to the domain name; or

(ii) (the Respondent has) registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that (the Respondent has) engaged in a pattern of such conduct; or

(iii) (the Respondent has) registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, (the Respondent has) intentionally attempted to attract, for commercial gain, Internet users to (the Respondent’s) web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of (the Respondent’s) web site or location or of a product or service on your web site or location.

It is also clear from the introductory words “but without limitation” that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

However, as a first step, it is instructive to inquire if any of the specified criteria have been made out and the Panel will first deal with that issue.

It is possible, but not probable, that the Respondent’s conduct brings it within sub-paragraph 4(b) (i). Respondent registered the domain name on 2 August 2009, but in the intervening years has done nothing with the domain name except, presumably, pay the recurring registration fees and maintain her ownership of the registration of the domain name. There is no evidence that the Respondent registered the disputed domain name to sell it. No finding can therefore be made under this criterion.

Likewise, it cannot be said, with any conviction, that sub-paragraph (ii) has been made out. That is so because there is no evidence of the specified pattern of conduct.

However, the majority of the Panel finds that the criterion under sub-paragraph (iii) has clearly been made out. That is because the evidence, particularly those parts of the evidence referred to in the preceding section of this decision, shows that:

(a) Respondent is likely to have had actual knowledge of the commercial activities of Complainant carried out under the name MARGARITAVILLE, which was and is its trademark, and which Respondent included in the disputed domain name without any authority or permission;

(b) Respondent is likely to have had actual knowledge of the size and diversified nature of those commercial activities, including as they did, as at 2 August 2009[iii] when the domain name was registered, Margaritaville Coconut Television, Margaritaville cafes and restaurants at, inter alia, New Orleans, Myrtle Beach, Las Vegas, Key West, Orlando, Mexico, Margaritaville Gifts, Tour dates, Radio Margaritaville, provision for subscribing to Margaritaville news, actual news services, search facilities for news and search facilities for news articles; Respondent therefore must have known of the extensive use being made by Complainant of its MARGARITAVILLE trademark;

(c) Respondent registered the disputed domain name primarily for the purpose of either disrupting the business of Complainant by offering news about Complainant’s services when Complainant was already offering and providing it or disrupting it by diverting Internet users looking for such news from the Complainant for a competing commercial purpose.

Respondent is using the disputed domain name in bad faith by retaining the domain name and declaring in this proceeding and in her Declaration that she will at some point “pick back up” where she “left off” and that her “goal” is to use the domain name to “share the news of the area”. Clearly, “the news of the area” could be news relating to the activities of the Complainant trademark owner as Respondent has chosen to identify her proposed news solely as MARGARITAVILLE news or it could be other competing activity. Either would disrupt the activity of the Complainant. These are admissions of bad faith use. It is bad faith use to copy a trademark owner’s trademark, compete with it and to make it plain, as the present Respondent has done, that she intends at some point to pick up where she left off and use the domain name for news coming within the expression Margaritaville. All of these matters show that Respondent registered and used the domain name in bad faith and that she wishes to continue doing so.

Respondent’s case also falls within the provisions of sub-paragraph 4(iv) of the Policy. A complainant need only show that the respondent has “attempted” to attract Internet users by causing confusion, not that any actual confusion has yet occurred. The present Respondent has announced that she is ready and keen to pick up where she “left off” and resume providing news , not of “margaritas” , but of Margaritaville, which being the Complainant’s trade mark is likely to cause confusion. That attempt in the present case has been clearly demonstrated by registering the disputed domain name and in doing so taking the Complainant’s trademark without permission and asserting that it is to be used for news likely to be associated by Internet users with the Complainant’s trademarked goods and services because of the inherent meaning of the disputed domain name and now announcing that she is “ready to pick back up.” That is clearly claiming that she is and will be “the source, sponsorship, affiliation, or endorsement of” the news she is “ready” to put on her website, because, according to Respondent that is the “goal” of this entire exercise and her clear intention. Finally, Respondent has given no evidence that her intention is to provide this service on any basis other than for commercial gain.

The majority of the Panel also finds that, in addition to the foregoing specific criteria and for the foregoing reasons, Respondent’s conduct also amounts to bad faith registration and use within the generally understood meaning of that expression. Respondent has taken Complainant’s distinctive trademark which certainly has a significant reputation in the area in which the Complainant operates, has passively held it in the disputed domain name for an extended period of time and proposes to use it for news purposes which is already an activity of the Complainant.

Complainant has thus made out the third of the three elements that it must establish and is entitled to the relief it seeks.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <margaritavillenews.com> domain name be TRANSFERRED from Respondent to Complainant.

__________________________________________________________________

Dissenting opinion of Panelist Limbury

I respectfully disagree with the majority as to the outcome of this case.

Respondent has declared under penalty of perjury that she had the famous Margaritaville song in mind when she registered the domain name in 2009 but that she was unaware of Complainant or its trademarks. Complainant has not shown that its mark was then well-known and I accept Respondent’s declaration as truthful. Accordingly, I would find that the domain name was not registered in bad faith and for that reason the Complaint should fail. Respondent’s failure to use the domain name for 13 years cannot turn good faith use into bad.

Further, as stated in the WIPO Jurisprudential Overview 3.0, section 3.3:

3.3. Can the “passive holding” or non-use of a domain name support a finding of bad faith?

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

This Panelist considers that Complainant has not established that its mark is sufficiently distinctive, as in the leading case on passive use, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>, such that it is implausible that the disputed domain name may be put to any good faith use, such as a news site to cover the fun and adventure of South West Florida.

The Honorable Neil Anthony Brown KC, (Chair),

Dawn Osborne

Alan L. Limbury

Panelists

Dated: October 10, 2022