DECISION

 

Host Camelback I LLC v. Gavin Barnett / Click Wise Design

Claim Number: FA2501002134665

PARTIES

Complainant is Host Camelback I LLC ("Complainant"), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Gavin Barnett / Click Wise Design ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mowryandcotton.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 10, 2025; Forum received payment on January 10, 2025.

 

On January 13, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <mowryandcotton.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 January 14, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 3, 2025 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@mowryandcotton.com. Also on January 14, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 4, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response or any other submittals from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant holds trademarks, including the MOWRY & COTTON mark, for and licenses them to its parent company, Host Hotels & Resorts, Inc. ("Host"), which uses the MOWRY & COTTON mark to identify a restaurant at its Phoenician Resort in Scottsdale, Arizona.  It has rights in the MOWRY & COTTON mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO). It previously owned the domain name and used it to promote the Mowry & Cotton Restaurant at the Phoenician but inadvertently allowed it to lapse in May 2024 and Respondent acquired it shortly after that. The domain name is identical or confusingly similar to the MOWRY & COTTON mark as it fully incorporates the mark, merely substituting the word "and" for the ampersand and adding a generic top level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized or licensed it to use the MOWRY & COTTON mark, Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it to pass off as and compete with Complainant and phish for private information from consumers, and it has not been commonly known by the domain name. 

 

Respondent registered and uses the domain name in bad faith. It attempts to attract for commercial gain Internet users to its website by creating confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, it is passing off as and competing with Complainant and disrupting Complainant's business, it is using the domain name to phish for private information from consumers, and it registered the domain name with actual knowledge of Complainant's rights in its mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case."). The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panelist accepts that consensus on this and other issues addressed later in this Decision. 

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The MOWRY & COTTON mark was registered to Complainant with the USPTO (Reg. No. 5,444,301) on April 10, 2018 (TSDR printout submitted as Complaint Exhibit 7). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). 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.").

 

Respondent's domain name is identical or confusingly similar to the MOWRY & COTTON mark. It fully incorporates the mark, merely substituting the word "and" for the ampersand, omitting spaces and adding the ".com" gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them."), Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (finding respondent's domain name identical to complainant's RUSSEL & BROMLEY mark, because "[t]he ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word 'and' (in the domain name)").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the MOWRY & COTTON mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)                      the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) Complainant has not authorized or licensed it to use the MOWRY & COTTON mark, (ii) Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it to pass off as and compete with Complainant and phish for private information from consumers, and (iii) it has not been commonly known by the domain name.  These allegations are addressed as follows:

 

Complainant alleges it has not licensed or authorized Respondent to use its mark. Complainant has specific competence to make this allegation and it is not disputed. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (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 Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

Complaint Exhibit 8 contains screenshots of the website resolving from the domain name. This website does not duplicate or mimic the pages on the Phoenician Resort's website at <thephoencian.com> which promote the Mowry & Cotton Restaurant (screenshots submitted as Complaint Exhibit 3) but it advertises an upscale restaurant named Mowry & Cotton and the general appearance and feel is similar to Complainant's website. The website prominently displays the MOWRY & COTTON mark, features photos of menu entrees, and plainly represents itself as the website of Host's Mowry & Cotton Restaurant in Scottsdale, Arizona. There is nothing on Respondent's site to inform the visitor that the site is not associated with Complainant. Respondent's website unquestionably passes off as that of Complainant. Passing off as a complainant and advertising the same or similar products or services offered by a complainant does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."), Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).").

 

Complainant argues that by soliciting users' email addresses for a newsletter subscription and inviting users to make reservations at the Mowry & Cotton Restaurant by sending an email to reservations@mowryandcotton.com, Respondent engages in phishing, which is a fraudulent attempt to obtain sensitive information such as username, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication.  Email addresses would not normally qualify as the sensitive type of information associated with phishing. None of the pages on Respondent's website solicits banking or credit card information such as account number, passcode, expiration date or security code, nor is there any other evidence of active solicitation of sensitive, private information on Respondent's website. Phishing is not proven.

 

The WHOIS information provided to Forum by the registrar lists the named Respondents as the registrants of the domain name. Neither of these names bears any resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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 Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii).

 

On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which 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 of service on the respondent 's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, Respondent is using the domain name to pass off as Complainant. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Complainant alleges that Respondent is using the confusingly similar domain name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his web site, as described in Policy ¶ 4(b)(iv). The evidence does not disclose whether Respondent is actually operating a competing restaurant under the Mowry & Cotton brand. Respondent's website describes the restaurant as being in the City of Scottsdale, which is where Host's Mowry & Cotton Restaurant is located. It seems unlikely that Respondent would attempt to operate a bricks-and-mortar restaurant under the same name as Complainant in the same, relatively small city, and there is nothing on Respondent's website to suggest that it is operating a carry-out restaurant. The evidence raises question about how Respondent might use the website for mischief but it does not offer any clue as to how Respondent is actually monetizing the domain name with this website. Without commercial gain, it cannot be said that Respondent's conduct fits within the circumstances described in Policy ¶ 4(b)(iv).  That allegation is not proven.

 

Complainant alleges that Respondent's conduct falls within the circumstances described in Policy ¶ 4(b)(iii). Policy ¶ 4(b)(iii) reads as follows:  "you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor" (emphasis supplied). As discussed above, there is no evidence that Respondent is actually operating a restaurant. If this is the case, it is doubtful that Respondent could be characterized as competing with Complainant. The concept of "competition" in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who "acts in opposition to the complainant."  Mission KwaSizabantu v. Benjamin Rost, Case No. D2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would "render so many parties 'competitors' as to dilute the Policy's bad faith requirement beyond recognition."

 

Additionally, there is another aspect of the concept of competition to be considered. In order for a respondent's conduct to fall within Policy ¶ 4(b)(iii), the competition must exist before the domain name is registered. Otherwise, the respondent's conduct would not fall within the language of ¶ 4(b)(iii), paraphrased as "you registered the domain name primarily to disrupt the business of a competitor."  The competition must exist before the registration.

 

In this case, according to the undisputed allegations in the Complaint and the archive.org screenshots submitted as Complaint Exhibit 5, Complainant owned the domain name until May 2024, when its registration inadvertently lapsed. GoDaddy then took ownership of the domain name and listed it for sale on its Afternic platform (WHOIS printout showing Afternic as the registrant as of June 20, 2024). Respondent acquired the domain name on or about June 27, 2024 (WHOIS printout submitted as Complaint Exhibit 1). Even if Respondent were now competing with Complainant, there is no evidence that it was doing so under the Mowry & Cotton brand prior to its acquisition of the domain name. Any actual competition between them would have arisen only after Respondent acquired and began using it. Even then, there is no evidence that disrupting the Complainant's business was Respondent's primary purpose in registering the domain name. Respondent's conduct does not fall within the circumstances stated in Policy ¶ 4(b)(iii).

 

That said, using a confusingly similar domain name to attract Internet traffic to a website which passes off as and disrupts the business of a complainant is still bad faith. As discussed above, the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith. Falsely causing site visitors to believe that they had reservations to Complainant's restaurant when they did not would have a serious disruptive effect upon Complainant's business and is sufficient evidence of bad faith to meet the requirements of Policy ¶ 4(a)(iii). Respondent knew or should have known the disruptive impact this conduct would have upon Complainant's business. Respondent intentionally went forward with its plans in spite of that, and this demonstrates bad faith independently of Policy ¶ 4(b)(iii). Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico, FA1911001873163 (Forum January 3, 2020).

 

Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it acquired the domain name. Complainant began using its MOWRY & COTTON mark at least as early as the December 2016 application date shown on the TSDR printout included in Complaint Exhibit 7. Further, the MOWRY & COTTON mark is a unique, coined term that has no meaning other than its association with Host's restaurant at the Phoenician Resort in Scottsdale, Arizona. More importantly, Respondent had to have had actual knowledge of Complainant in order to pass off as Complainant. There is no question that Respondent knew of Complainant and its mark when it registered the domain name. Given the non-exclusive nature of Policy ¶ 4(b), acquiring a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons above set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

 

Charles A. Kuechenmeister, Panelist

February 5, 2025