Isleworth Land Company v. Lost In Space, SA
Claim Number: FA0208000117330
Complainant is Isleworth Land Company, Windermere, FL, USA (“Complainant”) represented by David J. Stewart, of Alston & Bird, LLP. Respondent is Lost in Space, SA, Majorca, SOUTH AFRICA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isleworthcountryclub.com>, registered with Intercosmos Media Group.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 31, 2002; the Forum received a hard copy of the Complaint on August 5, 2002.
On August 1, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <isleworthcountryclub.com> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 26, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.” 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 name be transferred from Respondent to Complainant.
The <isleworthcountryclub.com> domain name is confusingly similar to Complainant’s ISLEWORTH mark.
Respondent has no rights or legitimate interests in the <isleworthcountryclub.com> domain name.
Respondent registered and used the <isleworthcountryclub.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant holds registration rights in the ISLEWORTH mark with the United States Patent and Trademark Office (“USPTO”), specifically Reg. Nos. 1,558,016 and 2,004,329. Complainant began using the ISLEWORTH mark at least as early as 1985. Complainant adopted the ISLEWORTH mark for use in connection with real estate brokerage services, golf and tennis country club and entertainment services.
In addition, Complainant has continually used the ISLEWORTH mark to identify its residential country club services. The country club, denoted Isleworth Country Club, is a world class luxury residential golf and country club community located in Windermere, Florida that lays claim to an 18 hole golf course designed by Arnold Palmer. Complainant’s ISLEWORTH community and golf course has gained notoriety from the renowned sports celebrities who have lived or are living in the community, including Shaquille O’Neil, Tiger Woods, Ken Griffey, Jr. and Arnold Palmer.
Respondent registered the <isleworthcountryclub.com> domain name on January 17, 2002. Respondent uses the domain name to divert Internet traffic to a website, <temptationsatwork.com>, which contains photographs of semi-nude women in various poses. Complainant has discovered that Respondent has had prior UDRP actions brought against it for the infringing registration of the <cspantv.com> and <riohotellasvegas.com> domain names. Respondent used the prior infringing domain names for the same or substantially similar use as the <isleworthcountryclub.com> domain name.
Complainant sent a cease a desist order to Respondent and a representative for Respondent replied stating that the domain name was registered for the owner of the Isleworth Country Club in Isleworth, Middlesex, England. Complainant’s subsequent investigation, however, uncovered no evidence of such a country club in England. Complainant sent a correspondence to Respondent’s representative that reported Complainant’s findings. Respondent’s representative never responded and Complainant initiated this present action.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 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.
Identical and/or Confusingly Similar
Complainant has established its rights in the ISLEWORTH mark through proof of registration with the USPTO and continuous use in connection with its country club and surrounding community.
Respondent’s <isleworthcountryclub.com> domain name contains Complainant’s entire ISLEWORTH mark with the addition of the phrase “countryclub” and the generic top-level domain “.com.” The phrase “countryclub” holds a direct relationship with the services offered under the ISLEWORTH mark. Previous Panels have consistently held that a domain name containing Complainant’s mark and a phrase that refers to Complainant’s business operations renders the domain name confusingly similar to the mark in question. Furthermore, it is an well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis. Therefore, Respondent’s <isleworthcountryclub.com> domain name is confusingly similar to Complainant’s ISLEWORTH mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has established a prima facie case and Respondent has not come forward in response to Complainant’s claims. Since Complainant asserts that Respondent has no rights or legitimate interests in the <isleworthcountryclub.com> domain name, the burden shifts to Respondent to demonstrate such rights. Respondent failed to satisfy its burden, therefore, it may be presumed that Respondent has no rights or legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, due to Respondent’s lack of contest, all reasonable inferences may be drawn in favor of Complainant. See 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent uses the <isleworthcountryclub.com> domain name to link unsuspecting Internet traffic to an adult orientated website, <temptationsatwork.com>. The website contains images of scantily clad women in provocative poses. Respondent’s allegation that it registered the domain name to be used for its country club in England is contradicted by the actual use of the domain name. Respondent’s diversionary use of the domain name does not constitute a connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a fair use pursuant to Policy ¶ 4(c)(iii). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).
Respondent never received permission from Complainant to use the ISLEWORTH mark in connection with any purpose. Furthermore, contrary to Respondent’s representative’s statement that the <isleworthcountryclub.com> domain name was registered for use in connection with an Isleworth Country Club in England, Complainant’s investigation uncovered no evidence of the alleged country club. Hence, there is no evidence that Respondent is commonly known by the domain name. Thus, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <isleworthcountryclub.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant provides evidence that Respondent has been a party in at least two other domain name Complaints. Most specifically, Respondent lost its registration rights in the <cspantv.com> and <riohotellasvegas.com> domain names in prior decisions. These cases, along with the present matter, evidence a pattern of registering domain names for the purpose of trading off of established marks, which in turn prevents the rightful owner of the mark from of reflecting its mark in a corresponding domain name. In the present case, Respondent effectively uses Complainant’s ISLEWORTH mark to prevent Complainant from logically using the mark in a corresponding domain name. Due to Complainant’s use of the ISLEWORTH mark to denote its Isleworth Country Club, Respondent’s <isleworthcountryclub.com> domain name is a logical fit for Complainant. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Respondent’s use of the domain name to divert Internet users to a website containing adult content has a likelihood of creating confusion as to Complainant’s affiliation. Presumably, Respondent commercially benefits from the diversionary use of the domain name. The use of an infringing domain name to link to adult orientated material on the Internet is not a good faith use. Therefore, Respondent uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <isleworthcountryclub.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: September 27, 2002
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