DECISION

Offshore Sailing School Ltd. v. Henry Ventures

Claim Number: FA0105000097147

PARTIES

Complainant is Offshore Sailing School, Ltd., Fort Myers, FL, USA (“Complainant”) represented by Michael A. Painter, of Isaacman, Kaufman & Painter.  Respondent is Henry Ventures, Tampa, FL, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <offshoresailing.com> registered with Network Solutions, Inc.

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.

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 3, 2001; the Forum received a hard copy of the Complaint on May 4, 2001.

On May 7, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <offshoresailing.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 May 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 7, 2001 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 postmaster@offshoresailing.com 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 June 13, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. In December 1964, Complainant adopted and com­menced use of the service mark OFFSHORE SAILING SCHOOL in interstate commerce for the purpose of conducting classes and furnishing classroom and on-water instruction in sailing.

2. In April 1978, Complainant adopted and com­menced use of the service mark OFFSHORE SAILING CLUB in interstate commerce for sailing club services, namely, organizing sailing activities and providing club members access to sailboats.

3. The domain name registered by the Respondent is confusingly similar to the Complainant's registered service marks and is used for an Internet site which links the user to "Advanced Sailing Home Page" which provides only an e-mail address identified as "info@advancedsailing.com."

4. Because of Respondent's registration of the disputed domain name, Complainant has been precluded from using the domain name which is most closely related to its registered service mark and has been forced to use <offshore-sailing.com> as the domain name for its Internet site.

5. Because the domain name registered by Respondent is confusingly similar to Complainant's registered service marks and is purportedly used for services which are the same as or are legally related to Complainant's services, consumers are being mistakenly led to believe that Respondent's Internet site is presented, sponsored or endorsed by Complainant.

6. Respondent has no rights or legitimate interest in the disputed domain name on the following grounds:

a. Respondent adopted and registered the domain name which is the subject of this Complaint long subse­quent to Complainant's adoption of the OFFSHORE marks of Complainant; and

b. Respondent adopted and registered the domain name with the sole intent for commercial gain by misleadingly diverting consumers by leading them to believe use of the domain name is by Complainant or is sponsored or endorsed by Complainant; and

c. Through Respondent's unfair and mislead­ing use of the domain name, Respondent's continued use is causing damage to Complainant's trademark and service mark over which Complainant has no control, and

d. Complainant has directed correspondence to Respondent at the address maintained in the files of Network Solution, Inc. demanding a transfer of the disputed domain name to Complainant.  Although Complainant's written notice to Respondent was delivered, Respondent has failed or otherwise refused to respond.

7. Respondent has used and registered the <offshoresailing.com> domain name in bad faith through its intentional attempt to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's trademark and service mark as to the source, sponsorship, affili­ation or endorsement of Respondent's web site.

B. Respondent

Respondent failed to submit a Response to this matter.

FINDINGS

1. Complainant owns two service marks registered in the USPTO incorporating the phrase OFFSHORE SAILING.

a. Service Mark Registration No. 2,100,474 dated September 23, 1997 for the mark OFFSHORE SAILING SCHOOL for conducting classes and furnishing classroom and on-water instruction in sailing; and

b. Service Mark Registration No. 2,181,602 dated August 11, 1998 for the mark OFFSHORE SAILING CLUB for sailing club services, namely, organizing sailing activities and providing club members access to sailboats.

2. Respondent registered the disputed domain name on November 21, 1997.

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.”

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.

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;

(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

The domain name consists solely of the words OFFSHORE and SAILING.  Complainant relies on two service mark registrations to show that it has rights in the term OFFSHORE SAILING, but Complainant’s marks incorporate the terms SCHOOL and CLUB.  However, since Respondent failed to submit a Response, this Panel takes the Complainant’s allegations as true and finds that Respondent’s domain name is confusingly similar to Complainant’s marks.  See WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Hollywood Casino Corp. v. Advanced Media Group, FA 96704 (Nat. Arb. Forum Apr. 13, 2001) (finding that without a Response the Panel is permitted to take as true Complainant’s allegations that the domain names <goldenhollywood.com>, <goldenhollywood.net>, <golden-hollywood.com>, and <hollywoodtelegraph.com> are confusingly similar to Complainant’s HOLLYWOOD CASINO mark).

            Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <offshoresailing.com> domain name.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).  Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response.  See 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”).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <offshoresailing.com> domain name, pursuant to the Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by mark).  There is also no evidence that Respondent is using the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

Furthermore, Respondent’s use of the disputed domain name is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) where the Respondent trades off the fame of Complainant’s marks to lure Internet users to his website for commercial gain.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <offshoresailing.com> domain name and that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration and use of the disputed domain name to lure Internet users to the <offshoresailing.com> website for commercial gain by creating a likelihood of confusion with the Complainant’s marks is evidence of bad faith under Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s goodwill and attract Internet users to the Respondent’s website); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the website without permission from Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

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

Honorable Ralph Yachnin (Ret), Panelist

Dated: June 18, 2001

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