DECISION

Bluegreen Corporation v. John Caraher

Claim Number: FA0212000135614

PARTIES

Complainant is Bluegreen Corporation, Boca Raton, FL (“Complainant”) represented by Helen Hill Minsker, of Banner & Witcoff, Ltd.  Respondent is John Caraher, Coral Springs, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bluegreenrental.com>, <bluegreenvacation.com>, <bluegreenvacationers.com>, <bluegreentraveler.com>, <bluegreentravelers.com>, <bluegreentravelplus.com> and <bluegreentravelersplus.com>, registered with Go Daddy Software, 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 4, 2002; the Forum received a hard copy of the Complaint on December 5, 2002.

On December 5, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <bluegreenrental.com>, <bluegreenvacation.com>, <bluegreenvacationers.com>, <bluegreentraveler.com>, <bluegreentravelers.com>, <bluegreentravelplus.com> and <bluegreentravelersplus.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 December 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 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 postmaster@bluegreenrental.com, postmaster@bluegreenvacation.com,  postmaster@bluegreenvacationers.com, postmater@bluegreentraveler.com,  postmaster@bluegreentravelers.com, postmaster@bluegreentravelplus.com and postmaster@bluegreentravelersplus.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 January 6, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <bluegreenrental.com>, <bluegreenvacation.com>, <bluegreenvacationers.com>, <bluegreentraveler.com>, <bluegreentravelers.com>, <bluegreentravelplus.com> and <bluegreentravelersplus.com> domain names are confusingly similar to Complainant’s BLUEGREEN and BLUEGREEN VACATION CLUB marks. 

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith. 

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Bluegreen Corporation, operates in the resort and timeshare industry.  Complainant is rapidly expanding its vacation management business through its involvement in the acquisition, development, marketing, and sale of timeshare resorts, golf communities, and residential land.  With over 40 resorts and 2,000 employees nationwide, Complainant has been referred to by Fortune magazine as one of the nation’s 100 Fastest Growing Companies.  Complainant promotes its vacation services at its <bluegreenonline.com> website. 

In an effort to protect its interests in its business name, Complainant has registered multiple versions of the BLUEGREEN mark with the United States Patent and Trademark Office, including BLUEGREEN alone, BLUEGREEN VACATION CLUB and BLUEGREEN AIR.  Complainant uses these marks in association with vacation ownership services.  The BLUEGREEN mark was first used in commerce in 1996.

Respondent registered the disputed domain names in 2002.  Specifically, Respondent registered the <bluegreentraveler.com>, <bluegreentravelplus.com> and <bluegreentravelersplus.com> domain names in late July 2002, and subsequently registered the <bluegreenrental.com>, <bluegreenvacation.com>, <bluegreenvacationers.com> and <bluegreentravelers.com> domain names on September 1, 2002. 

Respondent is Complainant’s former employee and worked in Complainant’s IT Department.  Respondent’s employment was terminated on March 29, 2002 prior to registration of the disputed domain names. 

On April 24, 2002, Complainant initiated its plan to develop its new online travel/cruise service under the domain name <bluetravelerplus.com>.  Complainant’s IT Department applied for the domain name registration with Register.com, which was not properly effectuated due to an error by Register.com.  Subsequently, Respondent registered the <bluetravelerplus.com> domain name in July 2002 and Complainant discovered this in late August 2002.  Complainant immediatedly sent an email to Respondent requesting a transfer of the domain name.  Respondent refused to transfer the domain name to Complainant suggesting that it would be willing to sell or lease the domain name registration.  Thereafter, Complainant initiated an investigation into Respondent’s actions and through a private investigator Complainant negotiated a transfer of the <bluetravelerplus.com> domain name. 

However, at this time Complainant discovered that Respondent had registered six other domain names reflecting Complainant’s BLUEGREEN mark and/or BLUEGREEN VACATION CLUB mark.  Complainant then found that the disputed domain names were being used to link Internet traffic to Respondent’s website located at <abacogifts.com>.  Complainant’s private investigator attempted to initiate a transfer of the remaining domain name registrations, and Complainant sent a letter to Respondent demanding the additional domain name registrations be transferred.  Respondent failed to respond to Complainant and Complaniant initiated this dispute.

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 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 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.

Identical and/or Confusingly Similar

Complainant has established its right in the BLUEGREEN mark and BLUEGREEN VACATION CLUB mark through proof of registration with the United States Patent and Trademark Office.

Respondent’s disputed domain names all contain Complainant’s BLUEGREEN mark with an industry specific generic term, such as “rental,” “vacation(s),” “traveler(s),” “travelplus” and “travelersplus.”  Complainant’s BLUEGREEN mark is used to denote its resort and timeshare business services.  Hence, the terms added to the BLUEGREEN mark in Respondent’s domain names all relate to Complainant’s services offered under the mark.  Consistent precedent holds that generic words added to an entity’s trademark that relate to that entity’s business operations do not create a domain name capable of overcoming a confusing similarity claim.  Therefore, Respondent’s domain names are confusingly similar to Complainant’s BLUEGREEN mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also 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 Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Furthermore, Respondent’s <bluegreenvacation.com> and <bluegreenvacationers.com> domain names are closely related to Complainant’s BLUEGREEN VACATION CLUB mark.  The <bluegreenvacation.com> domain name merely omits the CLUB portion of Complainant’s mark.  The <bluegreenvacationers.com> domain name also omits the CLUB portion of Complainant’s mark and substitutes a variation of VACATION, namely, “vacationers.”  Respondent’s minor changes are not enough to distinguish the domain names from the BLUEGREEN VACATION CLUB mark as they primarly contain the distinctive portion of the mark.  Therefore, Respondent’s <bluegreenvacation.com> and <bluegreenvacationers.com> domain names are confusingly similar to Complainant’s BLUEGREEN VACATION CLUB mark.  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 Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response and has ceased communications with Complainant regarding the transfer of the disputed domain name registrations.  Complainant has filed a prima facie Complaint effectively shifting the burden to Respondent to come forward and articulate its rights and legitimate interests in the disputed domain names.  Respondent’s failure to challenge the Complaint allows the Panel to presume that Respondent has no rights or legitimate interests in the disputed domain names.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

In addition, the uncontested allegations will be accepted as true and the Panel will draw all reasonable inferences 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 disputed domain names to link to its <abacogifts.com> website, where Respondent sells assorted gifts.  Respondent is presumably monetarily benefiting from Internet traffic searching for Complainant using the BLUEGREEN mark or BLUEGREEN VACATION CLUB mark.  The disputed domain names are wholly unrelated to Respondent’s gift sales business and Respondent, as a former employee of Complainant, was aware of the potential benefit that could be derived from the disputed domain names.  Therefore, Respondent’s actions do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).

Respondent is identified as John Caraher and was formerly employed in Complainant’s IT Department.  Respondent never had a proprietary interest in the BLUEGREEN or BLUEGREEN VACATION CLUB marks and received no authorization for use of said marks following termination on March 29, 2002.  Therefore, Respondent is not commonly known by the disputed domain names and Policy ¶ 4(c)(ii) does not serve to help Respondent.  See 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); see also 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).

As Complainant’s former employee, Respondent was clearly aware of the value the disputed domain names had in connection with Complainant’s resort and timeshare business operations.  In fact, Respondent initially responded to Complainant’s transfer request with an email suggesting that Respondent would only sell or lease the disputed domain name registrations.  The totality of circumstances indicates that Respondent registered the disputed domain names to unfairly profit off of Complainant’s interests in them.  Therefore, Respondent’s actions do not represent rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000)   (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark…Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right…this is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; thus, Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

First, because Respondent once worked for Complainant’s IT Department, Respondent had intimate knowledge of Complainant’s interest in Internet operations and what trademarks were most valuable to Complainant.  Therefore, Respondent’s registration of the disputed domain names, substantially containing Complainant’s trademarks, in the six months following termination is evidence of bad faith registration under the nonrestrictive Policy ¶ 4(a)(iii).  See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding "Respondent's registration of the company name of his former employer as a domain name is an act of bad faith"); see also William Hill Org. Ltd. v. Fulfillment Mgmt. Serv.. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration and use where “Respondent’s employee must have had the Complainant’s trademarks in mind when choosing the disputed domain name and that the Respondent‘s interest was to deprive the Complainant of the opportunity to reflect its mark in that name until the registration expired”).

In addition, because Respondent was employed by Complainant prior to registering the disputed domain names and Respondent’s letter indicated a willingness to sell or lease registration rights, it may be inferred that Respondent registered the domain names with the primary intent to sell registration rights to Complainant.  Therefore, the Panel finds that the circumstances clearly intimate that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Finally, Respondent not only offered to sell or lease the domain name registrations but Respondent linked the disputed domain names to its <abacogifts.com> website.  This website and gift sales business has no connection with Complainant.  The traffic that is being diverted to the website is most likely searching for Complainant because the diversionary domain names predominately reflect Complainant’s trademarks.  In addition, it is reasonable to infer that Respondent profits from the increased traffic that is diverted to its <abacogifts.com> website.  Respondent’s actions can only result in confusing those searching the Internet for Complainant as to Complainant’s affiliation with Respondent’s infringing website.  Therefore, Respondent’s conduct is indicative of bad faith use under Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

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

DECISION

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 names <bluegreenrental.com>, <bluegreenvacation.com>, <bluegreenvacationers.com>, <bluegreentraveler.com>, <bluegreentravelers.com>, <bluegreentravelplus.com> and <bluegreentravelersplus.com> be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: January 13, 2003

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