DECISION

Georgia Boot LLC v. Modern Limited - Cayman Web Development

Claim Number:  FA0303000149173

PARTIES

Complainant is Georgia Boot LLC, Franklin, TN, USA (“Complainant”) represented by Christopher A. Sloan, of Boult Cummings Conners & Berry PLC. Respondent is Modern Limited - Cayman Web Development, George Town, Grand Kayman, KAYMAN ISLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <georgiaboots.com>, registered with Tucows, 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. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 11, 2003; the Forum received a hard copy of the Complaint on March 13, 2003.

On March 18, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <georgiaboots.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 March 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 7, 2003 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@georgiaboots.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 April 17. 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 makes the following assertions:

1. Respondent’s <georgiaboots.com> domain name is confusingly similar to Complainant’s GEORGIA BOOT mark.

2. Respondent does not have any rights or legitimate interests in the <georgiaboots.com> domain name.

3. Respondent registered and used the <georgiaboots.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Georgia Boot LLC, is the holder of U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,333,323 for GEORGIA BOOT, which denotes “Shoes, Boots, Sandals and Footwear.” Complainant’s mark was registered on the USPTO’s Principal Register on April 30, 1985, and the registration indicates first use of the mark in commerce occurred in 1968.

Respondent, Modern Limited – Cayman Web Development, registered the <georgiaboots.com> domain name on October 4, 2001. Complainant’s investigation of Respondent’s use of the subject domain name indicates that Respondent’s only apparent use is in the form of a heading placed on a basic portal website. Respondent’s portal website contains numerous hyperlinks to other unrelated websites. Complainant’s investigation of Respondent reveals that Respondent has registered over 2,200 domain names and is in the business of acquiring and selling domain name registrations. Many of the domain names registered to Respondent are identical or confusingly similar to valuable, registered and famous trademarks (e.g., <toshibalaptop.com>, <yamahadirtbike.com>, <yamahadirtbikes.com>, <nelson-mandela.com> and <theweatherchannel.com>).

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 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 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 rights in the GEORGIA BOOT mark by registering the mark with the USPTO, and by continuous use of the mark in commerce since 1968. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <georgiaboots.com> domain name is confusingly similar to Complainant’s GEORGIA BOOT mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the letter “s,” thereby displaying the plural version of Complainant’s mark. Internet users are likely to confuse the plural variation of a singular term in a domain name; therefore, Respondent’s domain name is rendered confusingly similar to Complainant’s mark. See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

Additionally, because spaces are impermissible in domain names and top-level domains, such as “.com,” are required, their presence or absence is inconsequential when conducting an analysis under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

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

Rights or Legitimate Interests

Respondent did not submit a Response in this proceeding. Therefore, Complainant’s assertions, and the inferences drawn from those assertions, are unrefuted. Respondent’s failure to contest Complainant’s prima facie case permits the Panel to accept all reasonable inferences made in the Complaint as true, unless clearly contradicted by the evidence. Further, Respondent has failed to produce any set of circumstances that would support a finding of rights in the <georgiaboots.com> domain name. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts).

Complainant’s submission indicates that Respondent’s domain name resolves to a “basic portal website,” that makes no reference to the <georgiaboots.com> domain name except as an introductory heading. Although Respondent has held the domain name registration since October 2001, it has failed to enunciate a legitimate purpose for the domain name, or develop a website that suggests rights in the domain name. Respondent’s website, which is blank but for hyperlinks to other websites, is not sufficient to establish rights or legitimate interests for purposes of ¶ 4(a)(ii) of the Policy. Further, even if Respondent’s activities were seen as significant enough to constitute “use” of the domain name, diverting Internet users to a website by the unauthorized use of Complainant’s mark is not a legitimate use. See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

No evidence before the Panel indicates that Respondent is commonly known by the “georgiaboots” second-level domain, or the domain name itself. Uncontested circumstances suggest that Respondent opportunistically registered the subject domain name because of its value to Complainant and its recognition among the consuming public. Respondent’s corporate identity is reflected in the WHOIS records as Modern Limited – Cayman Web Development. Therefore, Respondent fails to establish rights in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Based on Complainant’s research, the validity of which is uncontested, Respondent has registered over 2,200 domain names and is in the business of acquiring and selling domain name registrations. As stated, many of Respondent’s domain names appear to be identical or confusingly similar to valuable, registered and famous trademarks, examples of which are provided in the Findings. Respondent has failed to advance any conceivable reason for registering so many well-known trademarks and personal names as domain names. Therefore, the Panel is permitted to accept Complainant’s contentions as true, namely, that Respondent hopes to profit from the resale of its infringing domain name registrations to the owners of the trademarks. Thus, Respondent’s registration and use of the <georgiaboots.com> domain name, with the intent to profit from the goodwill attributable to Complainant’s registered mark, constitutes bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also  Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); 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”).

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

DECISION

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

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

James A. Crary, Panelist

Dated:  April 21, 2003

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