DECISION

Serra Canyon Co. Ltd. v. Alan Davison

Claim Number:  FA0406000287170

PARTIES

Complainant is Serra Canyon Co. Ltd. (“Complainant”), represented by Daniel M. Cislo, of Cislo & Thomas LLP, 233 Wilshire Boulevard, Suite 900, Santa Monica, CA 90401.  Respondent is Alan Davison (“Respondent”), Post Office Box 1427, St. Johns, Antigua 344.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <malibubeachrv.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.

PANEL

The undersigned certifies that he 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 16, 2004; the Forum received a hard copy of the Complaint on June 18, 2004.

On June 17, 2004, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the Forum that the domain name <malibubeachrv.com> is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com 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 June 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 2004 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@malibubeachrv.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 July 15, 2004, 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <malibubeachrv.com> domain name is confusingly similar to Complainant’s MALIBU BEACH R.V. PARK mark.

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

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

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

FINDINGS

Complainant, Serra Canyon Co. Ltd., provides facilities and services for a family-oriented recreational vehicle and camping park located in Malibu, California.

Complainant, or its predecessor, has since as early as 1976, continuously used the MAILBU BEACH R.V. PARK mark in commerce.  Complainant’s park typically receives, on the average, 8,000 reservations per year and due to its popularity, accommodates, on the average, 70,000 customer nights per year for its 192 park spaces.  For the last four years, an average of 50% of Complainant’s reservations have been for repeat customers.

As part of providing products and services to consumers, Complainant supplied information to the public via the <malibubeachrv.com> domain name from June 1998 through March 2003.  Complainant inadvertently did not renew the registration and was forced to send its customers to <maliburv.com>.

Respondent registered the domain name on March 25, 2003.  Respondent established the website which diverts Internet users to an adult-oriented pornographic website and mousetraps users into an almost interminable succession of other connected pornographic websites. 

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

Under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to establish rights in a mark.  Common law rights are sufficient when a complainant demonstrates secondary meaning associated with a mark.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Complainant established with extrinsic proof in this proceeding that it has common law rights in the MALIBU BEACH R.V. PARK mark as evidenced by Complainant’s long, successful business and repeat customers.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy.).

The domain name registered by Respondent, <malibubeachrv.com>, is confusingly similar to Complainant’s MALIBU BEACH R.V. PARK mark because the only differences are the omission of the periods and the word, “park.”  These slight changes do not significantly distinguish the domain name from the mark.  See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); 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

Complainant has alleged that Respondent has no rights or legitimate interests in the domain name that incorporates Complainant’s mark.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with Respondent to demonstrate that it has rights or legitimate interests).

Moreover, where Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  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 Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is using the disputed domain name to redirect Internet users to a pornographic website that mousetraps users into an almost interminable succession of other connected pornographic websites.  Respondent’s use of a domain name that is confusingly similar to Complainant’s MALIBU BEACH R.V. PARK mark to redirect users interested in Complainant to a pornographic website that mousetraps users to a succession of other connected pornographic websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”).

Respondent has offered no evidence and no proof in the record suggests that Respondent is commonly known by the <malibubeachrv.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Complainant has stated that the disputed domain name was utilized by Complainant for approximately the last five years.  Complainant then inadvertently did not renew the registration and was forced to send its customers to <maliburv.com>.  Thus, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) because Respondent was aware of the Complainant’s well-known business and its mark and deliberately registered the domain name.  See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name); see also Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that Respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by Complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark.”).

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

Registration and Use in Bad Faith

The Panel infers that Respondent intentionally registered a domain name that incorporates Complainant’s mark and did so for Respondent’s commercial gain.  Respondent’s domain name, <malibubeachrv.com>, diverts Internet users who seek Complainant’s MALIBU BEACH R.V. PARK mark to Respondent’s pornographic website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill and reputation associated with Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“Since the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Kmart v. Khan, 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)).

Respondent’s registration and use of a domain name confusingly similar to Complainant’s mark to associate Complainant’s mark with unrelated, pornographic content demonstrates bad faith registration and use under Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also 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).

Complainant utilized the disputed domain name for approximately the last five years and inadvertently did not renew the registration.  Within a short period, Respondent registered the domain name.  The Panel finds that since Respondent did not offer any evidence to the contrary, Respondent’s registration due to Complainant’s oversight is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name); see also R-H-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that Respondent’s registration and use of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).

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 relief shall be GRANTED.

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

James A. Carmody, Esq., Panelist

Dated:  July 29, 2004

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