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Panthers BRHC L.L.C. v. Gregg Ostrick/GNO, Inc. [2005] GENDND 1660 (1 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Panthers BRHC L.L.C. v. Gregg Ostrick/GNO, Inc.

Case No. D2005-0681

1. The Parties

The Complainant is Panthers BRHC L.L.C., c/o Boca Raton Resort & Club, Boca Raton, Florida, United States of America, represented by Lydecker & Wadsworth L.L.C., United States of America.

The Respondent is Gregg Ostrick/GNO, Inc., New Orleans, Louisiana United States of America, represented by John Berryhill, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bocaresorts.com> is registered with Moniker Online Services L.L.C.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2005. On June 28, 2005, the Center transmitted by email to Moniker Online Services L.L.C. a request for registrar verification in connection with the domain name at issue. On June 28, 2005, Moniker Online Services L.L.C. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 26, 2005. The Response was filed with the Center on July 27, 2005.

On August 2, 2005, Complainant filed a Motion to Strike Respondent’s Response for Failure to Comply with the Rules and the Policy. On August 10, 2005, Respondent filed a Response to Complainant’s Motion to Strike.

The Center appointed Dennis A. Foster, Frank L. Politano and Nelson A. Diaz as panelists in this matter on August 18, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel has considered Respondent’s objection that Complainant’s Complaint has violated the Supplemental Rules, paragraph 10, by exceeding 5,000 words and rules that Complainant’s pleading shall be admitted into the record in its entirety. The panel has considered Complainant’s Motion to Strike and Respondent’s Response, admits them into the record and denies Complainant’s Motion to Strike.

4. Factual Background

Since 1988, Complainant has used the service mark “Boca Raton Resort & Club” in connection with resort hotels, restaurant services, bar services, night club services, food preparation and catering services, marina services, and the provision of facilities for golf, tennis, water sports and health clubs. Complainant has registered the “Boca Raton Resort & Club” mark for those services and for a wide variety of other goods and services with the United States Patent and Trademark Office and currently holds 13 federal Principal Register service mark and trademark registrations.

In 1995, Complainant registered and began using the domain name <bocaresort.com> for a website relating to its Boca Raton facility. Complainant also uses the domain name <bocaresortsinc.com> for a website relating to its five properties located throughout southern Florida.

Respondent registered the domain name at issue, <bocaresorts.com>, on April 1, 2002, and renewed the registration in October 2004. The domain name resolves to the website “www.worldbeachnetwork.com” which states that it features “…the best of everything on and around the beach… from events and fishing trips to media, productions and coastal destinations worldwide”. The website has links for media, travel, fishing, events and real estate which are “under development” and a link for posters which resolves to a third party website, “www.allposters.com”.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has developed strong service mark and trade name rights in “Boca Raton Resort & Club”, <bocaresort.com> and “Boca Resorts Inc.” for resort, hotel and recreational services and that its marks and name are well-known by the public. Through extensive use, advertising, promotion and favorable press, Complainant asserts that it has acquired exclusive rights in the name and mark “Boca Resorts”. It further alleges that the domain name <bocaresorts.com> is identical or confusingly similar to its family of “Boca Resorts” marks, that Respondent has no rights or legitimate interest in <bocaresorts.com> and that Respondent registered that domain name in bad faith.

B. Respondent

Respondent argues that <bocaresorts.com> is a descriptive term and that Complainant has not proven trademark or service mark rights sufficient to preclude its use. Respondent contends there is no likelihood of confusion between <bocaresorts.com> and Complainant’s name and marks and that Complainant has not discharged its burden of proving identity or confusing similarity. Respondent further contends that it has legitimate rights and interests in <bocaresorts.com> because it is preparing a website for advertising services relating to coastal leisure. Finally, Respondent states that it did not register <bocaresorts.com> in bad faith because it believed the domain name to be descriptive of resorts in a resort city and that it had no predatory intent in registering the domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy and paragraph 3(b)(ix) of the Rules require that Complainant must prove each of the following:

- The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

- Respondent has no rights or legitimate interest in respect of the domain name; and

- The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

A threshold issue is whether Complainant has service mark rights sufficient to demonstrate confusing similarity. The majority of this Panel believes Complainant has met its burden for the following reasons:

Complainant’s Rights in “Boca Raton Resort & Club”

1) Complainant has used “Boca Raton Resort & Club” for a wide variety of resort, hotel and recreational services for over 17 years and such use has created extensive secondary meaning in the mark as a whole.

2) Complainant owns 13 federal Principal Register registrations of “Boca Raton Resort & Club” for a wide variety of resort, hotel and recreational services, as well as related products. Significantly, three of these registrations (Reg. Nos. 2,292,298; 2,289,993 and 2,287,446) are incontestable and cover the heart of the services at issue, namely, resort, restaurant, night club, recreational and marina services. Pursuant to 15 U.S.C. §1115(b), these registrations serve as “…conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce”.

No incontestable right may be acquired in a mark which is the generic name for the services covered by its registration. See 15 U.S.C. §1065(4). A mark is not generic if the relevant public primarily understands that the term at issue functions as a trademark, identifying goods emanating from a single source, as opposed to the term functioning as a common descriptive name. See Bayer Co. v. United Drug Co., 272F.505 (SDNY 1921).

The record does not establish that “Boca Resorts” is generally understood by the public to denominate anything other than Complainant. Respondent has not provided any evidence that “Boca Resorts” is defined in any dictionary, is used by the travel industry, or is understood by the consuming public as a common descriptive term. In the face of Complainant’s registrations with their conclusive presumption of validity, and on the limited evidence presented in this case, the majority finds that Respondent has failed to establish that Complainant’s marks have become generic.

Respondent is precluded, by operation of law, from showing that Complainant’s marks covered by its incontestable registrations are merely descriptive. See Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., [1985] USSC 8; 469 U.S. 189, 1055. ct. 658,83L, Ed. 2d 582 (1985); Debbie Robus and Greg Robus v. Nicky Suard (DrivenOne, Inc.), WIPO Case No. D2000-0941.

Respondent has not provided sufficient evidence to support any other cognizable defense to Complainant’s incontestable registrations. Given the limited nature of these proceedings, which are akin to the grant of summary judgment, the conclusive evidence provided by Complainant’s incontestable registrations is sufficient to establish a material question of fact that cannot be rebutted by any evidence presented by Respondent. See America Online Inc. v. AT&T Corp., 243 F. 3d 812 (4 Cir. 2001). Perhaps Respondent could adduce sufficient evidence at trial to prevail with the limited defenses to incontestability. Perhaps not. It has not done so here. Accordingly, the Panel rules that, on the basis of the evidence, Complainant has strong, incontestable rights in its registered marks and Respondent may not use the defense that they are generic or merely descriptive.

3) The majority find that, based on Complainant’s long use and federal registered marks, the disputed domain name <bocaresorts.com> is confusingly similar to the mark “Boca Raton Resort & Club”. The disputed domain name <bocaresorts.com> incorporates two of the four terms in the mark in the same sequential order. As Respondent has admitted, it intends to use <bocaresorts.com> for advertising services relating to coastal leisure activities, the very scope of use that Complainant has protected through its use and registration rights. There is a substantial likelihood that consumers and potential consumers would mistakenly believe that Respondent is endorsed, sponsored by, affiliated with or in some way connected to Complainant, and the Panel thus holds that <bocaresorts.com> is confusingly similar to Complainant’s registered marks.

4) Respondent’s argument that Complainant has disclaimed certain portions of its registered marks does not preclude a finding of confusing similarity. The registered marks must be considered as a whole, should not be dissected and, when compared with Respondent’s domain name, the overall impression must be used to determine confusing similarity. See McCarthy on Trademarks and Unfair Competition, §23:41 (4^th ed.); Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319; Time Warner, Inc. And EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433. Moreover, the majority notes that with respect to Complainant’s incontestable registrations, the words “Resort and Club” were disclaimed. Respondent’s domain name does not consist of “Resort & Club” and there is no claim here that Respondent cannot register and use a domain name comprising those terms.

Complainant’s Rights in Boca Resorts

1) The majority also finds that Complainant has used <bocaresort.com> and “Boca Resorts, Inc.” as service marks and has developed extensive secondary meaning in both designations.

Complainant has used <bocaresort.com> for its Boca Raton website for a decade. Complainant also uses <bocaresortsinc.com> for a website relating to all of its properties and on that website Boca Resorts, Inc. is used prominently as a service mark. Under the Lanham Act, a service mark is “any word, name, symbol or device…used by a person…to identify and distinguish the services of one person…from the services of others and to indicate the source of the services”. See 15 U.S.C. §1127. Complainant’s prominent use of “Boca Resorts, Inc.” on its website comprises service mark use and Complainant has presented evidence that it has come to be known as “Boca Resorts”.

In the United States, service mark rights are based upon use, not registration, and the fact that Complainant has not registered Boca Resorts does not preclude it from claiming trademark rights in the expression. See 15 U.S.C. §1125(a); Hunton & Williams v. American Distribution Systems, Inc. et al, WIPO Case No. D2000-0501; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602.

2) The majority finds, based upon Complainant’s use of “Boca Resorts Inc.” and <bocaresort.com>, that Complainant has come to be known by the name “Boca Resorts”, that it has service mark rights in “Boca Resorts”, and that the disputed domain name <bocaresorts.com> is virtually identical to, and confusingly similar with, “Boca Resorts Inc.” and <bocaresort.com>. That <bocaresorts.com> is intended to be used for advertising for leisure services enhances any such confusing similarity.

B. Rights or Legitimate Interests

The disputed domain name <bocaresorts.com> is not being used by Respondent. Respondent is not licensed by Complainant, nor does it have any permission from Complainant to use the disputed domain name. Respondent has not put forth any legitimate reason why it has registered the domain name. No goods or services are provided by Respondent in connection with the domain name, rather, the domain name simply resolves to another website, “www.worldbeachnetwork.com”. Respondent has offered no evidence that it is known by <bocaresorts.com> or that it has any legitimate interest in holding the domain name. Over three years have elapsed since Respondent obtained its registration and it has neither used nor provided any convincing evidence why it has a legitimate interest in using <bocaresorts.com>. Respondent has thus not satisfied the majority of this Panel that it has rights or legitimate interests in the subject domain name.

C. Registered and Used in Bad Faith

Respondent has registered <bocaresorts.com>, the plural form of a domain name that is being used extensively by Complainant, namely <bocaresort.com>. Moreover, Respondent’s domain name is virtually identical to <bocaresort.com> and <bocaresortsinc.com>, domain names being used by Complainant to advertise its Boca Resorts services.

Respondent is well-versed in domain name matters, has stated in his response that he is a web-developer and provider of Internet services to a wide variety of clients, and that he:

“is familiar with techniques for obtaining useful domain names, as noted in Respondent’s ‘Secrets of Domain Hunting’ article. This familiarity has served the Respondent well in collecting…names.”

Pursuant to 15 U.S. C. §1072, Respondent is also charged with constructive notice of Complainant’s 13 federal Principal Register registrations. See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.

It is clear to the majority that Respondent knew, or should have known, about Complainant’s “www.bocaresort.com” website and that he pluralized that name to benefit from web traffic generated by unsuspecting potential users of Complainant’s website who inadvertently add an “s” to “bocaresort” or delete an “inc” when searching for <bocaresortsinc.com>. A respondent’s registration of a domain name that differs by one letter has supported the inference that a registrant acted in bad faith. See, e.g., ACCOR Eduardo Marchiori Leite, WIPO Case No. D2004-0680; The News-Gazette, Inc. v. baby safe, WIPO Case No. D2004-0115. Moreover, Respondent’s failure to effect use for over three years is further evidence of bad faith. See Kate Spade, LLC v. Darmstadter Designs, supra.

The Panel finds that the domain name has been registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bocaresorts.com> be transferred to the Complainant.

Frank L. Politano Panelist

Nelson A. Diaz Panelist

Dated: September 1, 2005

I respectfully dissent from the Panel majority opinion on the following points.

On the bad faith element, I believe the Respondent is entitled to believe that the phrase “Boca Resorts” is geographically descriptive and means resorts in the city of Boca Raton, Florida, which is primarily a city full of resorts catering to a public seeking leisure. The Complainant did not show it has become “the resort” among the many resorts in Boca Raton. It is comparable to trying to claim to have become “the Vegas casino” in Las Vegas or “the Washington, D.C. lobbyist”. These are all common geographically descriptive terms that the public, in good faith, is entitled to believe are free for all to use because they describe goods or services found in abundance from many providers in the named city. See McCarthy on Trademarks, Vol. 2, Sect. 14:33, 2005 edition.

Without justification, the Complainant filed a Complaint substantially longer than the length limit of paragraph 10(a) of the WIPO Supplemental Rules. I would have considered only the part of the Complaint conforming to the length limit.

Similarly, the Complainant filed a “Motion to Strike Response” without the Panel’s permission. The Complainant had no new information to offer, but instead set off a further tit-for-tat exchange with the Respondent. I thus would have enforced paragraph 12 of the Rules and excluded both the Complainant’s and the Respondent’s Supplemental Filings.

Dennis A. Foster
Presiding Panelist