WIPO Domain Name Decision D2018-2940 for sylvanbeachpavilion.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Party and Reception Center, Inc. v. Contact Privacy Inc. Customer 1242202517 / Tony Tarius, Tarius Media LLC Case No. D2018-2940 1. The Parties
The Complainant is Party and Reception Center, Inc. of Pasadena, Texas, United States of America (“United States”), internally represented.
The Respondent is Contact Privacy Inc. Customer 1242202517 of Toronto, Canada / Tony Tarius, Tarius Media LLC of Pasadena, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2018. On December 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 28, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 18, 2019. The Panel finds that it was properly constituted. 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. 4. Factual Background
The Complaint was filed in the name of “Party and Reception Center, Inc.”, with a postal address in Pasadena, Texas, United States. The Complainant is not listed under exactly these details in the online database of taxable entities maintained by the Texas Comptroller of Public Accounts, but it is presumably the same entity named “Party & Reception Center, Inc.” with an address in Houston, Texas, showing Mr. Shafaii as the registered agent, president, and director. Mr. Shafaii filed the Complaint in this proceeding. According to the Complaint and attachments, the Complainant is a family-owned business that provides banquet, catering, and party services in the Houston, Texas area. It appears from the Complaint that the Complainant is associated with or uses the trade name “Shafaii Party & Reception Center”, which operates a website at “” (the “Complainant’s website”).
The Complainant obtained a contract in 2013 from the government of Harris County, Texas, to operate a historic landmark, the Sylvan Beach Pavilion in La Porte (near Houston), as an events center for private parties and receptions. The Complainant claims common law rights in SYLVAN BEACH PAVILION as an unregistered trademark. The Complaint cites the history of earlier Sylvan Beach Pavilions since the 1890s and the fame of the current octagonal pavilion constructed in 1953, restored in 2013, and placed on the registry of historical sites. The Complainant has been operating the center since October 2013, and the record includes evidence of social media, print, email, and direct mail advertising, and sales through December 2018 exceeding USD 5.6 million, media recognition in local newspapers, and a 2016 award from the United States Small Business Administration. The Complainant advertises services at the Sylvan Beach Pavilion on a Facebook page and on the Complainant’s website, the latter with a distinctive design logo featuring those words.
According to the Registrar, the Domain Name was created on January 23, 2012. It was registered in the name of a domain privacy service, which has expressed no interest in the Domain Name, but after notice of this dispute the Registrar identified the current registrant as the Respondent Mr. Tarius of Pasadena, Texas, United States, and his organization as the Respondent “Tarius Media LLC”.
The online database of the Texas Comptroller of Public Accounts lists “Tarius Media, LLC” as a Texas limited liability company at the same postal address given by the Registrar. The Comptroller’s database shows that the company’s right to transact business in Texas has been “involuntarily ended”, subject to reinstatement with tax clearance. Mr. Tarius is listed in that database as the registered agent, owner, founder, and director of Tarius Media, LLC. The company does not appear to have a website, but its LinkedIn social media page describes the company’s business as “marketing and advertising” and lists two employees, one of them being Mr. Tarius. As Tarius Media, LLC appears to be controlled by Mr. Tarius and may not be an active legal entity at present, Mr. Tarius and Tarius Media, LLC will be referred to hereafter collectively as “the Respondent”.
The Complaint and attachments explain the relationship between the Complainant and the Respondent. The Complaint attaches court papers from a lawsuit filed by the Complainant in 2017, Party & Reception Center, Inc. v. Tony Tarius and Tarius Media, LLC, Cause No. D2017-08712 (District Court of Harris County, Texas). In that judicial proceeding, the Complainant sought damages and an injunction ordering the transfer of the Domain Name and a similar domain name not at issue in this UDRP proceeding, , under the United States Anticybersquatting Consumer Protection Act (“ACPA”), the Texas Deceptive Trade Practices Act, and common law trademark infringement.
According to Mr. Shafaii’s Affidavit in the judicial proceeding, the Complainant entered into an oral agreement with the Respondent in January 2014 to “redesign and host” the Complainant’s website at “www.my” and to redesign the Complainant’s logo and business cards. Thereafter, according to the affidavit, the Respondent acquired the domain name in January 2014 and the Domain Name in February 2014. The Complaint asserts that the Domain Name was acquired on behalf of the Complainant, although the Affidavit of Mr. Shaffai emphasizes that the Respondent did not inform the Complainant of these domain name acquisitions at the time. Mr. Shaffai’s Affidavit states that the Respondent in January 2015 advised the Complainant to transfer the contents of the Complainant’s website advertising the Sylvan Beach Pavilion from to the Domain Name, without disclosing that the Respondent registered the Domain Name on its own behalf. The Complainant agreed to make the transition, and screenshots from the Internet Archive’s Wayback Machine show that the Complainant used the Domain Name for the website advertising the Complainant’s business at the Sylvan Beach Pavilion in 2015 and 2016. The Complaint attaches evidence that the Complainant also used the Domain Name for its email addresses in that period. The record includes cop