WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSX IA, Inc. v. Dawn Guiendeon
Case No. D2007-1666
1. The Parties
The Complainant is CSX IA, Inc., Sulphur Springs, West Virginia, United States of America, represented by McGuireWoods LLP, United States of America.
The Respondent is Dawn Guiendeon, Simi Valley, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with R, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2007. On November 13, 2007, the Center transmitted by email to R, Inc a request for registrar verification in connection with the domain name at issue. On November 13, 2007, R, Inc 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”), 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 November 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2007.
The Center appointed William R. Towns as the sole panelist in this matter on December 18, 2007. 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
For many years, the Complainant and its predecessor have owned The Greenbrier, a well known resort and National Historic landmark situated in White Sulphur Springs, West Virginia. The Complainant maintains an online store in connection with the resort at “” (“The Greenbrier Online Shop”), where items in a wide variety of categories, including gourmet food items, apparel, and decorative gifts for home and office are offered for sale.
The Complainant owns numerous trademark registrations for THE GREENBRIER for resort hotel services and other goods and services, issued by the United States Patent and Trademark Office (USPTO). The Complainant also owns a U.S. trademark registration for THE GREENBRIER SHOPPE for retail gift store services. The Complainant’s marks are referred to collectively herein as “the GREENBRIER marks”.
The Respondent is the current registrant of the disputed domain name , which according to R’s WHOIS database initially was registered on November 28, 2006. The disputed domain name resolves to an online store where merchandize including apparel and decorative gifts are offered for sale.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s GREENBRIER marks. According to the Complainant, the Respondent has no rights or legitimate interests in “greenbriar”, and is using the disputed domain name to divert Internet users to the Respondent’s online store, which Complainant alleges has the look and feel of the Complainant’s online store, in order to exploit and profit from the goodwill developed in the Complainant’s marks. For all of the foregoing reasons, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s GREENBRIER marks, in which the Complainant unquestionably has established rights through registration and long use. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. The term “greenbriar” within the disputed domain name is nearly identical to the GREENBRIER marks in terms of sight and identical in sound. See CSX IA, Inc. v. Registrant[190789]; International Domain Names Inc./Registrant [342921] Moniker Privacy Services,WIPO Case No. D2007-0611. As such, the disputed domain name wholly incorporates the Complainant’s GREENBRIER mark.
The substitution of the letter “e” in the Complainant’s mark by the letter “a” in the disputed domain name does not dispel the confusing similarity with the Complainant’s mark, and is evocative of “typo squatting”. Id. Nor does the addition of the common or descriptive word “shop” serve to dispel the confusing similarity with the Complainant’s marks, given the virtual identify between the disputed domain name and the Complainant’s THE GREENBRIER SHOPPE mark. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. It is uncontroverted that the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s GREENBRIER marks, nor has it authorized the Respondent to register a domain name corresponding to those marks. Nevertheless, the disputed domain name incorporates the Complainant’s mark, and the record reflects the Respondent’s use of the disputed domain name to attract Internet users to an online store, where the Respondent offers for sale items similar to those offered by the Complainant at its online store.
The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to her of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if she has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name. Further, the Respondent’s clearly commercial use of the disputed domain name precludes any claim of a legitimate noncommercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy. See Bata Brands S.�.r.l v. Charles Power,WIPO Case No. D2006-0191.
The Respondent’s use of the disputed domain name in connection with an online store does not in the Panel’s view entitle the Respondent to intentionally register and use a domain name incorporating the Complainant’s GREENBRIER mark, particularly where the Respondent is offering for sale items similar to those available at The Greenbrier Online Shop operated by the Complainant. As noted in Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. Given the foregoing, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services with in the meaning of paragraph 4(c)(i) of the Policy. See Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
A strong inference can be drawn from the circumstances that the Respondent was aware of the Complainant and its GREENBRIER mark when the Respondent registered the disputed domain name, and the Panel so finds. The Panel further finds that the Respondent is using the disputed domain name in an attempt to profit from and exploit the Complainant’s GREENBRIER marks. As noted above, when a domain name is so obviously connected with a Complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492. See also Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453.
The circumstances of this case as set forth above compel the conclusion that the Respondent registered and has used the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ GREENBRIER marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and online store. Pursuant to paragraph 4(b)(iv) of the Policy, this constitutes bad faith registration and use of the disputed domain name. See, e.g., Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453; Bodegas Vega Sicilia, S.A. v. Seraf�n Rodr�guez Rodr�guez,WIPO Case No. D2001-1183; The Channel Tunnel Group Ltd. v. John Powell,WIPO Case No. D2000-0038; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: January 1, 2008
1 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., DoThe Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
Full & Egal Universal Law Academy