The Complainant is Bartram Academy, Inc. of Jacksonville, Florida, United States of America ("United States"), represented by Marks Gray, P.A., United States.
The Respondent is Al Perkins of Saint Helier, Jersey, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2017. On March 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 March 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2017. The Center received an informal email communication from the Respondent on March 30, 2017. The Center informed the Parties of the commencement of the panel appointment process on April 20, 2017.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on May 4, 2017. 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 Complainant, Bartram Academy, is a company incorporated under the laws of Florida, United States. It provides services as a child daycare and preschool learning center in Florida.
The Complainant submitted evidence that it is the owner of the trademark BARTRAM ACADEMY (the "Trademark"), registered under number T17000000105 in Florida for services in class 41 since January 26, 2017. The Complainant submitted evidence that it has used the name "Bartram Academy" for its services since January 2012.
The disputed domain name was registered by the Respondent on March 8, 2017. The disputed domain name resolves to a website with adult−oriented content. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name is identical to the Trademark in which the Complainant has rights.
The Complainant asserts that the confusion resulting from this identity has caused its customers to erroneously visit the Respondent's website in search of information regarding the Complainant.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that it has rights in BARTRAM ACADEMY and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent has not been commonly known by the dispute domain name.
The Complainant contends that it owned the disputed domain name from January 2012 until March 1, 2017, and that it thought the disputed domain name was automatically renewed every year. However, it was not automatically renewed in 2017.
The Complainant further asserts that there is no evidence that the Respondent used or was making preparations to use the disputed domain name in connection with a bona fide offering of goods before any notice to the Respondent of the dispute.
The Complainant contends that the Respondent intends to acquire commercial gain by diverting consumers visiting the disputed domain name to a pornographic website or to extort money from the Complainant under the threat of tarnishing the Trademark.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.
The Complainant asserts that its communications with the Respondent (provided in annexes to the Complaint) shows that the disputed domain name was registered for the purpose of selling the disputed domain name for an amount well in excess of the Respondent's out-of-pocket expenses, as the Respondent requested the Complainant requested USD 9700 for the transfer for the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions in the Complaint. Following the Center's notification of the Complaint to the Respondent, the Respondent merely sent an email to the Center on March 30, 2017 with the following content: "Shame they chose this route I was gonna give it them free lol but they chose to waste Money". 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to BARTRAM ACADEMY. Although the Trademark was registered only recently (January 26, 2017), the Trademark certificate of the Department of State of Florida submitted by the Complainant states that the Complainant has used the name "Bartram Academy" for its services for several years, namely since January 2012.
Secondly, the disputed domain name fully incorporates the Complainant's BARTRAM ACADEMY Trademark in which the Complainant has rights.
Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see Betsson Malta Ltd. v. Brainman Wiaslova,WIPO Case No. D2011−1664; Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; F. Hoffmann−La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant's BARTRAM ACADEMY Trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
There is no evidence that the Respondent is commonly known by the name "Bartram Academy" or is in any way affiliated with the Complainant or authorized to use the Trademark.
Moreover, there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence that the Respondent would have made a legitimate noncommercial or fair use of the disputed domain name. In fact, as set out in more detail below, this Panel believes, after having examined the evidence submitted by the Complainant, that the Respondent registered the disputed domain name with the intention of selling it for an amount in considerable excess of its out-of-pocket expenses or, alternatively, of making a profit by redirecting the website to a pornographic website.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of "registration and use of a domain name in bad faith."
After examination of the evidence presented by the Complainant, this Panel finds that the Respondent intended to sell the disputed domain name for valuable consideration in excess of its out-of-pocket expenses related to the disputed domain name. Pursuant to the Policy, this constitutes compelling evidence of registration and use in bad faith (see also: Federated Western Properties, Inc., v. Top Bell,WIPO Case No. D2002-0469; Irotama S.A. v. Richard Bonn,WIPO Case No. D2010-1784; Adamovske Strojirny v. Tatu Rautiainen,WIPO Case No. D2000-1394).
Furthermore, as stated by the Complainant, and supported in evidence, the Respondent also appears to have made use of the disputed domain name to redirect visitors towards a website with pornographic content. It is commonly understood, in accordance with prior UDRP decisions, that the diversion of domain names to a pornographic site is consistent with a finding that the disputed domain name is being used in bad faith (see Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon,WIPO Case No. D2001-0860; AREVA Société Anonyme à Directoire et Conseil de Surveillance v. wangyongqiang,WIPO Case No. D2016-1100).
In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: May 18, 2017
Full & Egal Universal Law Academy