Complainant is Blue On Highland LLC, United States of America (“United States”), represented by John Brooks Law LLC, United States.
Respondent is Matthew Sullivan, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 19, 2021.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 25, 2021. 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 BackgroundComplainant, Blue on Highland LLC, operates a restaurant and bar in in Needham, Massachusetts. Complainant was established under the name Mount Blue Two LLC in November 2005, and on October 27, 2006, changed its name to Blue on Highland LLC. Complainant has used the name BLUE ON HIGHLAND for its establishment since it opened in August 2006.
Respondent was the General Manager of Complainant’s restaurant during its construction and initial buildout starting in November 2005 up through September 2014. Respondent registered the disputed domain name on March 23, 2006 ostensibly on behalf of Complainant. Since at least 2006, the disputed domain name has resolved to an official website advertising and promoting Complainant’s BLUE ON HIGHLAND restaurant.
At some point after Respondent ceased working for Complainant, it was discovered that Respondent had registered the disputed domain name under his personal name. Complainant wanted to change the web hosting company for the website at the disputed domain name and could not do so as it do not have the login credentials to access the records of the disputed domain name. Complainant contacted Respondent to obtain the transfer of the disputed domain name or to reset the login information for the disputed domain name. A transfer or a reset of the log in information did not occur and in August 2021, Complainant’ s representative sent multiple letters to Respondent requesting the transfer the disputed domain name. No response to these communications was received from Respondent. The disputed domain name currently continues to resolve to a website for Complainant’s restaurant.
5. Parties’ Contentions A. ComplainantComplainant asserts that it has developed common law rights in the name and mark BLUE ON HIGHLAND for its restaurant and bar through its use of such since at least August 2006. Complainant also asserts that it had developed some rights in BLUE ON HIGHLAND prior to the opening of its restaurant and bar through use of the name and mark during the startup design, construction and initial buildout of the establishment between November 17, 2005 and August 2006.
Complainant contends that the disputed domain name is identical or confusingly similar to its BLUE ON HIGHLAND name and mark as it fully and solely consists of BLUE ON HIGHLAND.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as (i) Complainant has never licensed or consented to the registration or use of the disputed domain name in Respondent’s name and (ii) Respondent is not commonly known by the disputed domain name. Complainant maintains that at the time Respondent registered the disputed domain name he was the General Manager of Complainant and had been charged with procuring the disputed domain name and setting up a website on behalf of Complainant. Rather than placing the disputed domain name under the name of Complainant, Respondent registered the disputed domain name in his personal name. When Respondent stopped working for Complainant, Respondent did not transfer the disputed domain name to Complainant and has failed to do so to date.
Lastly, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith as “Respondent acquired, renewed and maintains ownership of the domain name in his name in order to prevent Complainant from reflecting the mark in a corresponding domain name.” In that regard, Complainant contends that Respondent was never given permission to register or renew the disputed domain name in his personal capacity, but had been charged to do so on behalf of Complainant. In addition, Complainant further asserts that Respondent has acted in bad faith by failing to transfer the disputed domain name to Complainant despite several requests to do so and by failing to respond to Complainant’s representative.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarComplainant does not have an existing or pending trademark registration or application for the mark BLUE ON HIGHLAND. Complainant argues that is has established common law or unregistered rights in the BLUE ON HIGHLAND name and mark. See WIPO Overview at section 1.3. In support of that contention, Complainant has provided evidence of its use of the BLUE ON HIGHLAND name and mark for its restaurant and bar in Needham, Massachusetts and of its investment in doing so. Complainant has also provided web printouts from third party social media platforms, such as Yelp, concerning Complainant’s restaurant. Based the totality of Complainant’s evidence, none of which is contested by Respondent, the Panel is satisfied that Complainant has at least established common law rights in the BLUE ON HIGHLAND name and mark in the geographic area where Complainant’s restaurant is located and has been operating since August 2006.
With Complainant’s rights in the BLUE ON HIGHLAND name mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is identical to Complainant’s BLUE ON HIGHLAND mark as fully incorporates and solely consists of the BLUE ON HIGHLAND mark in its entirety. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s BLUE ON HIGHLAND mark and in showing that the disputed domain name is identical to that trademark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
This matter presents an interesting situation as Respondent registered the disputed domain name in March 2006 prior to when Complainant’s restaurant under the BLUE ON HIGHLAND name and mark opened in August 2006. At that point, complainant had limited rights in the BLUE HIGHLAND name and mark and, at best, some promotional use of BLUE HIGHLAND for an upcoming restaurant that arguably could be seen as akin to trademark use.
Whether Complainant had some common law rights in BLUE ON HIGHLAND in March 2006 is questionable, but the analysis does not end there, as there are other factors at play. At the time, Respondent registered the disputed domain name Respondent worked as the General Manager of Complainant and had been specifically charged, according to Complainant, to register the disputed domain name on behalf of Complainant for purposes of a website that would promote the upcoming BLUE ON HIGHLAND restaurant and bar. Respondent did in fact register the disputed domain name, but did so under his personal name as opposed to the name of Complainant, which at the time was Mount Blue Two LLC. The disputed domain name has since that time been used for a website for Complainant’s restaurant, even after Respondent stopped working for Complainant in 2014.
What seems apparent is that Respondent had instructions from Complainant to register the disputed domain name and that for years thereafter the disputed domain name has been used for Complainant’s official website with no issue through the same hosting company. As some point, Complainant sought to change the hosting service for the disputed domain name and discovered that the disputed domain name was under the control of Respondent, its former General Manager. Complainant has attempted to regain control of the disputed domain name, but Respondent appears to have ignored Complainant and kept the disputed domain name in his name. Nevertheless, Respondent has done nothing to change the use of the disputed domain name, which continued to be used with Complainant’s website.
The question under these circumstances is whether Respondent has a legitimate interest in the disputed domain name. To the Panel, Respondent does not have a legitimate interest. Any authorization to register the disputed domain name for use of such with a website promoting Complainant’s restaurant was done on behalf of Complainant and its restaurant and bar and not for any legitimate business interest of Respondent. The fact that Respondent registered the disputed domain name under his personal name and has failed to transfer the disputed domain name to Complainant, even after being requested to do so on multiple occasions, underscores the lack of any legitimate interest that Respondent could conceivably have in the disputed domain name. The disputed domain name was registered and used for the benefit of Complainant and its restaurant and not in furtherance of any bona fide use or legitimate interest of Respondent.
Based on the foregoing, Complainant prevails under the second element.
C. Registered and Used in Bad FaithGiven Respondent’s above noted actions, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith. This is not a situation where a respondent registered a domain name before a complainant secured rights in a corresponding trademark. As already noted, on its face it is questionable whether Complainant had common law rights in BLUE ON HIGHLAND in March 2006 when the disputed domain name was registered. However, this case is distinguishable insofar as Respondent worked for Complainant at the time the disputed domain name was registered and clearly knew of Complainant’s adoption and planned use of BLUE ON HIGHLAND for its restaurant and bar.
While Respondent likely had instructions to register the disputed domain name for its use for Complainant’s website, Respondent did not register the disputed domain name under the name of Complainant but did so under his personal name. While it is possible that this was done innocently, there is nothing in the record before the Panel that arguably shows that Respondent was given permission to proceed in this manner or that the Respondent had a legitimate personal interest in such registration. What evidence has been submitted establishes that Respondent was charged with registering the disputed domain name for Complainant and not for the benefit of Respondent.
The fact that Respondent never took steps to rectify the matter or to properly put the disputed domain name under the control of Complainant, and has essentially refused to transfer the disputed domain name to Complainant when requested to do so, undermines the possibility that the registration of the disputed domain name under Respondent’s name was done innocently. Based on the evidence before Panel, none of which has been contested by Respondent who has failed to appear in this matter, it appears more likely than not that Respondent chose to register the disputed domain name under his personal name for reasons that likely were meant to benefit Respondent. The failure or refusal to transfer the disputed domain name which clearly belongs to Complainant and was used at all relevant times to promote Complainant’s restaurant and bar suggests that Respondent knew what he was doing when he registered the disputed domain name under his own name and not under the name of his employer. There is certainly no reason for Respondent to have done so when he was charged to register the disputed domain name for Complainant and Complainant paid the fee for its registration.
Simply put, Respondent acted opportunistically and in bad faith when he registered the disputed domain name in his personal name, assumed control of the disputed name and later refused to take steps to transfer the disputed domain name to Complainant when asked to do so.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
7. DecisionFor 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
Georges Nahitchevansky
Sole Panelist
Date: November 8, 2021