Registered in 2001, the domain is the property of Frank Schilling‘s Name Administration Inc.
In a UDRP case at the National Arbitration Forum, the Respondent was represented by Uniregistry’s John Berryhill.
Complainant is JC GLOBAL, INC. that claimed rights to the OCEAN BREEZE mark since 2009.
The domain was offered for sale for $158,000 dollars.
The Respondent pointed out that the domain’s ownership predates the mark by at least seven years:
The three member panel found no bad faith in the registration and use of the domain OceanBreeze.com and ordered it to remain with the Respondent.
JC Global, Inc. v. DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC.
Claim Number: FA1805001787481
Complainant is JC GLOBAL, INC. (“Complainant”), represented by Jonathan J. Ross of Feldman Law Group, P.C., New York, USA. Respondent is DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Messrs. Calvin A. Hamilton, Dennis A. Foster and Jeffrey M. Samuels as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 18, 2018; the Forum received payment on May 18, 2018.
On May 22, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the
On May 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also, on May 29, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 19, 2018.
On June 28, 2018, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Calvin A. Hamilton, Chair, Dennis A. Foster and Jeffrey M. Samuels as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has rights in the OCEAN BREEZE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,610,766, registered April 28, 2009). See Compl. Annex 1. Respondent’s
Respondent has no rights or legitimate interests in the
Respondent registered and uses the
Respondent’s domain name predates Complainant’s trademark registration by some seven years. Thus, while Complainant owns a trademark registration for the OCEAN BREEZE mark, this Complaint must fail.
Respondent has rights and legitimate interests in the
Respondent did not register the domain name in bad faith. Specifically, bad faith cannot be found where a domain name registration predates rights in a mark, as is the case here. See Resp. Ex. A and Compl. Annex 1. Further, simply because Respondent offered to sell the domain name for a specific price does not mean Respondent registered the domain name in bad faith. Rather, Complainant initiated the offer, and Respondent merely counter-offered to sell the domain name for a price which it was willing to sell the domain name. See Resp. Ex. 3.
Respondent registered the
FINDINGS and DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant claims rights in the OCEAN BREEZE mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,610,766, registered April 28, 2009). See Compl. Annex 1. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Complainant has established rights in the OCEAN BREEZE mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s
While Respondent argues that its registration of the
The Panel therefore finds that the
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the
Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner.
Accordingly, the Panel agrees that Respondent is not commonly known by the
Notwithstanding, Respondent claims rights and legitimate interests in the
Based on the evidence, the Panel finds that Respondent’s registration of the disputed domain name prior to Complainant’s own trademark registration of the domain name, confers rights in the same under the Policy.
Complainant argues that the resolving webpage for the domain name is simply a parked webpage featuring pay-per-click links. Complainant provides a screenshot of the resolving webpage for the domain name, which displays links such as “Alaska Vacations” and “Cruises.” See Compl. Annex 5.
However, Respondent claims it does not use the domain name to compete with Complainant’s air conditioner business; rather, Respondent uses the domain name in connection with paid advertisements for popular cruise or oceanfront resort destinations. Respondent points to Complainant’s Annex 5, which shows hyperlinks to various vacation destinations such as Hawaii and Florida. Using a domain name in a different industry than a complainant, and in connection with services descriptive of the terms in the domain name, can confer rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). See McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); see also Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER, FA 1689461 (Forum Oct. 10, 2016) (“The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date… Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy ¶ 4(c)(i).”).
The Panel finds that Respondent uses the domain name to display hyperlinks to unrelated services and that such use gives rise to rights and legitimate interests under the Policy.
Further, Complainant claims that Respondent offers the disputed domain name for sale. Complainant provides various screenshots of Respondent’s offering the domain name for sale, which indicates various specific offers, including for $205,400.00 and $158,000.00. See Compl. Annexes 5-6.
Respondent contends that because it has rights and legitimate interests in the domain name, Respondent may choose to sell the domain name for whatever price it deems sufficient. A respondent may offer to sell a domain name without a finding that it lacks rights and legitimate interests in a domain name. See Fabricators & Manufacturers Association, International v. Domain Administrator / Namefind, LLC, FA 1728625 (Forum June 1, 2017) (finding rights and legitimate interests in a domain name on the part of respondent when complainant approached respondent about selling the domain name, and not vice-versa); see also Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy).
Respondent further alleges that Complainant initiated the offer, and Respondent merely counter-offered to sell the domain name for a price which it was willing to sell the domain name.
The Panel agrees with Respondent and finds that under these circumstances, Respondent’s offer to sell the domain name does not show a lack of rights and legitimate interests in the
Respondent also argues that the terms of the
The Panel finds that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant alleges that Respondent offers the
As noted above, Complainant provides various screenshots of Respondent’s offering the domain name for sale, which indicates various specific offers including for $205,400.00 and $158,000.00. See Compl. Annexes 5-6.
Nonetheless, the Panel concludes that Respondent has rights or legitimate interests in the
Additionally, and deriving from the evidence, the Panel finds that Respondent’s registration of the
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the
Calvin A. Hamilton, Chair,
Dennis. A. Foster,
Jeffrey M. Samuels, Panelists
Dated: July 9, 2018
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