Frank Schilling’s OceanBreeze.com saved from aggressive #UDRP

SNN .com : Allegedly stolen #domain fails to be recovered via the #UDRP process


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

PARTIES

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 , registered with Uniregistrar Corp.

PANEL

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.

PROCEDURAL HISTORY

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 domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

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 postmaster@oceanbreeze.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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. 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 domain name is identical to Complainant’s mark as it contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.”

Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists Respondent as “Domain Administrator/Name Administration Inc.” See Compl. Annex 3. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is in the business of buying and selling domain names, and specifically lists this domain name for sale on various online databases. See Compl. Annexes 2, 4, 5, & 6. Further, the resolving webpage for the domain name is simply a parked webpage featuring pay-per-click links. See Compl. Annex 5.

Respondent registered and uses the domain name in bad faith. Respondent acquired the domain name primarily for the purpose of selling it for an amount far in excess of out-of-pocket costs. Specifically, Respondent listed the domain name for sale for $205,400.00, and offered to sell the domain name directly to Complainant for $158,000.00 when Complainant contacted Respondent. See Compl. Annexes 2, 4, 5, & 6.

B. Respondent

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 domain name, as the domain name predates Complainant’s trademark registration by some seven years. See Resp. Ex. A and Compl. Annex 1. Further, Respondent 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. See Compl. Annex 5. This use conforms with the meaning of the terms “ocean breeze.” Additionally, the terms of the domain name “ocean” and “breeze” are non-distinctive and non-exclusive which Complainant does not hold exclusive rights to. Moreover, because Respondent has rights and legitimate interests in the domain name, Respondent may choose to sell the domain name for whatever price it deems sufficient.

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 domain name on November 14, 2001. See Resp. Ex. 2.

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 domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds the gTLD “.com.” Similar changes to a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).

While Respondent argues that its registration of the domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

The Panel therefore finds that the domain name is identical to the OCEAN BREEZE mark under Policy ¶4(a)(i).

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 domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Domain Administrator/Name Administration Inc.” as the registrant. See Compl. Annex 3. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the OCEAN BREEZE mark.

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 domain name under Policy ¶ 4(c)(ii). Complainant has therefore met the burden of proof requirement under Policy ¶ 4(c)(ii).

Notwithstanding, Respondent claims rights and legitimate interests in the domain name as the domain name predates Complainant’s trademark registration by some seven years. A respondent can have rights in a domain name that predates a complainant’s mark. See Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark). Respondent provides a copy of the WHOIS registration information along with Complainant’s trademark registration, and it does appear that the domain name predates Complainant’s trademark rights in the OCEAN BREEZE mark. See Resp. Ex. A and Compl. Annex 1.

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 domain name.

Respondent also argues that the terms of the domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees with Respondent and finds that under the circumstances, Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (“Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

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 domain name for sale for amounts in great excess of out-of-pocket expenses. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”); see also Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).

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 domain name pursuant to Policy ¶ 4(a)(ii). Based on the Respondent’s conduct in this case, the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

Additionally, and deriving from the evidence, the Panel finds that Respondent’s registration of the domain name predates Complainant’s first claimed rights in the OCEAN BREEZE mark. Under such circumstances, Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

DECISION

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 domain name REMAIN WITH Respondent.

Calvin A. Hamilton, Chair,

Dennis. A. Foster,

Jeffrey M. Samuels, Panelists

Dated: July 9, 2018

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