WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSX IA, Inc. v. Digi Real Estate Foundation
Case No. D2007-0806
1. The Parties
The Complainant is CSX IA, Inc., of Jacksonville, Florida, United States of America represented by McGuireWoods LLP, of Richmond, Virginia, United States of America.
The Respondent is Digi Real Estate Foundation, P.O. Box 7-5324, Panama City, PA N7 8DJ, Panama, of Panama.
2. The Domain Name and Registrar
The disputed domain name is <greenbriarhotel.com> (the “Domain Name”).
As at May 25, 2007, the Domain name was registered with Brandon Gray Internet Services Inc trading as Namejuice.com (“Namejuice”). However, on June 8, 2007, the Domain Name was transferred to Moniker Online Services Inc (“Moniker”), which is the registrar for the purpose of this Decision (“Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2007.
3.2 On June 5, 2007, the Center transmitted by email to Namejuice the first of several requests for registrar verification in connection with the Domain Name. On July 10, 2007, Namejuice transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.3 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 July 11, 2007.
3.4 In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2007.
3.5 From the documents in the Center’s case file it would appear that on August 8, 2007, the registrar was then changed from Namejuice to Moniker and the registrant and administrative, billing and technical contacts were changed from the Respondent to “Moniker Privacy Services”. It would appear that although Namejuice had placed the Domain Name in lock status, an entity called ENOM had actual control of the Domain Name. ENOM had released and then transferred the Domain Name in response to “a transfer request” made on July 31, 2007.
3.6 As a result of email correspondence between the Registrar and the Center, and at some point between August 23 and August 28, 2007, the registrant, administrative, billing and technical contacts for the Domain Name were changed back to those associated with Digi Real Estate Foundation.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 12, 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
4.1 The Complainant is a United States of America corporation, incorporated under the laws of the State of Delaware. It gives an address on the face of its Complaint in Jacksonville, Florida but gives as its contact address an address in Sulphur Springs, West Virginia, United States of America.
4.2 The Complainant submits that it has “established rights in the mark GREENBRIER through the Complainant’s use of such mark, as well as through the registration of such mark with the United States Patent and Trademark Office (the “USPTO”) and other international registrations”.
4.3 The Complainant lists 12 United States trademarks that it relies upon in the Complaint. They take various forms including marks for the words “The Greenbrier” in italic script and a number of simple word marks for the term “The Greenbrier”. Two are registered for managing “resort hotels of others” and “sports, health and recreational clubs of others”. Three others are registered for “resort hotel services” and the remainder for goods and services such as clothing, wine and mineral water and for golf, cooking school, healthcare, restaurant and spa/beauty services. The earliest mark was registered in 1988 and the latest in 2005.
4.4 The Respondent gives the appearance of being a Panamanian entity, operating from a PO Box number in Panama City. Whilst this is not mentioned in any of the papers before the Panel, it is well known that the Respondent has been involved in a large number of previous UDRP decisions. A search of the WIPO’s domain name decision database reveals that the Respondent has been a respondent in 14 WIPO cases in 2007 alone. In every case to date in 2007, the Respondent has not filled a response and the panel ordered the Domain Name to be transferred to the Complainant.
4.5 The Domain Name was registered on March 24, 2007. The Complainant became aware of the Domain Name by at least April 27, 2007, and on this date and on May 3, 2007, sent the Respondent letters before action alleging that the Respondent’s use of the its trademarks, inter alia, constituted trademark infringement.
4.6 By at least May 25, 2007 (and possibly earlier) the Domain Name resolved to an English language webpage that had all the hallmarks of a domain name parking service. The web-page was headed “greenbriarhotel.com” and carries the sub-heading “Your Travel Resource”. It listed various travel-themed links with names such as “Hotel Reservation”, “Travel”, “Flights” and “Vacations”. Aside from the title, the web page did not otherwise use the words “greenbriar” or “greenbrier”.
4.7 As at the date of this decision the form of the website operating from the Domain Name has changed somewhat to one the style of which changes each time the website is accessed or refreshed. Nevertheless, each page displayed still bears the tell tale signs of a domain name parking service. In addition, these pages now also display specific “Greenbrier Hotel” sponsored links. These links click through to generic hotel booking or advice sites such as <booking.com/hotels> and <fivestaralliance.com> and on occasion to web-pages that offer to make bookings at a five star hotel resort named “The Greenbrier” which is based in White Sulphur Springs, West Virginia.
5. Parties’ Contentions
Identical or Confusingly Similar
5.1 The Complainant alleges that it has rights in the “GREENBRIER mark” through its use of the mark and its trademark registrations at the PTO and internationally and that the Domain Name is confusingly similar to that mark.
5.2 The Complainant submits that the difference between its mark and the Domain Name <greenbriarhotel.com> is the substitution of an “e” for an “a” and the additional word “hotel”. The letter change is insubstantial, visually it is minor and aurally it may well be non-existent. Further, the word “hotel” does not prevent a finding of confusing similarity and “a domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy, when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name”. Additionally, the addition of the word hotel to the Domain Name is said only to increase the confusion “given that a substantial activity of the Complainant is hotel services”.
Rights or Legitimate Interests
5.3 The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name.
5.4 In support of its contentions, the Complainant provides results of a search on the USPTO database for all marks comprised of the word Greenbriar with or without design elements. The results show 5 live marks, 2 of which are applications. None of these marks or applications relates to hotels or hotel services and none are in the name of the Respondent.
5.5 The Respondent’s name is said to bear no connection to the Domain Name and there is no evidence that the “Greenbriar” name is in any way connected to or commonly used by the Respondent.
5.6 The Complainant maintains that the Respondent is using the Complainant’s trademark to divert Internet users to a parking website with links to (amongst others) hotel services. The Respondent is therefore not using the Domain Name for a bona fide offering of goods and services or for a fair or legitimate non-commercial use.
5.7 The Complainant confirms that the Respondent is not affiliated with the Complainant and does not have permission to register the Domain Name.
5.8 Further, prior to the Complaint, the Complainant sent two letters (which are exhibited to the Complaint) by certified mail to the Respondent’s contact address notifying the Respondent that the Complainant did not authorize the registration of the Domain Name. The Complainant asserts that the Respondent “refused delivery” of these letters.
Registered and Used in Bad Faith
5.9 The Complaint alleges that the registration of a domain name incorporating a confusingly similar approximation of a “well-known and distinctive trade mark” in the absence of any indication of rights or legitimate interests is itself indicative of bad faith.
5.10 The substitution of the “e” with an “a” in the Domain Name is said to amount to typo-squatting and the addition of the word “hotel” reinforces this and is further evidence of bad faith.
5.11 The Complainant contends that the Respondent is using the Domain Name to achieve advertising / click- through revenue (including that derived from the Complainant’s competitors who chose to advertise on the Domain Name website). It claims that the Respondent has sought to maximize such revenue by choosing a Domain Name that capitalises on the Complainant’s trademark and that Internet users would be confused into believing was the Complainant’s own Internet location.
5.12 The Respondent did not file a Response.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within Paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in Paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name 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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6.4 However, under Paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
A. Identical or Confusingly Similar
6.5 In this case, it is reasonably clear that the Complainant is the owner of 12 United States registered trademarks that comprise the words “The Greenbrier” (albeit on some occasions in stylised script).
6.6 It is appropriate in this case, when comparing the Domain Name and the trade marks relied upon to disregard the “.com” TLD suffix. Accordingly, the only differences between the Domain Name and the text in these trademarks are that:
(i) the Domain Name does not contain the definite article “the”;
(ii) the substitution in the Domain Name of the last letter “e” in Greenbrier for the letter “a”; and
(ii) the Domain Name contains the word “hotel”.
6.7 The omission of the definite article “the” does not strike the Panel as particularly significant since the most striking element of the Complainant’s marks is the work “Greenbrier”.
6.8. Similarly, the use of the letter “a” rather than the letter “e” does not significantly detract from the similarity between the marks and the Domain Name. It is only one letter and when spoken, the words “Greenbriar” and “Greenbrier” are virtually indistinguishable.
6.9 Lastly, the addition of the word “hotel” is not significant in this case given that in the case of at least two of the trade marks relied upon, the registrations are for hotel related goods and services (United States registered trademarks no 2936362 and 2940022).
6.10 In the circumstances, when taking all of these differences together, the Panel concludes that the Domain Name is confusingly similar to trademarks in which the Complainant has rights. Accordingly, the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.11 The Complainant contends, and the Panel accepts, that the Respondent has not been authorised to use the “Greenbrier” name by the Complainant.
6.12 The Panel also accepts that the Respondent had no interest in the Domain Name other than to use the domain name to generate “click through” revenue on the Internet and it was for this purpose only that the Domain Name was registered. As described above, at all times the website operating from the Domain Name has borne the tell tale signs of being generated by a Domain Name parking service.
6.13 There is nothing per se illegitimate in the use of a domain parking service. However, linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy (see, for example, the decision of the three member panel in Express Scripts, Inc. v Windgather Investments Limited/Mr Cartwright, WIPO Case No. D2007-0267).
6.14 Essentially, therefore, this aspect of the case turns upon whether the Domain Name was registered with the Complainant’s business in mind in the hope and expectation that the similarity between the Domain Name and that business would result in Internet users coming to the relevant domain name parking page. As is described under the “good faith” heading below, the Panel believes on balance that this is indeed the case. In the circumstances, the Panel concludes that the Respondent has no right or legitimate interest in the Domain Name and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.15 The key factor in this case is whether the Respondent was aware of the Complainant’s business at the time that it registered the Domain Name. Obviously, the more well known the Complainant’s business under the “Greenbrier” name the more likely it is that the Respondent was aware of it. Unfortunately, the Complainant has made matters very difficult for the Panel in this respect. Whilst the Complainant has detailed at some length the trade mark rights that is has in the United States there is virtually no description of the extent of the Complainant’s activities nor the degree of fame and reputation that exists in the term “The Greenbrier” as a result.
6.16 There are a number of assertions in the Complaint and the material appended to it that suggest that the term “The Greenbrier” has some degree of fame. In particular:
(i) there is the assertion that the Complainant has used “The Greenbrier” name in the United States and, presumably, this has been used at least since the date upon which the first of the trade marks relied upon was registered (i.e. 1988);
(ii) the Complainant at one stage refers to “well-known and distinctive trademarks” in abstract and the suggestion appears to be that the Complainant’s marks are of this type; and
(iii) there are the assertions to be found in each of the Complainant’s lawyer’s letters before action that “The Greenbrier has devoted considerable resources to promoting the Mark and, as a result, has developed substantial goodwill in connection with the Mark”.
6.17 However, the Complainant does not back up any of these assertions with further detail, explanation or evidence.
6.18 Nevertheless, the Panel is prepared to accept in this case that the Complainant has just about made out a prima facie case that the Respondent registered the Domain Name with the Complainant’s business in mind. The reasons for this are as follows:
(i) In the absence of any evidence to the contrary, the Domain Name can only sensibly be interpreted either as the single word “Greenbriar” or as the two words “Green” and “Briar” placed in conjunction with the word “Hotel”. When used altogether these words do not have any generic meaning. Instead, the Domain Name implicitly or inherently seems to refer to a business that either carries on under the names “Greenbriar Hotel”, “Green Briar Hotel” or something similar. It is, therefore, highly likely that when the registrant chose the Domain Name he had a specific business in mind.
(ii) As far as the Panel is aware, neither “Greenbriar Hotel” nor “Green Briar Hotel” is a common, obvious or famous name for a hotel. Indeed, “Greenbriar” does not appear to be an ordinary English word at all. Therefore, on its face and in the absence of any evidence to the contrary, the Domain Name does appear to involve a misspelling of the name used for the Complainant’s hotel.
(iii) It is clear from the Complaint that the Complainant contends that the Respondent was aware of the Complainant’s use of the name at the time of registration. This assertion although put to the Respondent, is not denied.
6.19 Therefore, whilst the evidence brought forward by the Complaint is limited and at times little more than assertion, the Panel nevertheless concludes that on balance (and in the absence of contentions from the Respondent to the contrary) that the Respondent chose the Domain Name with the Complainant’s business in mind. This was done with the intention of capitalising upon the Complainant’s reputation in the “The Greenbrier Hotel” name in the hope and expectation that Internet users searching for information related to the Complainant would instead reach the Respondent’s site.
6.20 Such registration and use is in bad faith. In particular it falls within the scope of paragraph 4(b)(iv) of the Policy which states that the following shall be evidence of bad faith registration and use:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
6.21 There is another factor in this case that points to a finding of bad faith. That is the fact that the Respondent seems to have gone to some length to disguise the identity of the person or persons that is behind the “Digi Real Estate” business. First, the Registrant appears to take the form of a Panamanian Foundation and operates out of a PO Box in Panama City. Second, there is the fact that subsequent to the Complaint the Respondent attempted to hide even these limited details behind a “privacy” service offered by Moniker Online Services Inc.
6.22 The Panel therefore finds that the Complainant has met the requirement of Paragraph 4(a)(iii) and that the domain name “has been registered and is being used in bad faith” by the Respondent.
6.23 In coming to its above conclusions, the Panel has not needed to take into account the fact that after the complaint was filed (and as described above under the heading “factual background”) the website operating from the Domain Name started to include links more directly linked to the Complainant. This new use on its face does appear to provide an even clearer example of bad faith use of the Domain Name. Of course, it does not necessarily follow from the fact that the Domain Name is now being used in bad faith, that it was registered in bad faith. Also had the Panel considered it necessary to rely upon this recent use to come to a conclusion on the issue of bad faith registration, it is likely that it would have first given the parties an opportunity to comment on the same. However, these recent actions on the part of the Respondent do provide the Panel with some comfort that its conclusions as to bad faith registration are correct.
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 <greenbriarhotel.com> be transferred to the Complainant.
Matthew S. Harris
Date: September 26, 2007