WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Party and Reception Center, Inc. v. Contact Privacy Inc. Customer 1242202517 / Tony Tarius, Tarius Media LLC
Case No. D2018-2940
1. The Parties
The Complainant is Party and Reception Center, Inc. of Pasadena, Texas, United States of America (“United States”), internally represented.
The Respondent is Contact Privacy Inc. Customer 1242202517 of Toronto, Canada / Tony Tarius, Tarius Media LLC of Pasadena, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <sylvanbeachpavilion.com> (the “Domain Name”) is registered with Google Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2018. On December 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 28, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 18, 2019. 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 Complaint was filed in the name of “Party and Reception Center, Inc.”, with a postal address in Pasadena, Texas, United States. The Complainant is not listed under exactly these details in the online database of taxable entities maintained by the Texas Comptroller of Public Accounts, but it is presumably the same entity named “Party & Reception Center, Inc.” with an address in Houston, Texas, showing Mr. Shafaii as the registered agent, president, and director. Mr. Shafaii filed the Complaint in this proceeding. According to the Complaint and attachments, the Complainant is a family-owned business that provides banquet, catering, and party services in the Houston, Texas area. It appears from the Complaint that the Complainant is associated with or uses the trade name “Shafaii Party & Reception Center”, which operates a website at “www.shafaii.com” (the “Complainant’s website”).
The Complainant obtained a contract in 2013 from the government of Harris County, Texas, to operate a historic landmark, the Sylvan Beach Pavilion in La Porte (near Houston), as an events center for private parties and receptions. The Complainant claims common law rights in SYLVAN BEACH PAVILION as an unregistered trademark. The Complaint cites the history of earlier Sylvan Beach Pavilions since the 1890s and the fame of the current octagonal pavilion constructed in 1953, restored in 2013, and placed on the registry of historical sites. The Complainant has been operating the center since October 2013, and the record includes evidence of social media, print, email, and direct mail advertising, and sales through December 2018 exceeding USD 5.6 million, media recognition in local newspapers, and a 2016 award from the United States Small Business Administration. The Complainant advertises services at the Sylvan Beach Pavilion on a Facebook page and on the Complainant’s website, the latter with a distinctive design logo featuring those words.
According to the Registrar, the Domain Name was created on January 23, 2012. It was registered in the name of a domain privacy service, which has expressed no interest in the Domain Name, but after notice of this dispute the Registrar identified the current registrant as the Respondent Mr. Tarius of Pasadena, Texas, United States, and his organization as the Respondent “Tarius Media LLC”.
The online database of the Texas Comptroller of Public Accounts lists “Tarius Media, LLC” as a Texas limited liability company at the same postal address given by the Registrar. The Comptroller’s database shows that the company’s right to transact business in Texas has been “involuntarily ended”, subject to reinstatement with tax clearance. Mr. Tarius is listed in that database as the registered agent, owner, founder, and director of Tarius Media, LLC. The company does not appear to have a website, but its LinkedIn social media page describes the company’s business as “marketing and advertising” and lists two employees, one of them being Mr. Tarius. As Tarius Media, LLC appears to be controlled by Mr. Tarius and may not be an active legal entity at present, Mr. Tarius and Tarius Media, LLC will be referred to hereafter collectively as “the Respondent”.
The Complaint and attachments explain the relationship between the Complainant and the Respondent. The Complaint attaches court papers from a lawsuit filed by the Complainant in 2017, Party & Reception Center, Inc. v. Tony Tarius and Tarius Media, LLC, Cause No. D2017-08712 (District Court of Harris County, Texas). In that judicial proceeding, the Complainant sought damages and an injunction ordering the transfer of the Domain Name and a similar domain name not at issue in this UDRP proceeding, <sylvan-beach-pavilion.com>, under the United States Anticybersquatting Consumer Protection Act (“ACPA”), the Texas Deceptive Trade Practices Act, and common law trademark infringement.
According to Mr. Shafaii’s Affidavit in the judicial proceeding, the Complainant entered into an oral agreement with the Respondent in January 2014 to “redesign and host” the Complainant’s website at “www.mysylvanbeachpavilion.com” and to redesign the Complainant’s logo and business cards. Thereafter, according to the affidavit, the Respondent acquired the domain name <sylvan-beach-pavilion.com> in January 2014 and the Domain Name in February 2014. The Complaint asserts that the Domain Name was acquired on behalf of the Complainant, although the Affidavit of Mr. Shaffai emphasizes that the Respondent did not inform the Complainant of these domain name acquisitions at the time. Mr. Shaffai’s Affidavit states that the Respondent in January 2015 advised the Complainant to transfer the contents of the Complainant’s website advertising the Sylvan Beach Pavilion from <mysylvanbeachpavilion.com> to the Domain Name, without disclosing that the Respondent registered the Domain Name on its own behalf. The Complainant agreed to make the transition, and screenshots from the Internet Archive’s Wayback Machine show that the Complainant used the Domain Name for the website advertising the Complainant’s business at the Sylvan Beach Pavilion in 2015 and 2016. The Complaint attaches evidence that the Complainant also used the Domain Name for its email addresses in that period. The record includes copies of invoices from the Respondent to the Complainant charging for “website hosting” and “website management” in 2015 and 2016.
In November 2016, when the Complainant was considering a change in web hosting vendors, the Complainant learned that the Respondent had registered the Domain Name and the domain name <sylvan‑beach-pavilion.com> in the name of a domain privacy service rather than in the Complainant’s name, and that the Respondent exclusively controlled both domain names. The Respondent then offered to sell both domain names to the Complainant for USD 7653.33, although the Respondent had paid less than USD 50 for the two domain names in early 2014. When the Complainant refused to purchase the two domain names, the Respondent shut down the Complainant’s website associated with the Domain Name.
The Complainant moved for summary judgment in the judicial proceeding to establish infringement of SYLVAN BEACH PAVILION as a common law trademark, violation of the ACPA, and deceptive trade practices. The Respondent submitted no response, and the Court granted summary judgment on August 16, 2018, ordering the transfer of the Domain Name and the domain name <sylvan-beach-pavilion.com> to the Complainant, granting the Complainant statutory damages and court costs, and otherwise dismissing the lawsuit. Thus, the Complainant obtained the same relief in the judicial proceeding that is sought here with respect to the Domain Name, in addition to monetary damages. The Policy is clear (paragraphs 4(k) and 5) that it is not mutually exclusive of other judicial or administrative remedies available to the parties. Therefore, the Panel will proceed to a decision on the merits of this UDRP Complaint.1
At the time of this Decision, the Domain Name does not resolve to an active website. The Panel notes, however, that the Wayback Machine includes several archived screenshots from 2017 and 2018, showing that the Domain Name formerly redirected Internet users to “www.sylvanbeachny.com”, the website of an events center at Sylvan-Verona Beach, New York, United States, which similarly hosts weddings and other private events.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its unregistered SYLVAN BEACH PAVILION mark, which the Respondent had no permission to use for a Domain Name and in which it otherwise has no rights or legitimate interests.
The Complainant argues that the Respondent was engaged to work on behalf of the Complainant and registered the Domain Name covertly and in bad faith, persuading the Complainant to use the Domain Name and then holding it hostage in an effort to sell it to the Complainant for an amount far in excess of out-of-pocket costs.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See, WIPO Overview 3.0, section 1.7.
The Policy does not require a registered mark, but “[t]o establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.” WIPO Overview 3.0, section 1.3. The Complaint includes substantial evidence that the name SYLVAN BEACH PAVILION has acquired distinctiveness as a service mark relating to events center services in the Houston area and that the Complainant has provided catering and event services under that mark since contracting with a government authority to operate the Sylvan Beach Pavilion in 2013. The Complainant’s claims to a common law mark are supported by relevant items in the record relating to the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, and the degree of actual public recognition. See id. The court reached the same conclusion in the judicial proceeding last year, granting summary judgment to the Complainant in the lawsuit that it filed in its own name on the grounds of ACPA violations and common law trademark infringement.
The Domain Name is comprised of the same words, in the same order, as the common law mark, without the spaces between words that cannot appear in DNS addresses. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant’s common law mark for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, a lack of permissive use, and the failure to use the Domain Name other than for the Complainant’s own website. This shifts the burden to the Respondent.
The Respondent has not come forward to assert any rights or legitimate interest in the Domain Name, and none are evident from a perusal of the record or the websites associated with the Domain Name. There is no evidence that the Complainant instructed the Respondent to register the Domain Name in its own name, and the Complainant denies doing so. Nor does it appear that the Respondent has ever used the Domain Name for its own business or for a relevant, generic purpose. Rather, it appears that the Respondent persuaded the Complainant to use the Domain Name under a false impression that the Respondent had acquired it on the Complainant’s behalf and then tried to sell it to the Complainant, after which the Respondent redirected the Domain Name to the website of a third-party events center in another state with a similar name. None of this activity can be viewed as a legitimate use in connection with the Respondent’s bona fide offering of goods and services.
The Panel concludes that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 …
(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.”
As in the judicial proceeding that resulted in summary judgment in August 2018, the Respondent has not come forward to rebut the Complainant’s account of the events surrounding the Respondent’s acquisition of the Domain Name, persuading the Complainant to switch its website to the Domain Name under the impression that it was registered on the Complainant’s behalf, and then trying to sell it to the Complainant for an extortionate price on threat of shutting down the Complainant’s website. This sequence of events fits the example of bad faith in the Policy, paragraph 4(b)(i). The Respondent carried out its threat and subsequently redirected the Domain Name to another commercial website, which fits the pattern of the Policy, paragraph 4(b(iv). There can be no question that the Respondent was well aware of the Complainant and its mark; the Respondent had been paid to redesign the Complainant’s website, logo, and business cards, as well as to host and manage its website.
The Panel finds on this record that the Respondent registered and used the Domain Name in bad faith within the meaning of the Policy and concludes that the third element of the Complaint has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sylvanbeachpavilion.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: March 4, 2019
1 A decision favorable to a complainant in a UDRP proceeding results in an order directed to the registrar to transfer or cancel a disputed domain name, regardless of whether the respondent can be found or compelled to take action through further proceedings, which is one reason a UDRP complaint may follow or parallel a judicial or other administrative proceeding. In this regard, see also section 4.12, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).