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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pebble Beach Company v. Buy This Domain

Case No. D2002-0150

 

1. The Parties

The Complainant is Pebble Beach Company (a California General Partnership), with its principal place of business at 4005 Sunridge Road, Pebble Beach, California 93953, United States of America, represented by its in-house Counsel.

The Respondent is Buy This Domain, Web Master, 5 Tpagrichnery St. # 33, Yerevan, Yerevan 375010, Armenia.

 

2. The Domain Name and Registrar

The domain name at issue is <pebble-beach-concours.com>.

The Registrar is Address Creation, at 53 Barcelona Avenue, Irvine, CA 92614, United States of America.

 

3. Procedural History

The Complaint was received by email on February 14, 2002, and in hard copy on February 18, 2002, by the WIPO Arbitration and Mediation Center ("the Center"). In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules for UDRP in effect as of December 1, 1999, ("the Supplemental Rules"), the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999, ("the Policy"), the Rules and the Supplemental Rules. The Complaint was submitted in English and the proceedings have been conducted in English. The Complainant has paid the specified fee to the Center.

The Center transmitted the requisite Registrar Verification request to Address Creation on February 25, 2002, and received an email response from Address Creation on March 5, 2002, which revealed that the Respondent had purported to transfer the domain name to another party (in breach of its Registration Agreement), after the date of filing of the Complaint. Following action by the Registrar to remedy the breach, the Center was notified of the correction on March 21, 2002 and was able to confirm that the domain name at issue was then shown as registered with Address Creation, and that the Respondent, Buy This Domain, was the current owner/registrant of the domain name <pebble-beach-concours.com> at the date of the Complaint.

Proceedings in this case were formally commenced on March 21, 2002, when the Center sent a copy of the Complaint to the Respondent by courier to the postal address recorded in the Administrative Contact details for the domain name at issue and by email to the recorded Administrative Contact email address <offer@NameRegister.com>. From the FedEx tracking records, it appears that the postal address was incorrect, and the courier package was therefore ultimately undelivered. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than April 10, 2002, to be sure of being considered in these proceedings. No Response was received by the specified deadline. Consequently, on April 12, 2002, the Center issued a Notification of Respondent Default, which was duly transmitted to the Respondent and to the Complainant's representative by email.

On April 23, 2002, the Center appointed Mr. Keith Gymer to serve as single Panelist in these proceedings having duly received his Statement of Acceptance and Declaration of Impartiality and Independence. Email notifications of this appointment were sent to the Respondent and sent to the Complainant's representative on the same day.

 

4. Factual Background

According to the earliest WHOIS records provided in evidence, when the Complainant first became aware of the domain name <pebble-beach-concours.com> and checked on August 7, 2001, the domain name was in fact recorded as initially registered to "Buy This Domain" on the June 30, 2001, through the registrar IARegistry.com. The Administrative contact details at that time were for a contact address in Tbilisi, Georgia. The domain servers were ns1.neex.net and ns2.neex.net. The URL <www.pebble-beach-concours.com> then resolved to a web page with a clickable link (and automatic mouse-trapped links) to English language pornographic websites, including <www.sexadnet.com> and <www.adultmovienetwork.com>. The page also included a link marked "Click Here to Buy This Domain", which resolved to a page entitled "Make an Offer/Request a Quote Form" at <offers.nameregister.com>, which included the statement "Any Offer Below $550.00 USD Will Be Ignored!".

The Complainant immediately sent a complaint dated August 13, 2001, to the then current contact address, following which the web page at <www.pebble-beach-concours.com> became temporarily unavailable. The Complainant then sent an email dated September 3, 2001, to the then email administrative contact address <admin@segod.com>.

Thereafter, around November, 2001, the home page again became active, with links to a Euro Teen Sluts pornography site and, again, a link marked "Click Here to Buy This Domain", which resolved to a page entitled "Make an Offer/Request a Quote Form". However, a WHOIS check at that time showed that, although still in the name of "Buy This Domain", the domain name had been transferred in the interim, apparently on October 6, 2001, to a new Registrar, Address Creations, and the contact details for the Registrant (the present Respondent) were changed to the present Armenian address. The email administrative address had then become <offer@NameRegister.com>. The domain servers remained <ns1.neex.net> and <ns2.neex.net>.

On November 23, 2001, the Complainant received a response to its email of September 3, 2001, from the originally named administrative contact now using the email address <offerz@NameRegister.com> asking for US$550 to transfer the domain name.

Thereafter, the home page at <www.pebble-beach-concours.com> resolved to apparent search links to Hobbies, Travel, Entertainment and other sites and, at the time of the Complaint, to an online "Windows Casino" site.

After the filing of the Complaint, as noted in the Procedural History above, the Respondent attempted to do a cyber-runner by purporting to transfer the domain name to another party. A contact from that party, <DomainResearch.org>, on March 20, 2002 purported to offer to transfer the domain name to the Complainant "for free" if the Complaint were to be withdrawn. The Complainant chose not to rely on that offer but to have the Complaint decided on the merits.

As evidenced in a sworn Declaration by its Director of Licensing and Special Projects, the Pebble Beach mark has been in use since at least as early as 1919, (long before Respondents registered the Domain Name), initially in connection with the Pebble Beach golf events and subsequently Pebble Beach resorts, Pebble Beach road races and the famous Pebble Beach Concours d'Elegance and various associated products and services.

The Complainant claims to own numerous U.S. and foreign trademark registrations for the Pebble Beach mark, including registrations in Argentina, Australia, Austria, Benelux, Brazil, Canada, Chile, China, Denmark, the European Union (CTM), Finland, France, Germany, Greece, Hong Kong, Indonesia, Ireland, Israel, Italy, Japan, Malaysia, New Zealand, Portugal, Singapore, South Africa, South Korea, Spain, Sweden, Switzerland, Taiwan, Thailand, the United Kingdom, Venezuela, and Vietnam, together with numerous pending trademark applications for the Pebble Beach mark in China, Hong Kong, India, Malaysia, Mexico, and the United States. A chart listing the serial number for each U.S. and foreign registration and filing number for each pending U.S. foreign application was included in the Complaint.

The Complainant owns a federal registration for the Pebble Beach Concours d'Elegance mark, U.S. Registration No. 2,426,604 issued February 6, 2001, a copy of which was also included in the Complaint. The Panelist has verified that this registration is in-force and registered for "entertainment services in the nature of an automobile show and exhibit".

The Complainant operates its primary Web site at the domain address <www.pebblebeach.com>. It also has a site specifically relating to the Pebble Beach Concours at <www.pebblebeachconcours.net>. This site is also linked from <www.pebblebeachconcours.com> and <www.pebblebeachconcours.org> - sites owned and operated by the Complainant.

Otherwise, the Complainant made a number of further contentions in the Complaint. These are summarized or paraphrased below.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

-It has devoted substantial resources to advertise and promote its services and products under the Pebble Beach mark, and the mark embodies the substantial goodwill that it has earned as a result of providing high quality services and products. In addition to its own advertising efforts, the Complainant has been the subject of thousands of unsolicited articles in the media, including national and international print, radio and television.

-It has acquired broad common law rights in the Pebble Beach mark and has wide recognition and reputation in numerous countries around the world.

-The Pebble Beach Concours d'Elegance enjoys a widespread reputation in the marketplace as a premier-quality automotive exhibition. The Complainant has advertised and promoted the Pebble Beach Concours d'Elegance widely, including on the internet. As a result, the PBC name mark embodies substantial and valuable goodwill.

-As evidenced in the accompanying Declaration, the Pebble Beach Concours d'Elegance mark is famous: The Complainant coined and has been using the mark since at least as early as 1952 (long before Respondents registered the Domain Name), in connection with its automotive exhibition. The Complainant has devoted substantial resources to advertise and promote its services under the Pebble Beach Concours d'Elegance mark, and the mark embodies the substantial goodwill that PBC has earned as a result of providing the premier automotive exhibition in the United States. In addition to its own advertising efforts, the Pebble Beach Concours d'Elegance has been the subject of many unsolicited articles in the media, including national and international print, radio and television and on the internet. Consequently, the Complainant claims broad common law rights in the Pebble Beach Concours d'Elegance and the Pebble Beach Concours marks.

-The Respondent's pebble-beach-concours.com site has at various times: i) served as a portal to several explicit pornographic sites; ii) served as the home page for a site titled "Euro Teen Sluts" (also explicit pornographic material); and iii) served as a search page for businesses offering goods or services in direct competition with the Complainant. The Respondent's Web site currently offers gambling services and internet history file-cleaning programs.

-The Domain Name <pebble-beach-concours.com> is confusingly similar to the Complainant's PEBBLE BEACH, PEBBLE BEACH CONCOURS, and PEBBLE BEACH CONCOURS D’ELEGANCE trademarks.

-Because the Domain Name incorporates the Pebble Beach and Pebble Beach Concours marks and the majority of the Pebble Beach Concours d'Elegance mark, an Internet user or consumer viewing a Web site located at the Domain Name address would be likely to assume that the Web sites and/or operators are somehow sponsored by, or affiliated with the Complainant, when they are not.

-By adopting a Domain Name that incorporates the Complainant's marks, the Respondent is attempting to capitalize on the Complainant's name. The Respondent is clearly hoping to mislead consumers to believe that the Domain Name is affiliated with the Complainant to attract Internet users to the Web site for the Respondent's commercial gain.

-The Respondent’s use of hyphens between the words of the Pebble Beach Concours mark does not decrease the confusing similarity between the mark and the Domain Name.

-The likelihood of confusion is even greater here because Respondent is on occasion offering competitive services at its Web site, namely, travel, hotel, and automobile related services. Consumers are more likely to be confused when a Respondent registers a domain name similar to a Complainant’s mark and uses it in the same line of business as the Complainant. Complainant's customers seeking services will recognize the Pebble Beach Concours mark in the Respondent's Domain Name and assume that the Domain Name is somehow sponsored by or affiliated with the Complainant.

-The Respondent has no legitimate rights or interests in the Domain Name. The Respondent has not been commonly known by the Domain Name. The Respondent does not use Pebble Beach Concours as the title of its site, nor as the name of its business, nor even in any textual presentation on the Respondent’s web site. The Respondent does not use a name or trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

-That the Respondent does not have a legitimate interest in the Domain Name is exhibited by the lack of a logical relationship between the Domain Name and the nature of Respondent's business. The Respondent had no plausible reason to use pebble-beach-concours as the Domain Name other than to be associated with and capitalize on the goodwill of the Complainant.

-Pebble Beach, Pebble Beach Concours d’Elegance, and Pebble Beach Concours marks are famous and have received substantial publicity. Moreover, a simple web search on or before the date when Respondent registered the Domain Name would have revealed the Complainant's presence. The Respondent had at least constructive notice of the Complainant's mark, as a trademark search on the date of the registration of the Domain Name would have revealed the Complainant's registration of the Pebble Beach and Pebble Beach Concours d’Elegance marks in the United States and other countries.

-The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, but instead is misleadingly diverting consumers for the Respondent’s commercial gain. The Respondent is not affiliated with the Complainant and has not received any permission or consent to use the Complainant's trademarks.

-Based upon the above facts and administrative decisions, the Panel should find that the Respondent has no legitimate rights or interests in the Domain Name.

-The Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name.

-The name of the Respondent is given in the Whois record as "Buy This Domain," and the e-mail address for contact is given as <offer@nameregister.com>. During at least August and November 2001, the web site <www.pebble-beach-concours.com> included an invitation to make an offer to purchase the Domain Name. The offer submission pages clearly indicated that an offer below $550 USD would be ignored. When contacted directly by the Complainant’s representative, the Respondent affirmed that it would sell the name for no less than $550, and was unwilling to substantiate that its out of pocket costs were equal to that amount.

-By linking the <pebble-beach-concours.com> domain name to alternatively pornographic, gambling, or competing web sites, the Respondent contrives that the Pebble Beach mark, and thus the Complainant, will be associated with pornography and gambling, associations which are highly detrimental to the Complainant's reputation and goodwill. To preserve its reputation and goodwill, the Complainant is forced to choose between offering to purchase the Domain Name or bringing an administrative action.

-The Respondent appears to have a documented history of registering domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the holders of prior rights in the name, for valuable consideration in excess of Respondent’s documented directly related out-of-pocket costs. Parties with the identical name and/or contact information have been the subject of several UDRP complaints: e.g.

- Mr. Mika Häkkinen v. "For SALE", WIPO Case No. D2001-1306;

- Singapore Telecommunications Limited v. Domain for SALE – http://offers.NameRegister.com, WIPO Case No. D2001-1059;

- George R. Rafael v. Buy This Domain, WIPO Case No. D2001-0853;

- IDT Corporation v. SEGOD, CPR File No. CPR 0110;

- Shriners Hospitals for Children v. Web Master (awg), NAF Claim No. FA109000100127.

-The Respondent registered the Domain Name for the purpose of disrupting the Complainant's business. Respondent has acted in bad faith by registering and using a Domain Name that incorporates the Complainant's trademark to offer competing services. The Respondent registered the Domain Name in bad faith, knowing that including the Complainant's mark in the Domain Name would allow it to divert visitors to its own site. As a result, an Internet user viewing the Web site would assume that the Web sites and/or Domain Name was somehow sponsored by or affiliated with the Complainant. No plausible explanation exists as to why the Respondent selected the Domain Name other than to trade on the good will of the Complainant.

-The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site by creating a likelihood of confusion with the Complainant's Pebble Beach mark as to the source, sponsorship, affiliation, or endorsement of its Web site and its Web site’s products and services. The Respondent has used the Pebble Beach trademark as part of the Domain Name to offer searches for competing hotel and travel services; to attract consumers to subscription pornographic sites; and to redirect consumers to an affiliated gambling site. The Respondent likely receives a commission on each person whom it directs to such sites.

-Based on circumstances surrounding the Respondent’s registration and continued use of the Domain Name, the Panel should find that the Domain Name was registered and is being used in bad faith.

The Complainant requests that the domain name <pebble-beach-concours.com> be transferred to the Complainant.

B. Respondent

No Response to the Complaint was received from the Respondent.

 

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i)the contested 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.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.

(i) Similarity and existence of rights in the specified trademark

In the present case, the Complainant claims, and the Panelist has been able to verify to his satisfaction, that the Complainant owns registered trade mark rights in the marks PEBBLE BEACH and PEBBLE BEACH CONCOURS D'ELEGANCE and that such rights predate the registration by the Respondent of the domain name at issue. The Respondent made no submissions and did not make any challenge to the validity of the Complainant's rights.

The domain name at issue is <pebble-beach-concours.com>, which is not identical to either registered mark.

The Complainant also submitted convincing evidence of its claims to common law rights in the marks and, in the Panelist's view, these include rights in respect of PEBBLE BEACH CONCOURS. It is commonplace for classic car enthusiasts to abbreviate CONCOURS D'ELEGANCE to CONCOURS, just as the Complainant has itself done for its own legitimate web-sites. The hyphenation of the corresponding words in the Domain Name is of no distinguishing value, but is a technical necessity (and therefore commonplace) for spacing words in a domain name because a normal space is not a valid domain name character.

The Panelist therefore accepts that the contested domain name is identical and/or confusingly similar to a mark in which the Complainant has rights and that the Complainant has fulfilled the requirements of Paragraph 4(a)(i) of the Policy.

(ii) Legitimate rights

In view of the established world-wide reputation of the PEBBLE BEACH and PEBBLE BEACH CONCOURS [D'ELEGANCE] marks; the fact that the Complainant has a verified claim to trade mark rights in the mark; as the Respondent has not challenged the Complainant's claims, and in the absence of any evidence whatever to support a possible assertion to legitimacy on behalf of the Respondent, the Panelist accepts the Complainant's submissions (as summarized at 5 above) that the Respondent has no legitimate rights of its own in the Domain Name at issue.

Consequently, the Panelist concludes that the Respondent has no rights or legitimate interest in the domain names, so that the requirements of Paragraph 4(a)(ii) of the Policy are met.

(iii) Bad Faith

The Complainant's evidence convincingly exposes the systematic bad-faith conduct of the Respondent. It appears that there are a number of people behind the Respondent, "Buy This Domain", who operate a ring of web-sites under numerous domain names, often, as in the present case, misappropriating well-known trade marks to which they have no entitlement whatsoever. The domain names are registered with various different contact addresses and on receiving a complaint the contacted party will then get the domain transferred to an associate at a different address to try to evade attempts to apply the UDRP, as was done initially and as was then tried again a second time, (after the Complaint was filed) in the present case. The evidence from previous UDRP cases cited by the Complainant and involving parties with the same name and/or identical contact details also supports the view that the Respondent, alone or in concert with others, has engaged in a pattern of abusive registrations.

The onward links to pornographic sites and repeated mouse-trapping are characteristic abuses of web-site operators who attempt to gain income from "click through" visits. It is highly probable that unsuspecting visitors to <www.pebble-beach-concours.com> (expecting to access a legitimate site relating to the genuine Pebble Beach Concours) would have inadvertently contributed to the Respondent's income that way.

The Respondent has plainly sought to misappropriate the Complainant's rights and goodwill by registering the Domain Name knowing there could be no legitimate reason whatever for doing so. The use it has made of the Domain Name will also potentially have tarnished the reputation of the Complainant.

The Domain Name has also been openly offered for sale from the start at a substantial premium (at least a10x-20x markup) over any likely genuine registration costs.

Consequently, the Panelist considers that the Respondent's conduct indisputably falls in the category of "bad-faith" registration and use of the domain name for the purposes of the Policy and concludes that the requirement of Paragraph 4(a)(iii) of the Policy is satisfied.

 

7. Decision

For the reasons given in Section 6 above, the Panelist orders that the domain name <pebble-beach-concours.com> is to be transferred to the Complainant.

 


 

Keith F.Gymer
Sole Panelist

Dated: May 2, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0150.html

 

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