Westmore · UDRP DecisionThegreenbrierresort.com
The Panel ordered transfer of <thegreenbrierresort.com>. It found the domain confusingly similar to the Complainant's THE GREENBRIER and GREENBRIER marks because it incorporated those marks with the descriptive term “resort.” The Respondent lacked rights or legitimate interests because the domain had been used for a pay-per-click website and there was no evidence that the Respondent was commonly known by the domain. Bad faith was established by the Respondent's presumed awareness of the well-known resort, prior PPC use, subsequent passive holding, failure to answer cease-and-desist communications, and its record in other UDRP proceedings.
The timeline behind thegreenbrierresort.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The decision illustrates a recurring UDRP pattern in which a domain reproduces a trademark and adds a term that directly describes the complainant's business. The combination of a business-descriptive term, prior PPC monetization, later passive holding, and a lack of substantive rebuttal supported findings on all three elements. It also shows that a collateral receivership issue will not necessarily prevent a panel from reaching the merits when the record supports proceeding.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Greenbrier IA, Inc. v. Quantec, LLC/Novo Point, LLC / Damon Nelson Case No. D2014-0354 1. The Parties Complainant is Greenbrier IA, Inc. of White Sulphur Springs, West Virginia, United States of America, represented by McGuireWoods LLP, United States of America. Respondent is Quantec, LLC/Novo Point, LLC / Damon Nelson of Dallas, Texas, United States of America. 2. The Domain Name and Registrar The disputed domain name <thegreenbrierresort.com> is registered with Fabulous.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2014. On March 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2014. Respondent did not submit any formal response. On April 11, 2014, Respondent sent an email communication to the Center. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on May 13, 2014. The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on May 15, 2014. 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 Complainant operates the award-winning The Greenbrier Resort, which is located in White Sulphur Springs, West Virginia, United States. The resort has hosted distinguished guests from around the world since 1778. Complainant owns a large number of U.S. trademark registrations for THE GREENBRIER and GREENBRIER, as used on or in connection with a variety of goods and services, including resort hotel and restaurant services, clothing items, and health spa and mineral bath services. According to Complainant, Respondent is in the business of monetizing Internet domains, at least partially through cybersquatting. Complainant notes that Respondent has been involved in seven UDRP proceedings, all but one of which was resolved against Respondent. 1 Complainant further points out that Respondent is currently involved in a long-running civil action related to its domain name portfolio in which it has been alleged that the disputed domain name is a receivership asset that could not be transferred during the pendency of the civil action. 2 5. Parties’ Contentions A. Complainant Focusing on the elements that must be established in order to prevail under the applicable Policy, Complainant contends that the disputed domain name, <thegreenbrierresort.com>, is confusingly similar to its THE GREENBRIER and GREENBRIER marks. Complainant points out that the disputed domain name incorporates the term THE GREENBRIER and adds only the generic word “resort,” which refers to Complainant’s primary business, and the generic Top-Level Domain “.com.” Complainant further alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent does not own any trademark registrations for marks containing “Greenbrier,” there is no evidence that the disputed domain name is connected to the Respondent or is commonly used by the Respondent, and Respondent is not affiliated with Complainant, nor does it have the permission, consent or license of Complainant to register or use the disputed domain name in dispute. Complainant indicates that Respondent has used Complainant’s trademark to divert Internet users to an alternate website and, thus, Respondent is not using the disputed domain name for a bona fide offering of goods or services or for a fair or legitimate noncommercial use. 3 On information and belief, Complainant contends that the disputed domain name was registered and is being used in bad faith. In support of such contention, Complainant maintains that Respondent’s registration and use of a domain name that incorporates a well-known and distinctive trademark, such as THE GREENBRIER, is itself indicative of bad faith. Complainant asserts that Respondent is merely using the disputed domain name to attract third parties to its website and, thus, is “illegitimately capitalizing on Complainant’s THE GREENBRIER and GREENBRIER marks. This strongly demonstrates Respondent’s bad faith in the registration and use of the disputed domain name.” In further support of a finding of bad faith registration and use, Complainant refers to the numerous adverse UDRP decisions involving Respondent and that Complainant corresponded with Respondent at least eight times notifying Respondent that the registration of the disputed domain name was not authorized by Complainant and demanding that Respondent “cease and desist.” Respondent, apparently, did not respond to any of the communications. B. Respondent Respondent did not formally reply to the Complainant’s contentions. However, Respondent did correspond with the Center by email on April 11, 2014, alleging that it “no longer represent[s] the portfolio [of domain names that includes the disputed domain name].” 6. Discussion and Findings A. Identical or Confusingly Similar The Panel rules that the disputed domain name, <thegreenbrierresort.com>, is confusingly similar to THE GREENBRIER and GREENBRIER marks. As noted by Complainant, the disputed domain name incorporates in full the marks THE GREENBRIER and GREENBRIER adding only descriptive (“resort”) and generic (“.com”) matter. These changes are insufficient to distinguish the disputed domain name from the marks. See Crocs Inc. v. Alex Xie , WIPO Case No. D2011-1500 (finding that the addition of the descriptive term “outlet” to complainant’s trademark was insufficient to distinguish the domain name or to negate the confusing similarity between complainant’s mark and the respondent’s domain name). The evidence further establishes that Complainant has rights in THE GREENBRIER and GREENBRIER marks. Such evidence includes Complainant’s ownership of U.S. trademark registrations for the marks, as well as its longstanding use of such marks. B. Rights or Legitimate Interests The Panel concludes that Complainant has satisfied its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts, and evidence establishes, that Respondent has used Complainant’s marks to divert Internet users to an alternate website. Such site appears to feature PPC links. As such, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a fair or legitimate noncommercial use. There also is no evidence that Respondent is commonly known by the disputed domain name. Thus, none of the circumstances set forth in paragraph 4(c) of the Policy is applicable. C. Registered and Used in Bad Faith The Panel finds that the disputed domain name, <thegreenbrierresort.com>, was registered and is being used in bad faith. The evidence indicates that Complainant’s resort is one of the finest luxury resorts in the world. It is thus inconceivable that Respondent was not aware of such resort when it registered the disputed domain name. The disputed domain name resolved, at some point in the past, to a website that features PPC links. These facts support a finding of the requisite bad faith. See Benetton Group S.p.A. v. Azva Khan , WIPO Case No. D2002-0810 ; Alstom v. Yulei , WIPO Case No. D2007-0424 (finding bad faith where the respondent registered and used a domain name that was confusingly similar to complainant’s distinctive trademarks with an intent “to ride on the goodwill of the [c]omplainant’s trademarks in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant.”). The disputed domain name appears currently to be passively held. The passive holding of a domain name does not prevent a finding of bad faith “use”; indeed, the cases are legion where passive holding has been found to support a finding of the requisite bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 ; Intel Corporation v. The Pentium Group , WIPO Case No. D2009-0273 . Such passive holding, coupled with the previous use of the domain name in connection with a PPC site, supports a determination that the disputed domain name was registered and is being used in bad faith. The failure of Respondent to respond to Complainant’s numerous “cease and desist” letters, as well as Respondent’s track record in connection with other UDRP proceedings, further support a finding of bad faith registration and use. See Tom Cruise v. Network Operations Center/Alberta Hot Rods , WIPO Case No. D2006-0560 ; Volvo Trademark Holding AB v. Unasi Inc ., WIPO Case No. D2005-0556 . 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <thegreenbrierresort.com> be transferred to the Complainant. Jeffrey M. Samuels Sole Panelist Date: May 23, 2014 1 According to Complainant, the lone proceeding in which Respondent prevailed involved a situation where the complainant failed to identify the proper respondent at the time of filing. 2 On March 17, 2014, the Center emailed Complainant’s counsel requesting comment on the fact that the disputed domain name may be the subject of a receivership action in the Northern District of Texas. On March 18, 2014 counsel replied that the U.S. Court of Appeals for the Fifth Circuit had ruled that the appointment of a receivership was in error and that the district court has ordered that the receivership be wound down (see Netsphere, Inc. v. Baron (N.D. Tex., Mar. 3, 2014)), and that other UDRP panels had found previously that the domain names in issue were not subject to this receivership order and, even if they were, proceeded to decisions on the merits. See Petroleo Brasileiro S.A. – Petrobras , WIPO Case No. D2013-2080 for a discussion of the issue and a collection of other UDRP cases in which panels issued decisions on the merits in similar circumstances. In view of counsel’s representations and the evidence of record, as well as the actions of other UDRP panels, the instant Panel determines to reach the merits of this proceeding. 3 The evidence indicates that the disputed domain name resolved, at some point in the past, to a website with links to such topics as “Travel,” “Services,”, “Finance,” and Entertainment.” It thus appears that such site is essentially a pay-per-click (PPC) site and that Respondent earns revenue each time a user clicks on one of the links.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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