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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CSX IA, Inc. v. Remarkable Systems, Inc.

Case No. D2007-1665

1. The Parties

The Complainant is CSX IA, Inc. of White Sulphur Springs, West Virginia, United States of America, represented by McGuireWoods LLP, United States of America.

The Respondent is Remarkable Systems, Inc. of White Sulpher Spring, West Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <thegreenbrier.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2007. On November 13, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 13, 2007, eNom 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”), 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 November 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007. The Response was filed with the Center on December 5, 2007.

The administrative proceeding was suspended by the Center on December 21, 2007, at the request of the Complainant, for a period of 30 days. The parties communicated inconclusively thereafter, and at the Complainant’s request, the Center reinstituted the administrative proceeding on December 18, 2008. The Center appointed William R. Towns as the sole panelist in this matter on January 19, 2008. 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 Complainant owns The Greenbrier, a well known resort and National Historic landmark situated in White Sulphur Springs, West Virginia. The Complainant holds numerous trademark registrations for THE GREENBRIER for resort hotel services and other goods and services in the United States, the earliest of which was issued by the United States Patent and Trademark Office (USPTO) in 1988.

The Respondent is the registrant of the disputed domain name <thegreenbrier.com>, which according to the eNom’s WHOIS database was first registered on December 24, 1995. In November 2000, the Complainant contacted the Respondent by letter, seeking the transfer of the disputed domain name. The Respondent in February 2001 replied that it had registered the disputed domain name in good faith during business negotiations with the Complainant in 1995. The Respondent also raised the issue of laches.

The Complainant apparently chose to take no legal action at that time, but on June 13, 2007 and July 12, 2007, the Complainant again contacted the Respondent by letter and demanded a transfer of the disputed domain name. The Respondent did not directly reply to either letter, and the Complaint subsequently was filed on November 13, 2007.

The disputed domain name currently does not resolve to an active website, but the record does reflect the use of the domain name in November 2007 with a parked webpage hosted by Network Solutions, with links to other websites and searches for “hotel deals”, “spa vacations”, and “vacation packages”, among others. Aside from this, the record herein reflects no active use the disputed domain during the past twelve years.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the mark THE GREENBRIER, in which the Complainant has established rights through use and through registration in the United States and internationally. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent is not commonly known by the disputed domain name, and that the disputed domain name does not relate to any mark or trade name in which the Respondent has established rights. The Complainant further argues that the Respondent has not made any legitimate commercial or non-commercial use of the disputed domain name that would confer rights therein.

According to the Complainant, however, the Respondent is improperly using the disputed domain name to divert internet users to a parked page with links to the Complainant’s competitors, from which the Respondent may be generating advertising revenue, thus illegitimately seeking to exploit and profit from the Complainant’s mark. In view of all of the foregoing, the Complainant maintains that the disputed domain was registered and is being used in bad faith.

B. Respondent

The Respondent asserts that the Complainant’s allegations are invalid and unfounded. According to the Respondent, the domain name was registered entirely in good faith in December 1995 during business negotiations between, the Respondent’s President and the Complainant’s President and CEO. These business negotiations, according to the Respondent, stemmed from Respondent’s President’s “very close affiliation” for over thirty (30) years with The Greenbrier and the Complainant.

The Respondent contends that it did not register the disputed domain name until seven (7) months after the Complainant had registered the domain name <greenbrier.com>. The Respondent asserts that the Complainant had every opportunity to obtain the <thegreenbrier.com> domain name prior to their first choice of <greenbrier.com> for a domain name, although the Respondent maintains that the disputed domain name was registered without knowledge of the Complainant’s prior domain name registration.

In any event, the Respondent argues that the Complainant chose not to register the disputed domain name, and that the Complainant showed no interest in the disputed domain name before November 2000, at which time the Complainant first made and the Respondent “negated” the allegations made in this proceeding. The Respondent claims it even sought an amicable resolution of the matter but that the Complainant seemed disinterested. The Respondent maintains that the Complainant exhibited no interest in the disputed domain name for another seven (7) years, and characterizes the current proceedings as nothing more than the Complainant’s “haphazard and harassing” attempts to “retroactively correct” the Complainant’s poor decisions made from the start and repeated across twelve (12) years.

The Respondent denies ever having made any active use of the disputed domain name since its registration in December 1995. According to the Respondent, it discovered during the summer of 2007 that the domain name registrar Network Solutions had put up a parked page without the Respondent’s knowledge or permission. The Respondent then transferred the domain registration to eNom, but contends that Network Solutions again has taken control of the disputed domain name and has put up a parked page over which the Respondent has no control. The Respondent is insistent that it has never used the domain name to provide advertising from any of the Complainant’s competitors and that is has never sought to capitalize on the use of the domain name.

6. Discussion and Findings

A. Laches

The Respondent points out that it registered the disputed domain name five (5) years before the Complainant first complained of such registration, and that another period of seven (7) years elapsed before the initiation of the Complaint.¹ While the Respondent appears to argue from this that the Complainant should be considered to have acquiesced to the Respondent’s registration of the disputed domain name, the Panel also considers that the Response can be read to invoke the defense of laches.

There are a number of decisions under the Policy in which panels have held that the equitable defense of laches has no application under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes. If the requirements of a valid complaint under the Policy are established, the Policy does not provide any defense of laches. Id. See also The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616. The Panel agrees with these decisions and holds that the defense of laches has no application under the Policy.

B. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

C. Identical or Confusingly Similar

The Panel finds that the disputed domain name <thegreenbrier.com> is identical and confusingly similar to the Complainant’s mark THE GREENBRIER, in which the Complainant unquestionably has established rights through registration and long use. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of its registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The disputed domain name wholly incorporates the Complainant’s mark and identical in sight and sound. See CSX IA, Inc. v. Registrant[190789]: International Domain Names Inc/Registrant [342921] Moniker Privacy Services, WIPO Case No. D2007-0611.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Complainant asserts that it has not licensed or otherwise authorized the Respondent to use the Complainant’s mark THE GREENBRIER or to register a domain name corresponding to its mark. The disputed domain name is identical to the Complainant’s mark, and there is nothing to indicate that the Respondent has ever been commonly known by this domain name, or that the domain name relates to the Respondent’s business or trade name, or to any trademarks in which the Respondent has established rights. Further, the record reflects the recent use of the disputed domain name with a parked website from which the Respondent possibly could be generating revenue through advertising links to commercial websites.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed 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.

The Respondent’s assertion that its President had a “very close affiliation” with The Greenbrier and the Complainant for over 30 years belies any contention that the Respondent had no knowledge of the Complainant and its rights in the mark: THE GREENBRIER when the Respondent registered the disputed domain name. In any event, the Respondent has never denied knowledge of the Complainant’s mark. Further, the Respondent offers no explanation how this alleged “affiliation” would entitle it to lay claim to the use of Complainant’s mark. In the absence of any evidence that it was authorized by the Complainant to do so, the Respondent’s registration of the disputed domain name during business negotiations with the Complainant does not support an assertion of legitimacy. Were the Panel to draw any inference from such circumstances, the Panel would infer that the Respondent had acted opportunistically in an attempt to obtain leverage in its business negotiations with the Complainant.

In any event, the Panel flatly rejects as untenable the Respondent’s apparent position that one need only enter into business negotiations with another in order to legitimize the appropriation and use of the other’s trademark as a domain name. Viewing the Response even in the most favorable light for the Respondent, no rights or legitimate interests in the disputed domain name have been established on the available record. The Respondent, who has never denied knowledge of the Complainant’s mark, registered a domain name incorporating the Complainant’s mark in its entirety. The Respondent denies having ever actively used of the domain name for more than twelve (12) years, and has not identified any plausible actual or contemplated active use of the domain name that would not encroach upon the Complainant’s rights in its mark. This is not sufficient to create rights or interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further, in the circumstances of this case, the Respondent’s registration of a domain name so obviously connected to the Complainant precludes any good faith reliance by the Respondent on a “first come, first served” rule. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 (when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”). The defense of laches does not of itself apply under the Policy, and in the circumstances of this case the Panel does not consider that the timing of the Complaint is dispositive evidence that the Complainant approved or condoned the Respondent’s use of the Complainant’s mark as a domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra supra. Paragraph 4(a)(iii) requires bad faith registration and use of a domain name before the Policy can be invoked. This requirement is “satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra supra (emphasis in original).

As noted above, the Respondent has never denied knowledge of the Complainant’s mark, and the Panel considers from the circumstances of this case that the Respondent’s registration of the disputed domain name was on balance in bad faith under paragraph 4(a)(iii) of the Policy. Further, under the Telstra analysis, passive holding of a domain name may support a finding of bad faith use where, under the totality of circumstances, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. Given the circumstances in this case as discussed above, the Panel can conceive of no plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. ² Id. In view of all of the foregoing, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <thegreenbrier.com> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: February 4, 2008

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¹ In this case, the disputed domain name was first registered on December 24, 1995, while the Policy went into effect on December 1, 1999. The Panel agrees with prior panel decisions holding that all gTLD names became subject to the Policy as of it adoption. Earlier registrants either accepted the Policy or forfeited their domain names. See, e.g, Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

² In this case, as in Telstra, the Complainant’s mark enjoyed a strong reputation and was well known at the time of the registration of the disputed domain name. As in Telstra, the Respondent was aware of the Complainant’s rights in the mark. Further, as in Telstra, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name.