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WIPO Arbitration and Mediation
Center
ADMINISTRATIVE PANEL DECISION
Carolina Springs Academy v.
Mark LeBelle
Case No. D2005‑1187
1. The Parties
The Complainant is Carolina Springs Academy, Donalds, South
Carolina, United States of America, represented by McNair Law Firm,
Greenville, South Carolina, United States of America.
The Respondent is Mark LeBelle, Salisbury, Maryland,
United States of America.
2. The Domain Name and
Registrar
The disputed domain name <carolinaspringsacademy.com> is registered
with Network Solutions, LLC.
3. Procedural History
The
Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on November 15, 2005. On November 16, 2005, the
Center transmitted by email to Network Solutions, LLC a request for
registrar verification in connection with the domain name at issue.
On November 16, 2005, Network Solutions, LLC transmitted by email to
the Center its verification response and providing the contact
details for the administrative, billing, and technical contact. 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 23, 2005. In accordance with the
Rules, paragraph 5(a), the due date for Response was
December 13, 2005. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on
December 19, 2005.
The
Center appointed Jordan S. Weinstein as the Sole Panelist in this
matter on January 24, 2006. 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
This
proceeding involves a domain name that is the equivalent of
Complainant’s name and mark, CAROLINA SPRINGS ACADEMY. Complainant
was established in 1998.
Complainant asserts, and Respondent does not dispute, that after
Respondent registered the disputed domain name the parties entered
into a business relationship to attract students to Complainant’s
Academy. The relationship was terminated by Respondent.
The
domain name is being used for a website showing the text “FOR SALE”
and an email address. Embedded in the page are the following meta
text: “Carolina Springs Academy, a Utah‑based residential program
for troubled teens”, “carolina springs academy, narvin lichfield,
wwasp, world‑wide, dundee ranch, pillars of hope”, “Carolina Springs
Academy: Learning and Living Respect, Honor, and Integrity”.
5. Parties’ Contentions
A. Complainant
Complainant asserts that it has rights in the trademark and service
mark CAROLINA SPRINGS ACADEMY in connection with operating and
advertising a boarding school, and that it has used the mark
continuously since October 1998. Complainant asserts that it has
advertised under the name CAROLINA SPRINGS ACADEMY in a variety of
locations, specifically in Southern Living magazine and on
its website at “www.carolinasprings.com”. In support of its
trademark claim, Complainant attached undated advertising copy and a
partial printout of one page of its website.
Complainant asserts that Respondent registered the domain name in
the hopes of transferring the domain name to Complainant for a
profit. Complainant states that it chose to avoid causing an
adversarial relationship and began a business relationship with
Respondent, in which the two parties worked together to attract
students to Carolina Springs Academy. Complainant states that the
relationship was later terminated by Respondent, and that Respondent
placed the domain name for sale.
Complainant asserts that Respondent has appropriated Complainant’s
mark CAROLINA SPRINGS ACADEMY as a portion of Respondent’s domain
name, and that the domain name of the Respondent is not only
confusingly similar to the registered trademark of Complainant, it
contains Complainant’s identical trademark.
Complainant asserts that it has not licensed Respondent to use its
trademark, that Respondent does not have any relationship with
Complainant that would entitle it to use Complainant’s trademark,
and that Respondent has no legitimate interest in using its domain
name in a commercial way.
Complainant alleges that Respondent is clearly planning on using the
disputed domain name, <carolinaspringsacademy.com>, for illegitimate
commercial gain purposes, and that the disputed domain name will be
used to attract customers, using the fame of its CAROLINA SPRINGS
ACADEMY mark, to direct those customers to Respondent’s associates.
Complainant alleges that when Respondent registered the domain name,
it knew, or should be charged with the knowledge, that persons
seeking information about Complainant’s goods and services would
expect such information to be available at Respondent’s website.
Complainant further alleges that Respondent also knew that by taking
control of the domain name, it would interfere with Complainant’s
business by diverting potential customers away from Complainant’s
actual websites, and that bad faith is manifest in the Respondent’s
registration of the domain name because the only reasonable
explanation for Respondent’s registration is the fame of the
CAROLINA SPRINGS ACADEMY name.
Complainant asserts that Respondent’s unauthorized use of the
confusingly similar CAROLINA SPRINGS ACADEMY mark enables Respondent
potentially to call attention to his company and his products and
services, and to trade on and receive the benefit of the goodwill
built up at great labor and expense over many years by Complainant,
and to gain acceptance for his product and services not solely on
his own merits, but as a free ride on the reputation and good will
of Complainant and its marks. Complainant alleges that Respondent’s
intends to use the disputed domain name to mislead and divert
consumers for his own personal commercial gain.
Complainant alleges that Respondent includes in its meta keywords
terms associated with Complainant:
- “Narvin Lichfield” ‑ Narvin
Lichfield is the owner of Carolina Springs Academy. Mr. Lichfield
has not authorized Respondent to use his name in Respondent’s Meta
keywords.
- “WWASP” ‑ WWASP is a
worldwide affiliation/trade association for boarding schools in
which Carolina Springs Academy is a member.
- “Dundee Ranch” ‑ Dundee
Ranch was a boarding school in Costa Rica formerly owned by Narvin
Lichfield.
- “Pillars of Hope” ‑ Pillars
of Hope is the new name of the Costa Rican boarding school.
Complainant asserts that all of these keywords are designed to
divert customers from Complainant’s Carolina Springs Academy website
to Respondent’s “www.carolinaspringsacademy.com” website.
B. Respondent
The
Respondent did not reply to the Complainant’s contentions.
6. Discussion and
Findings
A. Applicable Policy Provisions
The Policy
requires Complainant to prove each of the following three elements
in order to prevail in this proceeding:
(1) the domain name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights
or legitimate interests in respect of the domain name; and
(3) the domain name has been
registered and is being used in bad faith.
Policy, paragraph
4(a)
It is not
sufficient to prevail that a complainant prove only registration in
bad faith; rather, the complainant must prove both registration and
use in bad faith. See World Wrestling Federation Entertainment,
Inc. v. Michael Bosman, WIPO Case No. D99‑0001; Robert
Ellenbogen v. Mike Pearson, WIPO Case No. D2000‑0001.
However, the
Policy states that the following circumstances shall be evidence of
the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the respondent has]
registered or 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 documented out‑of‑pocket costs directly
related to the domain name; or
(ii) [the respondent has]
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) [the respondent has] registered the domain name primarily
for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has]
intentionally attempted 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 [its] website or
location or of a product or service on [its] website or location.
Policy, paragraph
4(b). These circumstances are non‑inclusive, and the panel may
consider other circumstances as constituting registration and use of
a domain name in bad faith. Id.
The respondent may
demonstrate rights or legitimate interests to the domain name by any
of the following, without limitation:
(i) Before any notice to you of
the dispute, your 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) you, as an individual, business, or other organization
have been commonly known by the domain name, even if you have
acquired no trademark or service mark rights; or
(iii) you are making a legitimate non‑commercial or fair use of
the domain name, without intent for commercial gain to misleadingly
divert customers or to tarnish the trademark or service mark at
issue.
Policy, paragraph 4(c).
Where a respondent
is in default, the panel may draw such inferences as it considers
appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly
Similar
Complainant asserts that it has common law rights
to the mark CAROLINA SPRINGS ACADEMY in connection with operating
and advertising a boarding school, and that it has been using the
mark continuously since October 1998. Although Complainant provided
no direct evidence to support its date of first use of the mark, the
Panel notes that the year 1998 appears in the school’s shield, as
depicted in advertising copy attached to the Complaint.
In view of Respondent’s failure to contest Complainant’s trademark
rights, the Panel finds that Complainant has rights to the mark
CAROLINA SPRINGS ACADEMY, and, even though more relevant under the
third element, that those rights were established prior to
Respondent’s registration of the disputed domain name on
December 20, 1999. Furthermore, the domain name and mark are
identical under the Policy.
C. Rights or Legitimate
Interests
Complainant asserts that it has not licensed Respondent to use the
mark CAROLINA SPRINGS ACADEMY, and that Respondent has no rights or
legitimate interests in respect of the domain name. Respondent has
failed to come forward with any showing of rights or legitimate
interests. Therefore, based on the case file, the Panel finds for
the Complainant on this element.
D. Registered and Used in
Bad Faith
While the evidentiary showing could have been more solid, the Panel
finds there is sufficient evidence to show that Respondent has
intentionally attempted to attract, for commercial gain, Internet
users to his website, by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of his website.
First, Respondent selected a domain name which is identical to
Complainant’s name and mark, CAROLINA SPRINGS ACADEMY.
Second, Respondent selected and used certain metatags related to
Complainant on its webpage at “www.carolinaspringsacademy.com”. The
Panel has independently verified that Respondent uses the metatags
“Carolina Springs Academy, a Utah‑based residential program for
troubled teens”, “carolina springs academy, narvin lichfield, wwasp,
world‑wide, dundee ranch, pillars of hope”, “Carolina Springs
Academy: Learning and Living Respect, Honor, and Integrity”.
Complainant explains that the following have significance related to
Complainant:
- “Narvin Lichfield” ‑ Narvin
Lichfield is the owner of Carolina Springs Academy. Mr. Lichfield
has not authorized Respondent to use his name in their meta
keywords.
- “WWASP” ‑ WWASP is a
worldwide affiliation/trade association for boarding schools in
which Carolina Springs Academy is a member.
- “Dundee Ranch” ‑ Dundee
Ranch was a boarding school in Costa Rica formerly owned by Narvin
Lichfield.
- “Pillars of Hope” ‑ Pillars
of Hope is the new name of the Costa Rican boarding school.
Third, Respondent has placed an offer to sell the domain name on its
website at the disputed domain name.
The nature of the parties’ prior relationship is unclear to this
Panel. However, since Respondent chose not to answer the Complaint,
and in view of the other evidence Complainant submitted, the Panel
considers it appropriate to draw the inference that Respondent had a
bad faith intention.
These facts clearly indicate that Respondent is intentionally
attempting to attract, for commercial gain, Internet users to his
website by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of
his website. This constitutes registration and use of the domain
name in bad faith under paragraph 4(b)(iv) 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,
<carolinaspringsacademy.com> be transferred to the Complainant.
Jordan S. Weinstein
Sole Panelist
Dated: February 7, 2006
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