greenbrierinternationalincorporated.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CSX IA, Inc. v. Spiral Matrix

Case No. D2007-0546

1. The Parties

The Complainant is CSX IA, Inc., Jacksonville, Florida, United States of America, represented by McGuireWoods LLP, United States of America.

The Respondent is Spiral Matrix, Eldoret, Kenya.

2. The Domain Name and Registrar

The disputed domain name <greenbrierinternationalincorporated.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2007. On April 12, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On April 13, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative 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 April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2007.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 18, 2007. 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.

On May 28, 2007, having considered the case file, the Panel formed a preliminary view that the Complainant had not satisfied all the requirements of the Policy and in particular the test in paragraph 4(a)(i), but that it was highly likely the Complainant could do so upon the submission of further arguments and/or evidence. Accordingly, on June 14, 2007, the Panel issued Procedural Order No. 1 seeking further particulars from the Complainant to be filed no later than June 22, 2007, and with a corresponding opportunity for the Respondent to file a reply no later than June 26, 2007.

The further particulars requested from the Complainant consisted of (1) an explanation for the apparent discrepancy between the name of the Complainant, “CSX IA, Inc.”, and the name of the owner of the various trademark registrations listed in and annexed to the Complaint , “CSX IP, Inc.”, together with any supporting material relevant to the relationship between “CSX IA, Inc.”, “CSX IP, Inc.”, and the claimed trademark rights; (2) a further submission including any supporting material regarding the precise nature of the relationship between the Complainant and the apparent corporate term or name contained in the disputed domain name, “green brier international incorporated”; and (3) information about the Complainant’s activities and reputation in support of its assertion that the Respondent is capitalizing on the Complainant’s trademark.

On June 20, 2007, the Complainant’s representatives filed a further submission in response to Procedural Order No. 1 explaining the structure of the Complainant’s corporate group and providing some additional detail regarding the Complainant’s activities and reputation. The Respondent did not take up its opportunity to file a reply to the Complainant’s further submission.

It is clear from the Complainant’s further submission that the Complainant company is part of a larger corporate group structure, one company of which owns a resort hotel and another company of which owns the relative intellectual property for the hotel business. In these circumstances, for ease of reference and in the absence of any objection or comment from the Respondent to Procedural Order No. 1, the Panel will, for convenience, treat the constituent parts of the Complainant’s group as though it were a single legal entity.

4. Factual Background

The Complainant is CSX IA, Inc. The Complainant is owned by a company named CSX IP, Inc. which in turn is owned by a company named CSX Hotels, Inc. CSX Hotels, Inc. is the owner of a well-known award winning resort hotel and United States National Historic landmark named ‘The Greenbrier Hotel’ which has provided hotel services since 1778.

The Complainant’s direct parent company, CSX IP, Inc. is the owner of the United States registered trademarks listed in the following table:

Although it did not cite them specifically in the Complaint, the Complainant provided copies of additional United States trademarks of which CSX IP, Inc. is the owner namely:

CLUB CHEF’S CCI INSTITUTE AT THE GREENBRIER;

GREENBRIER VILLAGE;

THE GREENBRIER COOKING SCHOOL;

THE GREENBRIER COURSE;

THE GREENBRIER CULINARY APPRENTICESHIP PROGRAM;

THE GREENBRIER CULINARY ARTS CENTER;

THE GREENBRIER GOLF AND TENNIS CLUB;

THE GREENBRIER GOURMET;

THE GREENBRIER GUN CLUB;

THE GREENBRIER RESORT AND CLUB MANAGEMENT COMPANY;

THE GREENBRIER SHOPPE;

THE GREENBRIER SPA;

THE GREENBRIER SPORTING CLUB; and

THE GREENBRIER SPORTING CLUB SINCE 1778.

CSX IP, Inc. has applied for the following United States trademark applications which are still pending:

G THE GREENBRIER MAGAZINE;

GREENBRIER SUMMIT VILLAGE;

GREENBRIER UNIVERSITY;

The Respondent is an entity of unknown legal status with an address in Eldoret, Kenya. It registered the disputed domain name on July 6, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant has established rights in the mark GREENBRIER through the Complainant’s use of such mark as well as through the registration of such mark with the United States Patent and Trademark Office (“PTO”) and other international registrations.

The disputed domain name is confusingly similar to the Complainant’s mark GREENBRIER.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. A search of the PTO’s database for all marks comprised of the word GREENBRIER did not reveal any parties who appeared to bear any relationship to the Respondent. The name of the Respondent, Spiral Matrix, bears no connection to the disputed domain name that would suggest that the disputed domain name is related to a mark or trade name in which the Respondent has established rights.

A Google search for the Respondent does not reveal any websites which suggest that the Respondent has established rights or legitimate interests in the disputed domain name.

The Complainant’s representative contacted the Respondent on August 1, 2006 and again on January 4, 2007 by writing to the address listed in the WHOIS. The Respondent did not reply and the letter of January 4, 2007 was returned by the mail carrier with a notice that the address was insufficient for delivery.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith because the Respondent is merely using the disputed domain name to attract third parties, such as corporate entities, who may want to advertise on the Respondent’s website. These entities could plausibly assume that the Complainant endorsed or is a customer of the Respondent because of the Respondent’s use of the identical word GREENBRIER in the disputed domain name. As a result, the Respondent may generate unjustified revenues and is therefore illegitimately capitalizing on the trademark GREENBRIER.

In its response to Procedural Order No. 1, the Complainant explains the ownership structure of its corporate group as outlined in the factual background above, together with copy stock certificates by way of supporting evidence. The Complainant also submits that its business The Greenbrier Hotel (which may be found online at “www.greenbrier.com”) has provided hotel services since 1778 and has been host to the Ryder Cup golf tournament; and that every US president since Eisenhower has stayed in its Presidential Suite. With regard to the Respondent’s activities relating to the disputed domain name, the Complainant asserts that on the relative website, the Respondent ran advertisements for hotel services not affiliated with The Greenbrier Hotel and in this manner capitalized on the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant owns a very extensive portfolio of registered trademarks in the United States of America, many of which are in respect of THE GREENBRIER, and the Panel finds therefore that the Complainant has rights therein.

How should the Complainant’s trademark be compared to the disputed domain name? Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions indicates that the consensus view among Panels is that the comparison is strictly between the Complainant’s trademark and the domain name; in other words that no extrinsic matters, such as either party’s website, fall to be considered. The Panel adopts that view in the present case.

The disputed domain name is <greenbrierinternationalincorporated.com>. The “.com” top level domain may be disregarded as is customary in cases under the Policy on the basis that it is wholly generic, leaving the term greenbrierinternationalincorporated for comparison with the Complainant’s trademark THE GREENBRIER. Clearly this is not identical but there is a single point of similarity, namely the term “greenbrier” which is clearly present in both. Does this render the disputed domain name confusingly similar within the meaning of the Policy and how is this to be assessed?

AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327 provides a typical example and indeed is listed in the Overview of WIPO Panel Views. In that case, the disputed domain names were <attinternet.com> and <attuniversal.com>. The complainant owned trademarks in the terms “ATT” and “AT&T”. The Panel found confusing similarity on the basis that the domain names were “likely to be confusing to the public on face value as suggesting either an operation of the Complainant or one associated with or endorsed by it”.

Although it is well-established that a finding of confusing similarity in no way depends on the fame of a mark, once rights have been established, some panels have referred to the extent to which a mark is well-known as an additional relevant consideration in some cases; see, for example Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, also listed in the Overview of WIPO Panel Views, in which the Panel stated inter alia “Because the Complainant’s trademark is so well known, Internet users finding <guiness.com> on search engines or elsewhere are likely to be misled into thinking the Complainant is the registrant or is otherwise associated with the disputed domain name or, if not misled, at least confused into wondering whether this is so”.

In the present case, the Panel has been presented with a further submission by the Complainant indicating that its business, trading under the mark “THE GREENBRIER” is well-known and long established, having provided hotel services since 1778. The Panel notes that the dominant element of both the Complainant’s trademark and the disputed domain name is also the sole point of similarity, namely the term “greenbrier”. It is conceivable to the Panel that, seen from the perspective of one of the Complainant’s customers, there might be an apparent association between the Complainant and the registrant of the disputed domain name, and/or that the disputed domain name might be confusing to one of the Complainant’s customers on face value as suggesting an operation of the Complainant.

In these circumstances the Panel finds that the Complainant has proved that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are 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.”

As the Respondent did not respond to the Complaint, it did not submit any evidence demonstrating rights or a legitimate interest in the disputed domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and adds that it has failed to find any parties having a connection with the Respondent in a search of the United States Patent and Trademark Office database. The Complainant has also performed a Google search for the Respondent and again has failed to identify anything which might confer a legitimate interest upon the Respondent. Finally, the Complainant asserts that the Respondent has been using the disputed domain name to run advertisements for hotel services.

The Respondent’s use of the disputed domain name, trading as it does on the fame and repute of the Complainant’s trademark, could not be described as a bona fide offering of goods or services. Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name and it has clearly been making commercial rather than non-commercial use of the name.

Given that the Respondent has not filed a response in this case, it has not provided any alternative explanation of rights and legitimate interests in the disputed domain name which may have eluded the Complainant or the Panel. In these circumstances the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy lists four non-exhaustive examples which may constitute evidence of bad faith registration and use for the purposes of the Policy. All of those examples involve the respondent intentionally targeting the complainant or its trademark. Put another way, the general requirement under this head of the Policy is that when registering and using the disputed domain name the Respondent must have had the Complainant or its trademark in contemplation.

It is clear from the material provided by the Complainant that the Respondent registered the disputed domain name with the Complainant’s hotel, and therefore its trademark, in mind. The Respondent has been using the website associated with the disputed domain name to run advertisements for various hotels other than that of the Complainant. Accordingly, it seems probable to the Panel that the Respondent is targeting the Complainant’s hotel business. Furthermore, it is clear that the Respondent is seeking to draw Internet users to its website by the attractive force that is present in the name and trademark of the Complainant’s hotel.

The Panel is therefore satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website, as contemplated by paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith.

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 <greenbrierinternationalincorporated.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist

Dated: June 28, 2007