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 rights¹ 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

¹ Although Complainant states once that it has a ‘registered’ mark, no evidence of registration was provided.