Imation Corp. v. Linecom
Claim Number: FA0706001021114
Complainant is Imation Corp. (“Complainant”), represented by Elizabeth
C. Buckingham, of Dorsey & Whitney LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <memorex.org>, registered with OnlineNIC Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 28, 2007.
On July 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <memorex.org> domain name is identical to Complainant’s MEMOREX mark.
2. Respondent does not have any rights or legitimate interests in the <memorex.org> domain name.
3. Respondent registered and used the <memorex.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Imation Corp., uses the MEMOREX mark to market
its audio and video equipment, computer accessories, data storage products, and
related items. Complainant holds over
250 trademark registrations for the MEMOREX mark throughout the world,
including Reg. No. 734,922 issued by the United States Patent and Trademark
Office (“USPTO”) on
Respondent registered the <memorex.org> domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant alleges rights in the MEMOREX mark through
registration with the USPTO. Repeatedly,
panels have found USPTO registration is sufficient to establish rights in a
mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum
Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also
The domain name at issue is identical to Complainant’s
MEMOREX mark. As a top-level domain is
essential to registration of a domain name, the addition of the “.org” generic top-level
domain to Complainant’s mark is irrelevant in the Panel’s analysis of
similarity. See Gardline Surveys Ltd. v. Domain
Fin. Ltd., FA 153545 (Nat. Arb. Forum
Based on the foregoing, the Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Respondent is only required to put forth evidence demonstrating rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) after Complainant has made a prima facie case demonstrating Respondent’s lack thereof. Finding Complainant has successfully crossed this initial threshold, the Panel now looks to whether Respondent has proffered any evidence showing rights or legitimate interests in the <memorex.org> domain name. See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”); see also Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
set forth in American Express
The Panel finds Respondent has failed to put forth any evidence and there is nothing in the record to suggest Respondent is commonly known by the <memorex.org> domain name. Further, Complainant has not licensed or authorized Respondent to use the MEMOREX mark. Accordingly, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Additionally, Respondent’s <memorex.org> domain name currently resolves to a page
soliciting offers for the sale of the domain name. Complainant has provided the Panel with evidence
suggesting Respondent is looking to sell the <memorex.org> domain name to Complainant for above and beyond
Respondent’s out-of-pocket costs. As a
result, the Panel finds Respondent’s lack of a demonstrable purpose to use the
disputed domain name in connection with anything other than its sale does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO
The Panel, therefore, concludes Complainant has satisfied Policy ¶ 4(a)(ii).
“There is nothing inherently wrongful in the offer or sale
of domain names, without more, such as to justify a finding of bad faith under
the Policy. However, the fact that
domain name registrants may legitimately and in good faith sell domain names
does not imply a right in such registrants to sell domain names that are
identical or confusingly similar to trademarks or service marks of others
without their consent.” CBS Broad. Inc. v. Worldwide Webs, Inc.,
Therefore, the Panel concludes Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <memorex.org> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 10, 2007
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