national arbitration forum

 

DECISION

 

Imation Corp. v. Linecom

Claim Number: FA0706001021114

 

PARTIES

Complainant is Imation Corp. (“Complainant”), represented by Elizabeth C. Buckingham, of Dorsey & Whitney LLP, 50 South Sixth Street, Suite 1500, Minneapolis, MN 55402-1498.  Respondent is Linecom (“Respondent”), 1 Sejongro, Jongro Seoul KR.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <memorex.org>, registered with OnlineNIC Inc.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

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 June 29, 2007, OnlineNIC Inc. confirmed by e-mail to the National Arbitration Forum that the <memorex.org> domain name is registered with OnlineNIC Inc. and that Respondent is the current registrant of the name.  OnlineNIC Inc. has verified that Respondent is bound by the OnlineNIC Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

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 postmaster@memorex.org by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 27, 2007,  pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 July 24, 1962.  Complainant’s MEMOREX products are sold in numerous countries and Complainant received nearly $1.6 billion in revenue in 2006 through its data storage product sales.  Further, Complainant owns thirty domain names incorporating the MEMOREX mark, including the <memorex.com>, <memorex.info>, and <memorex.us> domain names, all of which resolve to Complainant’s <memorex.com> domain name.

 

Respondent registered the <memorex.org> domain name on March 11, 2007.  Respondent’s domain name currently resolves to a page soliciting offers for the sale of the domain name. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).  The Panel thus finds Complainant has established rights for the purposes of Policy ¶ 4(a)(i).

 

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 May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark).

 

Based on the foregoing, the Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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).

 

As set forth in American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), “based on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  Respondent has not provided this Panel with any evidence of rights or legitimate interests in the <memorex.org> domain name.  However, the Panel will examine the record to see if there is anything to suggest Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

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 Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

 

            The Panel, therefore, concludes Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

“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., D2000-0834 (WIPO Sept. 4, 2000).  Registration and use of the <memorex.org> domain name, which is identical to Complainant’s mark, in order garner a higher price than Respondent’s out-of-pocket expenses, and, thus, essentially profiting off of Complainant’s goodwill and fame, evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

Therefore, the Panel concludes Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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.

 

 

 

 

Bruce E. Meyerson, Panelist

Dated:  August 10, 2007

 

 

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