Mindware Holdings, Inc. v. Epium Plc
Claim Number: FA0707001049533
Complainant is Mindware Holdings, Inc. (“Complainant”), represented by Martin
Smith of Mindware Holdings, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mindware.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 31, 2007; the National Arbitration Forum received a hard copy of the Complaint July 31, 2007.
On July 31, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <mindware.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 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.
On August 31, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <mindware.com>, is identical to Complainant’s MINDWARE mark.
2. Respondent have no rights to or legitimate interests in the <mindware.com> domain name.
3. Respondent registered and used the <mindware.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used the MINDWARE mark since 1991 in connection with card decks, crossword puzzles and other gaming products sold under a mailing catalog produced under the same name. Complainant owns registrations of the mark in several jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,681,556 issued Jan. 28, 2003).
The disputed domain name that Respondent registered, <mindware.com>, was registered on October 26, 1997. It currently resolves to an inactive website.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Under Policy ¶ 4(a)(i), Complainant is not required to hold a trademark registration with a governmental authority in order to acquire rights in a mark, provided it can establish common law rights in a mark through evidence of secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant has used its MINDWARE mark continuously and extensively since at least 1991 in connection with the promotion and sale of various puzzles and games, as well as other child activities and toys. Additionally, Complainant has obtained a trademark and service mark registration with the USPTO for the MINDWARE mark, which lists a first use in commerce date in October 1990. Accordingly, the Panel finds that Complainant has demonstrated sufficient evidence of common law rights in the MINDWARE mark that predate the registration of the <mindware.com> domain name by Respondent. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
The disputed <mindware.com> domain name is identical to Complainant’s MINDWARE mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.com.” It is well established that a gTLD is not relevant to a Policy ¶ 4(a)(i) analysis. As such, the Panel finds that the disputed domain name is identical to Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must initially make out a prima
facie case that Respondent has no rights or legitimate interests in the
domain name at issue. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a
claim under the Policy, Complainant must first establish a prima facie
case. Complainant’s [initial burden] is to provide proof of valid, subsisting
rights in a mark that is similar or identical to the domain name in
question.”). The Panel finds that
Complainant made a prima facie showing and accordingly, the burden is
shifted to Respondent to demonstrate that it does have rights or legitimate
interests in the disputed domain name. See
VeriSign Inc. v. VeneSign
Respondent failed to respond to the Complaint. The Panel may presume that Respondent has no rights or legitimate interests in the <mindware.com> domain name. Nevertheless, the Panel still considers the available evidence with respect to the factors listed in Policy ¶ 4(c) before making its final determination. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <mindware.com> domain name and no other information in the record indicates that Respondent is or ever has been known by the disputed domain name. Further, Respondent has not sought and Complainant has not granted a license or any permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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).
The disputed domain name currently resolves to an inactive website. It appears that Respondent has made no use of the <mindware.com> domain name and Respondent does not offer evidence of use. The Panel finds that this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ (4)(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A the respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The <mindware.com> domain name resolves to a website without an active use. The mere holding of an infringing domain name without any active use allows for the inference that the domain name was registered and is being held in bad faith. Moreover, Respondent has provided no affirmative evidence of preparations to use the disputed domain name. Consequently, the Panel finds that Respondent registered and is using the disputed domain name in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Complainant 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 <mindware.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 12, 2007.
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