Recycle-A-Bicycle, Inc. v. Recycle A Bicycle
Claim Number: FA0708001055823
Complainant is Recycle-A-Bicycle, Inc. (“Complainant”), represented by Jack
Yoskowitz, of Seward & Kissel LLP, One Battery
Park Plaza, 21st Floor, New York, NY 10004. Respondent is Recycle A Bicycle (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <recycleabicycle.net>, registered with Gandi Sas.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 7, 2007.
On August 10, 2007, Gandi Sas confirmed by e-mail to the National Arbitration Forum that the <recycleabicycle.net> domain name is registered with Gandi Sas and that Respondent is the current registrant of the name. Gandi Sas has verified that Respondent is bound by the Gandi Sas 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 August 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 6, 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@recycleabicycle.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <recycleabicycle.net> domain name is identical to Complainant’s RECYCLE-A-BICYCLE mark.
2. Respondent does not have any rights or legitimate interests in the <recycleabicycle.net> domain name.
3. Respondent registered and used the <recycleabicycle.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used the RECYCLE-A-BICYCLE mark
since 1994 in connection with youth job training, environmental education,
bicycle repair and used bicycle sales. Complainant’s
business is based out of
Respondent’s <recycleabicycle.net> domain name was registered on December 27, 2005 and it resolves to a website that offers identical goods and services as those offered under Complainant’s mark. Respondent is located in the same city as where Complainant’s business is situated.
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.
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 RECYCLE-A-BICYCLE mark continuously and extensively since at least 1994 in connection with youth job training, environmental education, bicycle repair and used bicycle sales. Additionally, Complainant has obtained a service mark registration with the New York State Department for the RECYCLE-A-BICYCLE mark, which lists a first use in commerce date of November 1, 1994. Moreover, Complainant has filed an application with the USPTO. Accordingly, the Panel finds that Complainant has demonstrated sufficient evidence of common law rights in the RECYCLE-A-BICYCLE mark that predate the registration of the <recycleabicycle.net> 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.”); see also Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials).
Respondent’s <recycleabicycle.net> domain name omits the hyphens contained in the RECYCLE-A-BICYCLE
mark and includes the generic top level
domain (“gTLD”) “.net.” It is well
established that the omission of a punctuation mark such as a hyphen and the
inclusion of a gTLD are disregarded in a Policy ¶ 4(a)(i) analysis. The Panel thus finds that Respondent’s
disputed domain name is identical to Complainant’s mark. See Chernow Commc’ns, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also 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).
The Panel concludes that Complainant has 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 <recycleabicycle.net> 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 registered the disputed domain name just over nine years after Complainant began using the RECYCLE-A-BICYCLE mark in commerce. Respondent has not also allegedly pursued a federal or state registration of the same or any similar mark. Moreover, Respondent has not replied to this complainant. Absent any affirmative evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); see also Skyline Displays, Inc. v. Hangzhou Skyi Display Equip. Co., FA 187706 (Nat. Arb. Forum Oct. 14, 2003) (“Despite the fact that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in its WHOIS contact information, there is no evidence presented to the Panel showing that Respondent is commonly known by the <skyidisplay.com> domain name prior to registering the domain name.”).
Respondent’s <recycleabicycle.net> domain name is identical to Complainant’s RECYCLE-A-BICYCLE mark and offers goods and services that are identical to those offered under Complainant’s mark. The Panel finds that this competing use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the respondent’s use of the <thechipmerchant.net>, <chipmerchant.com>, and <chipmerchant.net> domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and implied that the respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The <recycleabicycle.net> domain name is
identical to Complainant’s RECYCLE-A-BICYCLE
mark and resolves to a website that offers goods and services that compete with
those offered under Complainant’s mark.
Moreover, Respondent lives in the same city as where Complainant’s
business is located. The Panel finds
that this creates a presumption that Respondent registered and is using the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it is
disrupting and diverting business from Complainant. See
EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the complainant's marks suggests that the
respondent, the complainant’s competitor, registered the names primarily for
the purpose of disrupting the complainant's business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business);
see also
Furthermore,
Respondent’s <recycleabicycle.net> domain name is identical to Complainant’s mark and the disputed domain name is being used to offer services and goods in competition
with those offered under Complainant’s mark.
The Panel finds this to be further evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650
(Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad
faith use and registration by using domain names that were identical or
confusingly similar to the complainant’s mark to redirect users to a website
that offered services similar to those offered by the complainant).
The Panel concludes that 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 <recycleabicycle.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 27, 2007
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