national arbitration forum

 

DECISION

 

Seaway Valley Capital Corporation v. American Marketing

Claim Number:  FA0708001063474

 

PARTIES

Complainant is Seaway Valley Capital Corporation (“Complainant”), represented by Thomas Scozzafava, of GreenShift Corp., One Penn Plaza, Ste. 1612, New York, NY 10119.  Respondent is American Marketing (“Respondent”), United States of America, Eastern, WA 99999.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net>, registered with Godaddy.com, 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.

 

Honorable Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 17, 2007.

 

On August 15, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 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@seawayvalleycapitalcorporation.com, and postmaster@seawayvalleycapitalcorporation.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 19, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names are identical to Complainant’s SEAWAY VALLEY CAPITAL CORPORATION mark.

 

2.      Respondent does not have any rights or legitimate interests in the <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names.

 

3.      Respondent registered and used the <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Seaway Valley Capital Corporation, began as Seaway Capital Partners, LLC and Seaway Valley Fund, LLC in 2003 as a money management, venture capital, and leveraged buyout companies.  Complainant incorporated Seaway Capital, Inc., on May 8, 2007 in the state of Delaware for the sole purpose of acquiring another corporation, GS Carbon Corporation.  Complainant acquired this corporation July 1, 2007.  Complainant reserved the name “Seaway Valley Capital Corporation” with the State of Delaware Division of Corporations on July 3, 2007, and on July 16, 2007 Complainant changed the name of their GS Carbon Corporation to its current name, Seaway Valley Capital Corporation.  On July 25, 2007, GS Carbon Corporation issued a press release to the public that stated that documents had been filed to effectuate the name change.

 

Respondent’s <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names were both registered on July 25, 2007.  The domain names currently do not have an active use. 

 

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

 

Under Policy ¶ 4(a)(i), Complainant does not need to hold a trademark registration in order to establish its rights in a mark, so long as it can establish common law rights in a mark through secondary meaning.  See 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”); see also 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).

 

Complainant, a group of money management, venture capital, and leveraged buyout companies, has continuously used the SEAWAY VALLEY CAPITAL CORPORATION mark since the name “Seaway Valley Capital Corporation” was reserved with the State of Delaware Division of Corporations on July 3, 2007.  On July 16, 2007, Complainant changed the name of one of the newly acquired Carbon Corporation to the name “Seaway Valley Capital Corporation.”  The Panel finds that Complainant has established its common law rights in the SEAWAY VALLEY CAPITAL CORPORATION mark through secondary meaning and that this mark predates the registration of the <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names.  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 S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark.

 

The <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names contain Complainant’s SEAWAY VALLEY CAPITAL CORPORATION mark in its entirety, except for the omission of the spaces contained in Complainant’s mark and the inclusion of the generic top-level domains (“gTLD”) “.com” and .net.”  It is well established that the omission of a space or the inclusion of a gTLD is not relevant to a determination of whether a domain name is identical.  The Panel accordingly finds that pursuant to Policy ¶ 4(a)(i) that Respondent’s disputed domain names are 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must initially make a out a prima facie case that Respondent has no rights or legitimate interests in the domain names 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 has made this showing and thus the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the domain names at issue.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy, it is entitled to a transfer of the domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).

 

Respondent has failed to submit a response to the Complaint, and so this Panel may presume that Respondent has no rights or legitimate interests in the <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names.  Nevertheless, this Panel will still consider all available evidence relevant to the other factors 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.”).

 

Nowhere in Respondent’s WHOIS information, or anywhere else in the record, does it indicate that Respondent is commonly known by either the <seawayvalleycapitalcorporation.com> or <seawayvalleycapitalcorporation.net> domain names.  Moreover, Complainant has not been requested to grant nor has it granted permission to anyone else for use of its mark in any way.  Absent any affirmative evidence to the contrary, this Panel finds that Respondent is not commonly known by the disputed domain names 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).

 

Respondent has also made no demonstrable preparations to use the disputed domain names.  This creates a presumption that Respondent has no rights or legitimate interests in the <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names.  The Panel finds, absent any evidence to the contrary, that Respondent’s failure to use the disputed domain names in any way is neither a bona fide offering under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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 Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way). 

 

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

 

Registration and Use in Bad Faith

 

Under Policy ¶ 4(b), the examples listed are not the only ways in which to establish bad faith pursuant to Policy ¶ 4(a)(iii).  Policy ¶ 4(b) simply sets out circumstances in which bad faith can be found, allowing for a panel to look at the totality of the circumstances in determining bad faith.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).

 

Respondent registered both of the <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names on July 25, 2007.  This was the same day as Complainant’s public announcement of the effectuated name change of GS Carbon Corporation to “Seaway Valley Capital Corporation.”  The Panel finds this to evidence opportunistic bad faith and in lieu of any affirmative evidence to the contrary, so finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that Respondent has to refute and which he has failed to do.  The Panel finds a negative inference from this.”).

 

No active use is being made of either of the <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names.  This creates the rebuttable presumption of registration and use in bad faith.  Without any other evidence, the Panel finds this to be further evidence of bad faith registration and use under pursuant to Policy ¶ 4(a)(iii).  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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

The Panel concludes that 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 <seawayvalleycapitalcorporation.com> and <seawayvalleycapitalcorporation.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  October 2, 2007

 

 

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