national arbitration forum

 

DECISION

 

Victoria Baer v. Total PC

Claim Number: FA0709001075003

 

PARTIES

Complainant is Victoria Baer (“Complainant”), represented by Mark J Young, of Mark Young P.A., 12086 Fort Caroline Rd., Unit 202, Jacksonville, FL 32225.  Respondent is Total PC (“Respondent”), 8985 West Beaver St., Jacksonville, FL 32220.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <baeredge.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 13, 2007.

 

On September 7, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <baeredge.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  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 September 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 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@baeredge.com by e-mail.

 

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

 

On October 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <baeredge.com> domain name is confusingly similar to Complainant’s THE BAER EDGE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <baeredge.com> domain name.

 

3.      Respondent registered and used the <baeredge.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Victoria Baer, has been using the THE BAER EDGE mark in connection with the sale of advertising, promotional and marketing materials since at least as early as January 30, 2001.  Complainant has filed an application with the United States Patent and Trademark Office (“USPTO”) for the THE BAER EDGE mark (Serial No. 77/268,951 filed August 30, 2007).  Complainant hired Respondent to register the <baeredge.com> domain name and develop a website, which Complainant was using in connection with the advertisement of its marketing services. 

 

Respondent registered the <baeredge.com> domain name on August 4, 2006 on behalf of Complainant.  While Complainant paid all the fees associated with the registration of the disputed domain name, unbeknownst to Complainant, Respondent identified the registrant as itself, Total PC, and not as Complainant.  Complainant requested that Respondent transfer the <baeredge.com> domain name to Complainant in August of 2007 but Respondent refused to transfer the domain name unless Complainant paid $20,000 to Respondent.

 

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 is not required under Policy ¶ 4(a)(i) to hold a registered trademark to establish rights in the THE BAER EDGE mark.  Common law rights are sufficient under Policy ¶ 4(a)(i).  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 established common law rights in the THE BAER EDGE mark through extensive and continuous use of the mark since January 30, 2001.  The Panel finds that Complainant has established substantial consumer recognition and secondary meaning in the THE BAER EDGE mark sufficient to establish rights in the mark under Policy ¶ 4(a)(i).  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.”).

 

Respondent’s <baeredge.com> domain name is confusingly similar to Complainant’s THE BAER EDGE mark as it uses the mark in its entirety and simply omits the article “the” and adds the generic top-level domain (“gTLD”) “.com” to the mark.  The Panel finds that the addition of a gTLD is irrelevant to the determination of whether a mark is confusingly similar.  Additionally, the Panel finds that the omission of an article does not distinguish the mark sufficiently to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).  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 Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent does not have rights in the <baeredge.com> domain name.  Complainant’s assertion establishes a prima facie case, which shifts the burden to Respondent to show that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Towmaster, Inc. v. Hale,  FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also Washington CeaseFire v. Private Registration, FA 985159 (Nat. Arb. Forum June 27, 2007) (“Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).

 

The Panel may assume that Respondent does not have rights or legitimate interests here because Respondent failed to respond to the Complaint.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also 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.”).  However, the Panel will consider all evidence before determining whether Respondent has rights or legitimate interests in the <baeredge.com> domain name under Policy ¶ 4(c).

 

Complainant alleges that Respondent is using the <baeredge.com> domain name to continue to display Complainant’s website without Complainant’s permission.  Therefore, while Complainant’s information is being displayed at the disputed domain name, Complainant does not have control over what is displayed by Respondent.  As a result, the Panel finds that Respondent’s use of the <baeredge.com> domain name to pass itself off as Complainant is not a use in connection with a bona fide offer of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial of fair use under Policy ¶ 4(c)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); 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 ….”).

 

Additionally, Respondent offers no evidence and none is present in the record to indicate that Respondent is commonly known by the <baeredge.com> domain name.  Respondent’s WHOIS information identifies Respondent as “Total PC.”  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the mark under 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Finally, Respondent’ s offer to sell the <baeredge.com> domain name to Complainant for an amount of $20,000, particularly when Complainant paid for the registration fees, is evidence in and of itself that Respondent does not have rights or legitimate interests in the mark under Policy ¶ 4(a)(ii).  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <baeredge.com> domain name, which is confusingly similar to Complainant’s THE BAER EDGE mark, to host Complainant’s information without the permission of Complainant.  Complainant contends that it paid Respondent to register the domain name on behalf of Complainant and to develop a website for Complainant.  Complainant covered all the costs of the registration but unbeknownst to Complainant, Respondent registered the disputed domain name in Respondent’s name.  As a result, Complainant later attempted to gain control of the <baeredge.com> domain name to change the content and learned that Respondent had registered the disputed domain name in its name and that it would only turn over the domain name to Complainant in exchange for $20,000.  The Panel finds that Respondent’s demand of $20,000 in exchange for the <baeredge.com> domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <baeredge.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  October 23, 2007

 

 

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