Victoria Baer v. Total PC
Claim Number: FA0709001075003
Complainant is Victoria
Baer (“Complainant”), represented by Mark
J Young, of Mark Young P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baeredge.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <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.
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
Respondent registered the <baeredge.com> domain
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.
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,
Complainant has established common law rights in the THE
BAER EDGE mark through extensive and continuous use of the mark since
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
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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
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
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
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
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 ¶
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
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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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