American International Industries v. Oz Domains
Claim Number: FA0709001079667
Complainant is American International Industries (“Complainant”), represented by Eric
S. Engel, of Conkle, Kremer & Engel, Professional
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clubman.com>, registered with Enom, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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 email@example.com by e-mail.
Having received no timely 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 <clubman.com> domain name is identical to Complainant’s CLUBMAN mark.
2. Respondent does not have any rights or legitimate interests in the <clubman.com> domain name.
3. Respondent registered and used the <clubman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Industries, manufactures and produces beauty, personal care and grooming products. In connection with the provision of these products, Complainant has registered the CLUBMAN mark (Reg. No. 1,990,012 issued July 30, 1996) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <clubman.com>
domain name on
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 asserts rights in the CLUBMAN mark through
registration with the USPTO. The Panel
finds that Complainant’s timely registration and subsequent use of the CLUBMAN
mark for over eleven years sufficiently establishes rights in the mark pursuant
to Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
domain name contains Complainant’s CLUBMAN mark in its entirety and merely adds
the generic top-level domain (“gTLD”) “.com.”
The Panel therefore finds that Respondent’s <clubman.com> domain name is identical to Complainant’s
CLUBMAN mark for purposes of Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost
in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). The Panel finds that Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy.
Respondent’s <clubman.com> domain name resolves to an inactive website. The Panel finds that Respondent’s failure to associate content with its disputed domain name demonstrates a lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
An examination of Respondent’s WHOIS registration
information reveals that the registrant of the <clubman.com> domain name is “Oz Domains.” In light of the lack of countervailing
evidence, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent, through the website associated with the
<bwired.com> domain name, is offering to sell the disputed domain name
for $50,000, an amount which likely exceeds the out-of-pocket costs associated
with the <clubman.com>
domain name. The Panel finds that
Respondent’s offer to sell the disputed domain name for a cost exceeding
out-of-pocket costs establishes registration and use in bad faith pursuant to
Policy ¶ 4(b)(i).
See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb. Forum
As indicated above, Respondent has failed to associate content with its <clubman.com> domain name. Therefore, the Panel finds that Respondent’s inactivity with regard to its disputed domain name establishes registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also 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).
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 <clubman.com> domain name be TRANSFERRED from Respondent to Complainant.
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National Arbitration Forum
 The National Arbitration Forum received an untimely Response to the Complaint. That Response was forwarded to the Panel and it has been considered. Nothing in that Response would change the resolution of the Complaint.