International Longshore and Warehouse
Claim Number: FA0709001080638
Complainant is International Longshore and Warehouse Union, Local 13 (“Complainant”), represented by John
Kim, of Holguin, Garfield & Martinez, APLC, 800 W. Sixth Street, Suite
950, Los Angeles, CA 90017.
Respondent is Stephen Thomas c/o Stephen B. Thomas (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ilwu13.org>, registered with Register.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 21, 2007.
On September 20, 2007, Register.com confirmed by e-mail to the National Arbitration Forum that the <ilwu13.org> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 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@ilwu13.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <ilwu13.org> domain name is identical to Complainant’s ILWU13.ORG mark.
2. Respondent does not have any rights or legitimate interests in the <ilwu13.org> domain name.
3. Respondent registered and used the <ilwu13.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, International Longshore and Warehouse Union
(“ILWU”), is one of the oldest unions in the
In 1998, Complainant registered the <ilwu13.org> domain name to educate members, provide online networking and advertise its organization. Moreover, the domain name was used to create e-mail addresses for its office employees and members. Complainant hired Respondent as an information technology consultant in 2002 to improve the website and computer network for Complainant’s office. Respondent transferred during this time the registrant information to his own name and address. Once Complainant became aware of this, it asked Respondent to transfer the registrant information back, and Respondent accordingly promised to do so. Complainant and Respondent’s business relationship ceased in 2002 and Respondent has yet to transfer the domain name back to Complainant. Until recently, when Complainant attempted to update its website and was informed that it was no longer the registrant and as such unable to make changes, Complainant had continued to use the disputed domain name and pay for its registration fees.
Respondent’s <ilwu13.org> domain name resolves to Complainant’s website, but Complainant is unable to make any changes to the website, as it is not the listed registrant.
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 need not have registered a mark with a governmental
authority in order to establish rights in it.
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
Complainant is one
of the oldest unions on the west coast, and the Los Angeles Chapter #13 represents
over 15,000 workers. In 1998,
Complainant registered and has ever since continuously used the <ilwu13.org> domain name in
connection with its website that provides information about the
Respondent’s <ilwu13.org> domain name contains Complainant’s ILWU13.ORG mark in
its entirety with no additional features added to distinguish it. Therefore, the Panel finds that Respondent’s
disputed domain name is identical to Complainant’s mark. See Porto Chico Stores, Inc. v. Zambon,
D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether
a mark is identical or confusingly similar “by comparing the trademark and the
disputed domain name, without regard to the circumstances under which either
may be used”); see also Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic].”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain name. 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 established a prima facie case and the burden is thus shifted to Respondent to
demonstrate that it does have rights or legitimate interests in the <ilwu13.org> domain name. See 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.”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”).
Respondent has not submitted a response to the Complaint. Accordingly, the Panel presumes that Respondent has no rights or legitimate interests in the <ilwu13.org> domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel will still consider all the evidence in the record in light of the factors listed under Policy ¶ 4(c).
Moreover, Respondent is a former consultant for Complainant, hired in 2002 as an independent contractor for the purpose of updating and improving Complainant’s website and networking capabilities associated with the <ilwu13.org> domain name. The Panel finds this to be additional evidence that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark); see also 163972 Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (a former employee hired to design a website identical to their employer’s service marks has actual knowledge of their former employers rights in those service marks).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent has ever been or is commonly known
by the disputed domain name. Moreover,
Respondent never sought or received permission to transfer the <ilwu13.org> domain name to himself in 2002, nor at any time to use
Complainant’s mark in any way beyond the scope of his employment with
Complainant. The Panel finds thus that
Respondent is not commonly known by the disputed domain name pusuant to Policy
¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Furthermore,
Respondent is not making any use of the disputed domain name and Complainant
has continued to use the <ilwu13.org> domain name since it was
fraduently transferred to Respondent in 2002.
Complainant does not maintain complete control of the site though and
Respondent could at any time alter or delete Complainant’s website. Therefore, the Panel finds that Respondent
continues to pass itself off as Complainant despite its own lack of active use
of the disputed domain name and that this is neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to 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 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); 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).
Respondent’s <ilwu13.org> domain name is not used by Respondent, but resolves to Complainant’s website. Complainant makes continued use of the disputed domain name through its website and interoffice e-mail and networking system, yet Respondent retains ultimate control over the disputed domain name. The Panel finds that Respondent’s inactive use, ownership, and retained ultimate control of the disputed domain name is a continued threat to disrupt Complainant’s business, even though Complainant has continuously used the <ilwu13.org> domain name and paid for the necessary registration fees. The Panel finds as such that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); 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); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”).
Moreover,
Respondent was hired by Complainant to assist in updating and implementing
Complainant’s website and networking and e-mail system. Respondent had actual knowledge of
Complainant’s ILWU13.ORG mark at the time it transferred the registration to
itself without the permission of Complainant.
The Panel finds this to be further evidence of Respondent’s bad faith
registration and use of the <ilwu13.org>
domain name pursuant to Policy ¶ 4(a)(iii).
See 163972 Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3,
2000) (finding that because the respondent was hired by the complainant to help
design and register the complainant’s websites, the respondent had intimate
knowledge of the complainant’s business and use of its TEENFLO mark. Therefore, the
respondent’s registration of the <teenflo.com> domain name was in bad
faith); see
also Arab Bank for Inv. &
Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith
registration and use where the respondent was formerly employed by the
complainant, was fully aware of the name of her employer, and made no use of
the infringing domain name).
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 <ilwu13.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 5, 2007
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