Claim Number: FA0711001105729
Complainant is Macy's Inc. (“Complainant”), represented by Chester
Rothstein, of Amster, Rothstein & Ebenstein LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <employeeconnection.org>, registered with Bizcn.com, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On November 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 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 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 <employeeconnection.org> domain name is identical to Complainant’s EMPLOYEE CONNECTION mark.
2. Respondent does not have any rights or legitimate interests in the <employeeconnection.org> domain name.
3. Respondent registered and used the <employeeconnection.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Macy's Inc., is one of the largest retail
department store companies in the world, owning and operating department store
chains under the MACY’S and BLOOMINGDALE’S marks. Complainant has more than 900 department stores
Respondent registered the <employeeconnection.org>
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 does not have a registered trademark with any governmental authority for its EMPLOYEE CONNECTION mark. However, under Policy ¶ 4(a)(i), if Complainant can establish sufficient secondary meaning in its mark, registration with a trademark authority is unnecessary. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); 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 has been using its EMPLOYEE CONNECTION mark since at
least June 2001, and has been operating a website at the
<employeeconnection.net> domain name since at least December 2001. Complainant has provided evidence of its
promotion of its mark and website to its more than 200,000 employees, and to
the amount of money it has invested in maintaining and promoting the website
that operates under the EMPLOYEE CONNECTION mark. Complainant provides information on various
services for employees under this mark, including payroll and benefit
information. Accordingly, based on its
extensive and continuous use of the mark, the Panel finds that Complainant has
adequately established common law rights in the EMPLOYEE CONNECTION mark
sufficient to satisfy the requirements of Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com,
FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the
complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local
consumers sufficient to establish common law rights where the complainant had
been continuously and extensively promoting a real estate development under the
mark for several years); see also Toyota
The Panel finds that the <employeeconnection.org> domain
name is identical to Complainant’s EMPLOYEE CONNECTION mark under
Policy ¶ 4(a)(i), as the disputed domain name simply removes the space between
the two words in the mark and adds the generic top-level domain (“gTLD”)
“.org.” Neither of these modifications
are relevant under Policy ¶ 4(a)(i), due to the nature
of domain names, and as such, the Panel holds the disputed domain name
identical to Complainant’s mark under Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii),
Complainant must present a prima facie
case that Respondent lacks rights and legitimate interests in the <employeeconnection.org>
domain name. Once Complainant
has established such a case, as the Panel finds it has done here, the burden
shifts to Respondent to show that it has rights or legitimate interests with
regard to the disputed domain name. See
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”); see
also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent’s WHOIS information lists Respondent as “Dr.MarcoFerro,” and there is no other evidence that Respondent is or ever has been commonly known by the disputed domain name or authorized to use Complainant’s mark. Thus, the Panel finds no evidence that Respondent is commonly known by the <employeeconnection.org> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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 is using the <employeeconnection.org>
domain name to operate a website that displays hyperlinks to various
third-party websites. These hyperlinks
are displayed on Respondent’s website under terms directly relating to services
offered by Complainant under its EMPLOYEE CONNECTION mark, including payroll
services. Thus, there is a possibility
that Internet users attempting to locate Complainant’s website may unknowingly
give personal information to Respondent.
The Panel finds that Respondent’s use of the <employeeconnection.org>
domain name is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is commercially benefiting
through the use of the <employeeconnection.org> domain name,
either through the accrual of click-through fees, or through the gaining of
personal information from Complainant’s employees, or both. Such use of the disputed domain name is
capable of creating a likelihood of confusion as to Complainant’s source,
sponsorship, affiliation or endorsement with the <employeeconnection.org>
domain name and corresponding website, particularly due to the content
displayed on the website that resolves from the disputed domain name. The Panel therefore finds evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See Am.
Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum
Respondent has also been the respondent in several previous
UDRP decisions in which the disputed domain names in those cases were
transferred from Respondent to the respective complainants in those cases. See
Int’l Olympic Comm. & Comitato
Organizzatore XX Giochi Olimpici v. Dr. Marco Ferro, FA 604980 (Nat. Arb.
Moreover, as the website that resolves from the <employeeconnection.org>
domain name displays hyperlinks to websites that may be used to gain personal
information from Internet users, the Panel finds further evidence of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Juno Online Servs.,
Inc. v. Nelson, FA 241972 (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 <employeeconnection.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 18, 2007
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