Brendan Walsh v. Astrahosting Inc
Claim Number: FA0711001105758
Complainant is Brendan Walsh (“Complainant”), New York, USA. Respondent is Astrahosting Inc (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sheepstealers.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2007.
On November 1, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sheepstealers.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 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 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.
On December 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <sheepstealers.com> domain name is identical to Complainant’s SHEEPSTEALERS mark.
2. Respondent does not have any rights or legitimate interests in the <sheepstealers.com> domain name.
3. Respondent registered and used the <sheepstealers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brendan Walsh, is a native of County Roscommon, Ireland and the creator of a website dedicated to promoting sport and culture in County Roscommon. Complainant created its website in January 2003 using the mark SHEEPSTEALERS, as that is the historic nickname of County Roscommon and its amateur football team. Complainant’s website provided football game reports and results, pictures, multi-media, cultural information, and literary writing. The website was an established, popular site that gained positive reviews in Irish newspapers.
Complainant purchased the <sheepstealers.com> domain name through Respondent, a web-hosting company, to display this website beginning in 2003. However, when Respondent registered the disputed domain name for Complainant, it listed the registrant as “Astrahosting, Inc” rather “Brendan Walsh.” Thus, while Complainant has continued to pay the renewal and hosting fees for the <sheepstealers.com> domain name, Respondent has essentially retained control over the domain name. Respondent has often failed to timely renew the disputed domain name with the registrar, interrupting Complainant’s service.
Complainant now wishes to transfer its web-hosting services to a different provider, and Respondent refuses to release the <sheepstealers.com> domain name. Respondent recently notified Complainant that its website had been taken over by hackers, and currently the disputed domain name does not resolve to any active website.
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 to own a trademark registration to establish rights in the SHEEPSTEALERS mark 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 asserts common law rights in the SHEEPSTEALERS mark through its continuous and extensive use of the mark since 2003 in connection with its website dedicated to the promotion of County Roscommon. Complainant has provided screenshots of its website from 2003, 2004, and 2006. The website gained positive reviews in Irish newspapers and was an established website dedicated to Gaelic Games and culture. Thus, the Panel finds that the SHEEPSTEALERS mark has acquired secondary meaning sufficient to establish Complainant’s common law rights in the mark pursuant to 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 S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
The Panel further finds that the <sheepstealers.com> domain name is identical to Complainant’s SHEEPSTEALERS mark, as the disputed domain name incorporates the entire mark and merely adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. Since it is well-established under the UDRP that the addition of a top-level domain is irrelevant to the Policy ¶ 4(a)(i) analysis, the Panel concludes that the disputed domain name is identical to Complainant’s SHEEPSTEALERS mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case to show that Respondent lacks rights and legitimate interests in the disputed domain name, the burden shifts to Respondent to refute that showing. In the present case, the Panel finds that Complainant has established a prima facie case under the Policy. 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. 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 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’s failure to answer the Complaint raises the presumption that Respondent lacks rights and legitimate interests in the <sheepstealers.com> domain name. See 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will still examine all evidence in the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
There is no evidence in the record, including Respondent’s WHOIS information, to indicate that Respondent is commonly known by the <sheepstealers.com> domain name. Under Policy ¶ 4(c)(ii), the Panel finds that this indicates that Respondent lacks rights and legitimate interests in the disputed domain name. 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
There is no active website that currently resolves from the <sheepstealers.com> domain name. Moreover, although Respondent has previously allowed Complainant to display content at the disputed domain name, Respondent has continued to retain control of the <sheepstealers.com> domain name. Therefore, Respondent is essentially passing itself off as Complainant and profiting when Complainant pays fees to maintain the disputed domain name. The Panel finds that there is nothing in the record that indicates that Respondent is using the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Such use is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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 . . . .”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant further contends that Respondent registered and is using the <sheepstealers.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Although Respondent purported to register the disputed domain name for Complainant, it listed itself as the registrant. As mentioned above, Respondent is thus profiting when Complainant pays renewal and service fees, while Respondent maintains control over the disputed domain name. Furthermore, while the disputed domain name does not currently resolve to an active website, there is nothing to prevent Respondent from using the disputed domain name in the future to post content adverse to Complainant’s interests. Based on all of this evidence, the Panel finds that Respondent registered and is using the <sheepstealers.com> domain name in bad faith under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where the respondent failed to provide any evidence to controvert the complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
The Panel thus 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 <sheepstealers.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 26, 2007
National Arbitration Forum
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