national arbitration forum

 

DECISION

 

International Medical Group, Inc. v Jonathan Bond a/k/a jonathan bond a/k/a KKB a/k/a j bond a/k/a j b a/k/a Jon Bond a/k/a JB a/k/a Unlicensed

Claim Number: FA0711001106364

 

PARTIES

Complainant is International Medical Group Inc. (“Complainant”), represented by Daniel B. Dovenbarger, 2960 North Meridian Street, Indianapolis, IN 46208.  Respondent is Jonathan Bond a/k/a jonathan bond a/k/a KKB a/k/a j bond a/k/a j b a/k/a Jon Bond a/k/a JB a/k/a Unlicensed (“Respondent”), 145-157 St John Street, London EC1V 4PY, GB.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <not-img-europe.com>, <unlicensed.info>, <byebyejoe.com>, <bookwriter.org> and <jbclaims.com>, registered with Godaddy.com, Inc., and <img-sucks.info> and <treatingcustomersfairly.info> registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 8, 2007.

 

On November 6, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <not-img-europe.com>, <unlicensed.info>, <byebyejoe.com>, <bookwriter.org> and <jbclaims.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  On November 6, 2007, Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <img-sucks.info> and <treatingcustomersfairly.info> domain names are registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names.  Godaddy.com, Inc. and Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by their respective registration agreements 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 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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@not-img-europe.com, postmaster@img-sucks.info, postmaster@unlicensed.info, postmaster@byebyejoe.com, postmaster@bookwriter.org, postmaster@jbclaims.com, and postmaster@treatingcustomersfairly.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <not-img-europe.com>, <img-sucks.info>, <unlicensed.info>, <byebyejoe.com>, <bookwriter.org>, <jbclaims.com> and <treatingcustomersfairly.info> domain names are confusingly similar to Complainant’s IMG mark.

 

2.      Respondent does not have any rights or legitimate interests in the <not-img-europe.com>, <img-sucks.info>, <unlicensed.info>, <byebyejoe.com>, <bookwriter.org>, <jbclaims.com> and <treatingcustomersfairly.info> domain names.

 

3.      Respondent registered and used the <not-img-europe.com>, <img-sucks.info>, <unlicensed.info>, <byebyejoe.com>, <bookwriter.org>, <jbclaims.com> and <treatingcustomersfairly.info> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant currently holds registrations of the IMG mark in connection with various financial and insurance services with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,661,719 issued Dec. 17, 2002).

 

The disputed domain names are either directly owned or operated by Respondent, individually known by one of the following aliases: “Jonathan Bond,” “KKB,” “jonathan bond,” “j bond,” “j b,” “Jon Bond,” “JB” and “Unlicensed.”  The listed registrants for the <not-img-europe.com>, <unlicensed.info>, <byebyejoe.com> and <bookwriter.org> domain names all have the same e-mail contact person.  The contact phone number is the same for the <not-img-europe.com >, <unlicensed.info>, <byebyejoe.com>, and <jbclaims.com> domain names.  The registrant address provided is the same for <unlicensed.info>, <byebyejoe.com> and <jbclaims.com> domain names.  The <treatingcustomersfairly.info> and <jbclaims.com> domain names have a different contact address then the rest, but their e-mail contacts direct messages to the <unlicensed.info> domain name.  The <img-sucks.info> domain name does not contain any registrant or contact information that is either a variation on any of Respondent’s other aliases or is identical to, similar to, or directs Internet users in any way to the other disputed domain names.  The website that resolves from the <img-sucks.info> domain name does contain messages signed by a “Jon Bond.”

 

Respondent’s <not-img-europe.com> domain name was registered on March 24, 2005.  Respondent’s <img-sucks.info> domain name was registered on January 16, 2006.  Respondent’s <unlicensed.info> domain name was registered on April 7, 2005.  Respondent’s <byebyejoe.com> domain name was registered on March 25, 2005.  Respondent’s <bookwriter.org> domain name was registered on May 16, 2001.  Respondent’s <jbclaims.com> domain name was registered on June 20, 2005.  Respondent’s <treatingcustomersfairly.info> domain name was registered on September 15, 2005.  All of the disputed domain names resolve to various websites that include third-party advertisements, links and information criticizing and alleging unlawful or unethical business practices on the part of Complainant.  Respondent also offers competing insurance advising services elsewhere on the Internet and has been the subject of libel and slander proceedings in federal district court in connection with Complainant.

 

 

 

 

 

DISCUSSION

 

Preliminary Issue: Multiple Respondents

 

The Panel must first consider whether these proceedings have been properly instituted.  UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that Respondent is operating under various asserted alleged aliases.  Additionally, the National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in relation to the domain names it deems to be insufficiently linked to Respondent.

 

The listed registrants for the <not-img-europe.com>, <unlicensed.info>, <byebyejoe.com> and <bookwriter.org> domain names all have the same e-mail contact person.  The contact phone number is the same for the <not-img-europe.com >, <unlicensed.info>, <byebyejoe.com> and <jbclaims.com> domain names.  The registrant address provided is the same for <unlicensed.info>, <byebyejoe.com> and <jbclaims.com> domain names.  The <treatingcustomersfairly.info> and <jbclaims.com> domain name have a different contact address then the rest, but their e-mail contacts direct messages to the <unlicensed.info> domain name.  The Panel finds that listed aliases “Jonathan Bond,” “jonathan bond,” “j bond,” “j b,” “Jon Bond,” “JB” and “Unlicensed” are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complainant is justified and proper.  See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").

 

The <img-sucks.info> domain name does not contain any information in its WHOIS record that is either a variation on any of the Respondent’s aliases or points to or shares registrant or contact information that is identical to, similar to, or directs Internet users in any way to the other disputed domain names.  Complainant contends that because there is content on the website that resolves from the <img-sucks.info> domain name which contains messages signed by a “Jon Bond,” the Panel may find that this domain name is also owned by Respondent.  The Panel finds though that because nowhere within the WHOIS information for the <img-sucks.info> domain name is there a demonstrable connection to Respondent, the alias “KKB” is not the same person or entity, or entities controlled by the same person or entity as Respondent.  See Boehringer Ingelheim Pharma GmbH & Co. KG v. Domains by Proxy, Inc., D2006-0465 (WIPO June 14, 2006) (partial dismissal of complaint against the additional respondent, where the second respondent was not found to be the same person or entity as the first respondent, because the WHOIS contact details were different).

Therefore, the Panel DENIES the Complaint in regards to the <img-sucks.info> domain name pursuant to Supplemental Rule 4(f)(ii).

 

Primary Issues

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has sufficiently established its rights in the IMG mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The <not-img-europe.com> domain name contains Complainant’s IMG mark in its entirety, along with the generic term “not,” and the geographic term “europe,” both of which are separated from Complainant’s mark with hyphens.  Further, this disputed domain name contains the generic top-level domain (“gTLD”) “.com.”  It is well-established that the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  Additionally, the inclusion of hyphens, generic terms, and geographic terms do not distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).  Consequently, the Panel finds that the <not-img-europe.com> domain name is confusingly similar to Complainant’s IMG mark pursuant to 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 Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

The Panel concludes that in regards to the <not-img-europe.com> domain name, Complainant has satisfied Policy ¶ 4(a)(i). 

 

The <unlicensed.info>, <byebyejoe.com>, <bookwriter.org>, <jbclaims.com> and <treatingcustomersfairly.info> domain names do not contain Complainant’s IMG mark or any variation thereof.  Therefore, the Panel concludes that these disputed domain names are not identical or confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum Mar. 6, 2001) (finding that the domain name <hearld.com> is not identical or confusingly similar to a trademark in which the complainant has rights); see also Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000) (finding that the domain name, <hot18to30.com>, is neither identical nor confusingly similar to the complainant’s CLUB 18-30 trademark).

 

The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) in regard to the <unlicensed.info>, <byebyejoe.com>, <bookwriter.org>, <jbclaims.com> and <treatingcustomersfairly.info> domain names because these disputed domain names are not identical or confusingly similar to Complainant’s mark.  Furthermore, the Panel therefore declines to analyze these disputed domain names under the other two elements of the Policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <not-img-europe.com> domain name.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).  The Panel finds that Complainant has established a prima facie case and that the burden thus shifts to Respondent to demonstrate that it does have rights or legitimate interests in the <not-img-europe.com> 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 failed to submit a response to the Complaint.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the <not-img-europe.com> domain name, but will nonetheless consider the evidence in the record in light of the factors listed under Policy ¶ 4(c).  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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).

 

Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the <not-img-europe.com> domain name.  Furthermore, Respondent has not sought nor has Complainant granted permission to use the IMG mark in any way.  As a result, the Panel finds that Respondent is not commonly known by the <not-img-europe.com> domain name pursuant to Policy ¶ (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).

 

Respondent’s <not-img-europe.com> domain name resolves to a website featuring advertisements and links to various third parties.  Additionally, the website displays inflammatory language that alleges unlawful or unethical business practices on the part of Complainant.  The Panel finds this to be neither a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected.).

 

The Panel concludes that in regards to the <not-img-europe.com> domain name, Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

The <not-img-europe.com> domain name contains Complainant’s IMG mark in its entirety and resolves to a website that contains defamatory information.  Respondent and Complainant have been parties to litigation regarding libel and slander accusations.  Moreover, Respondent offers competing insurance advising services elsewhere on the Internet.  As a result and due to the competitive nature of the parties’ relationship, the Panel finds that Respondent registered and is using the <not-img-europe.com> domain name in bad faith for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).

 

Additionally, the <not-img-europe.com> domain name incorporates Complainant’s entire IMG mark and contains advertisements.  The Panel finds that Respondent is commercially benefiting from the likelihood of confusion Internet users will have between the <not-img-europe.com> domain name and Complainant’s mark and as such is further evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).

 

Finally, Respondent’s <not-img-europe.com> domain name is confusingly similar to Complainant’s mark and is used to display information criticizing Complainant and its business practices.  The Panel finds that, although the criticism is not itself evidence of bad faith, because Respondent has engaged in such activity with a domain name that is confusingly similar to Complainant’s IMG mark, this serves as additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website); see also TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).

 

The Panel concludes that in regards to the <not-img-europe.com> domain name, Complainant has satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in regards to the <not-img-europe.com> domain name.

 

Accordingly, it is Ordered that the <not-img-europe.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Having found the alias “KKB” is not the same person or entity, or entities controlled by the same person or entity as Respondent, the Panel concludes that relief shall be DENIED in regards to the <img-sucks.info> domain name.

 

Having failed to establish the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED in regard to the <unlicensed.info>, <byebyejoe.com>, <bookwriter.org>, <jbclaims.com> and <treatingcustomersfairly.info> domain names.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  January 1, 2008

 

 

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