Cobasys, LLC. v. Shawn Lee
Claim Number: FA0711001106998
Complainant is Cobasys, LLC (“Complainant”), represented by George
T. Schooff, 5445 Corporate Drive, Suite 200,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cobasys.net>, registered with Ename, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 13, 2007.
On November 8, 2007, Ename, Inc confirmed by e-mail to the National Arbitration Forum that the <cobasys.net> domain name is registered with Ename, Inc and that Respondent is the current registrant of the name. Ename, Inc has verified that Respondent is bound by the Ename, 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 postmaster@cobasys.net 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 Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a
Complainant has used the COBASYS mark in connection with its
business since 2004, and currently markets its batteries and other products
both in the
Complainant holds a trademark registration for the COBASYS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,974,425, issued July 19, 2005).
Complainant also promotes its products online at the <cobasys.com> domain name.
Respondent registered the <cobasys.net> domain name on July 5, 2007.
Respondent is not commonly known by the <cobasys.net> domain name.
Complainant has not given Respondent permission to use its COBASYS trademark for any purpose.
Respondent’s disputed domain name resolves to a website containing links to various third-party sites unrelated to the business of Complainant.
Respondent’s <cobasys.net> domain name is substantively identical to Complainant’s COBASYS mark.
Respondent does not have any rights to or legitimate interests in the disputed <cobasys.net> domain name.
Respondent registered and uses the <cobasys.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark 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 was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the COBASYS mark by virtue of its registration of the mark with the USPTO. This registration is sufficient to establish Complainant’s rights in the COBASYS mark 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Complainant argues that the <cobasys.net> domain name is identical to Complainant’s COBASYS mark, because the disputed domain name includes the entire mark and merely adds the generic top-level domain (“gTLD”) “.net”. It is well-established that the addition of a gTLD is irrelevant in determining whether a disputed domain name is identical to a competing mark, inasmuch as a top-level domain is required of all domain names. Thus, we find that Respondent’s <cobasys.net> domain name is identical to Complainant’s COBASYS mark under Policy ¶ 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to a complainant’s NIKE mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposea of determining whether it is identical or confusingly similar).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of making out a prima facie case to show that Respondent lacks rights to and legitimate interests in the <cobasys.net> domain name. Once Complainant has done so, the burden shifts to Respondent to refute that showing. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In the instant case, Complainant has established a prima facie case under the Policy.
And, because of Respondent’s failure to answer the Complaint, we may presume that Respondent lacks rights and legitimate interests in the disputed domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that a respondent’s failure to produce requested documentation supports a finding for a complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
However, we will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
We first observe in this connection that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <cobasys.net> domain name, which indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). We agree with this assertion, and we note that Respondent’s WHOIS information indicates that Respondent is “Shawn Lee,” and there is nothing else in the record to suggest that Respondent is known by the <cobasys.net> domain name. Further, Complainant alleges, and Respondent does not deny, that Complainant has not given Respondent permission to use its COBASYS mark for any purpose. Therefore, we conclude that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a 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 a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use a trademarked name).
We also mark that there is no dispute that Respondent’s <cobasys.net> domain name
resolves to a website featuring links to various third-party websites unrelated
to the business of Complainant, and we presume that Respondent earns
“click-through” fees from these links.
Such use does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii), but instead shows that Respondent has no rights or
legitimate interests in the <cobasys.net>
domain name under Policy ¶ 4(a)(ii).
See WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to
websites unrelated to a complainant’s mark, websites from which that respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat.
Arb. Forum Oct. 17, 2003):
Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Under this heading, Complainant contends that Respondent
registered and uses the <cobasys.net>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent does not dispute that it is using
the disputed domain name to divert Internet users, presumably seeking
Complainant’s business, to a website featuring links unrelated to the business
of Complainant, and we presume that Respondent profits from these links. Respondent is thus capitalizing on the likelihood
that users will be confused as to the possible source of the <cobasys.net> domain name and the
possibility of Complainant’s affiliation with the corresponding website. This is evidence of Respondent’s bad faith
registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003):
Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.
See also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark where a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition, it appears that Respondent registered the <cobasys.net> domain name
with at least constructive knowledge of Complainant’s rights in the COBASYS trademark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a substantively
identical domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <cobasys.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 18, 2007
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