OP Holdings LLC v. Optical Provider of
Claim Number: FA0711001110751
Complainant is OP Holdings LLC (“Complainant”), represented by Roberta
S. Bren, of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <op.com>, registered with Planetdomain Pty Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@op.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <op.com> domain name is identical to Complainant’s OP mark.
2. Respondent does not have any rights or legitimate interests in the <op.com> domain name.
3. Respondent registered and used the <op.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant and its predecessors-in-interest have continuously used the OP mark worldwide in connection with a wide range of retail products originating with the surfboard brand OP since 1972. Complainant currently owns numerous registrations for the OP mark worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,293,032, issued Sept. 4, 1984).
The <op.com>
domain name was registered 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 has sufficiently established rights in the OP
mark through registration 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 <op.com> domain name contains Complainant’s
OP mark in its entirety and 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. Therefore, the Panel finds
that the <op.com> domain name is identical to Complainant’s OP
mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost
in Space, SA, FA 117330 (Nat. Arb. Forum
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 VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the
Complaint. As a result, the Panel
presumes that Respondent has no rights or legitimate interests in the disputed
domain name, but will nonetheless examine 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.”).
Respondent’s WHOIS information lists “Optical Provider of
South Korea” listing the contact person to be “Daehan Minguk.” Daehan Minguk is a transliteration of the
Korean name for the
The <op.com> domain name currently resolves to
an inactive website. The Panel finds that this is not 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). See Melbourne
IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or
legitimate interests in the domain name where there is no proof that the
respondent made preparations to use the domain name or one like it in
connection with a bona fide offering of goods and services before notice
of the domain name dispute, the domain name did not resolve to a website, and
the respondent is not commonly known by the domain name); see also 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 TMP
Int’l, Inc. v. Baker Enters., FA 204112
(Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's
passive holding of the domain name does not establish rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant held
ownership of the disputed domain name for over seven years until the WHOIS
information for the <op.com> domain name was altered in August of 2007. The Panel finds that Complainant’s prior
registration of the disputed domain name is additional evidence that Respondent
has no rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii).
See Am. Anti-Vivisection Soc’y v.
“Infa dot Net” Web Servs.,
FA 95685 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has previously owned and controlled the <op.com>
domain name. The disputed domain name
was one of the main sources of information and advertising for the products
offered under Complainant’s mark. The
WHOIS information was altered to what it currently states in August of 2007 and
Complainant subsequently lost control over the <op.com> domain
name. The Panel finds that this
establishes that Respondent registered and is using the disputed domain name in
bad faith pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum
Moreover, no use is being made of the disputed domain name. It currently resolves to an inactive website. Absent any evidence to the contrary, the Panel finds this to demonstrate that Respondent registered and is using the <op.com> 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).
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 <op.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 9, 2007
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