iplacement, Inc. v. Asya Ioffe
Claim Number: FA0801001125680
Complainant is iplacement, Inc. (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iplacement.biz>, registered with Melbourne It, Ltd.
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 January 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2008.
On January 6, 2008, Melbourne It Ltd confirmed by e-mail to the National Arbitration Forum that the <iplacement.biz> domain name is registered with Melbourne It Ltd and that Respondent is the current registrant of the name. Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd 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 January 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 2008 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 February 6, 2008, 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 full-service staffing solutions firm providing a wide variety of clients.
Complainant registered the IPLACEMENT service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,152,789, issued Oct. 10, 2006).
Respondent registered the disputed domain name July 7, 2007.
Respondent is not commonly known by <iplacement.biz> domain name.
Respondent is not licenced or otherwise authorized to use the IPLACEMENT trademark.
The disputed domain name is not being actively used.
Respondent’s <iplacement.biz> domain name is identical to Complainant’s IPLACEMENT mark.
Respondent does not have any rights or legitimate interests in the <iplacement.biz> domain name.
Respondent registered and uses the <iplacement.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a 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 same 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’s registration of the IPLACEMENT service mark with the USPTO establishes its rights under 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.”
Respondent’s <iplacement.biz> domain name is substantively identical to Complainant’s IPLACEMENT mark, in that it incorporates the mark in its entirety and merely adds the generic top-level domain “.biz.” The addition of “.biz” is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding the domain name <nike.net> identical to a complainant’s famous 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 the purpose of determining whether it is identical or confusingly similar to a competing mark).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <iplacement.biz> domain name. Complainant has the burden of proof for this allegation persuant to Policy ¶ 4(a)(ii). Once Complainant has made out a prima facie showing, the burden of proof shifts to Respondent. 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 in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist).
On the record before us, Complainant has met its burden. Respondent’s failure to respond to the Complaint therefore permits us to presume that Respondent has no rights or legitimate interests in the <iplacement.biz> 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000): “Failure of a respondent to come forward to [contest a complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.” We will nonetheless examine the record to determine if there is any basis for concluding that Respondent has legitimate rights to or interests in its domain name under Policy ¶ 4(c).
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by <iplacement.biz> domain name persuant to Policy ¶ 4(c)(ii). Indeed the record contains nothing to suggest Respondent is commonly known by disputed domain name. Moreover, the pertinent WHOIS information makes no reference to the <iplacement.biz> domain name, and Respondent soes not deny the allegation that it is not licenced or otherwise authorized to use the IPLACEMENT service mark. On these facts, we conclude that Respondent has no rights to or legitimate interests in the <iplacement.biz> 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 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).
We also observe that Respondent does not deny the assertion by Complainant that the <iplacement.biz> domain name does not currently resolve to an active website. Likewise, there is no other evidence suggesting that Respondent is actively using the disputed domain name. We conclude, therefore, that Respondent is not making 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). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests in a respondent where that respondent failed to submit a response to a complaint and had made no use of the domain name there in question).
The Panel thus finds that the Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s failure actively to use the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See 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); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name or website connected with a domain name, and that such passive holding permits an inference of registration and use in bad faith).
In addition, it appears that Respondent registered the <iplacement.biz> domain name with at least constructive knowledge of Complainant’s rights in the IPLACEMENT service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar 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 the 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 <iplacement.biz> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 20, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum