Podrunner LLC v. Domain Drop S.A
Claim Number: FA0801001128482
Complainant is Podrunner LLC (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <podrunner.com>, registered with Belgiumdomains, LLC
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 January 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2008.
On January 14, 2008, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <podrunner.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 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 postmaster@podrunner.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2008, 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 <podrunner.com> domain name is identical to Complainant’s PODRUNNER mark.
2. Respondent does not have any rights or legitimate interests in the <podrunner.com> domain name.
3. Respondent registered and used the <podrunner.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Podrunner, LLC, is a new business that is
proposing to offer two weekly podcasts to customers. In addition, they are proposing to offer
merchandise with their branding such as shirts, water bottles and iPod
covers. Complainant filed an Articles of
Organization in
Respondent registered the disputed domain name on March 30, 2006. Respondent is using the disputed domain name to resolve to a website that displays advertisements.
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 offers proof of its rights in its PODRUNNER mark through its Articles of Organization and USPTO application. The Panel finds that despite this minimal evidence, Complainant does have rights in its PODRUNNER mark at least sufficient to bring this Complaint and satisfy Policy ¶ 4(a)(i). See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).
Respondent’s <podrunner.com> domain name is identical to Complainant’s PODRUNNER mark. The disputed domain name fully incorporates Complainant’s mark and the addition of the generic top-level domain (gTLD) “.com” is considered irrelevant in determining whether a disputed domain name is identical to a mark. Therefore, the Panel finds the disputed domain name is identical to Complainant’s PODRUNNER mark pursuant to 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 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).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent does not have
rights or legitimate interests in the disputed domain name. Once Complainant presents a prima facie
case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth
concrete evidence that it does possess rights to or legitimate interests in the
disputed domain name. The Panel finds that, in its few sentences,
Complainant has established the bare minimum in order to present a prima facie case in the matter at
hand. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the 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
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Complainant alleges Respondent does not have rights or legitimate interests in the disputed domain name because the disputed domain name is being used to display advertisements for which Respondent presumably receives click-through fees. Other panels have previously held that mere evidence of click-through advertising is not sufficient to establish that a respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Fluke Corp. v. Name Admin. Inc., FA 430650 (Nat. Arb. Forum Apr. 26, 2005). Likewise, the Panel finds that Complainant has not presented evidence to establish that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest); see also Burke Inc v. Leader Techs. LLC, FA 102822 (Nat. Arb. Forum Mar. 29, 2002) (finding that the respondent’s use of the disputed domain name to offer non-competing goods and services in commerce, starting twelve months prior to complainant’s registration, was evidence that the respondent had rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶ 4(a)(ii) has not been satisfied.
Complainant has failed to make a substantial claim alleging
bad faith registration and use. In
addition, Respondent’s registration and use of the disputed domain name
predates Complainant’s first alleged rights in its PODRUNNER mark. Therefore, the Panel finds that Respondent
did not register and use the disputed domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). See Interep Nat'l Radio
Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000)
(finding no bad faith where the respondent registered the domain prior to
complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec.
11, 2000) (finding no bad faith where the respondent registered the domain name
in question before application and commencement of use of the trademark by
complainant).
The Panel finds Policy ¶ 4(a)(iii) has not been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
John J. Upchurch, Panelist
Dated: March 4, 2008
National
Arbitration Forum