national arbitration forum




Alex Cooper Auctioneers Inc. v. PabloPalermao

Claim Number: FA0801001138721



Complainant is Alex Cooper Auctioneers Inc. (“Complainant”), represented by William S. Davis, Jr., of Friedman & Friedman LLP, Maryland, USA.  Respondent is Pablo Palermao (“Respondent”), Peru.



The domain name at issue is <>, registered with Moniker Online Services, Inc.



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 January 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2008.


On January 23, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 January 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 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 by e-mail.


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


On February 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <> domain name is confusingly similar to Complainant’s ALEX COOPER mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


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



Complainant, Alex Cooper Auctioneers Inc., is an auctioneer service, and has used the ALEX COOPER mark in conjunction with the retail sale of oriental and other rugs, conducting auction sales including real estate and Internet auction, and antique and personal property appraisals.  According to Complainant’s application with the United States Patent and Trademark Office (“USPTO”), the mark was first used in commerce in 1995.  Complainant also owns the <> domain name.  Complainant filed for registration of the ALEX COOPER mark with the USPTO on June 8, 2005, and registered the mark on July 4, 2006 (Reg. No. 3,111,029).


Respondent registered the <> domain name on October 29, 2004.  The disputed domain name redirects Internet users to the <> domain name.   



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


Under Policy ¶ 4(a)(i), Complainant is not required to own a trademark registration to establish rights to the mark.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).


While Complainant currently holds a trademark registration with the USPTO, Complainant filed its trademark application after Respondent’s registration of the disputed domain name.  However, Complainant has established common law rights in the ALEX COOPER mark which predate its trademark registration, through continuous use of the mark in connection with the auctioneering business since at least 1995.  Complainant is known for its high standards in the auction business.  Complainant also owns the <> domain name.  Therefore, the Panel concludes that Complainant’s ALEX COOPER mark has acquired secondary meaning sufficient to establish common law rights under Policy ¶ 4(a)(i) to predate the registration of Complainant’s mark with the USPTO.  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).


Respondent’s <> domain name is confusingly similar to Complainant’s ALEX COOPER mark because it uses the entire mark and adds the generic term “auctioneers.”  The generic term “auctioneers” directly relates to Complainant’s auctioneering business, and therefore does not distinguish the disputed domain name from the ALEX COOPER mark under Policy ¶ 4(a)(i).  The panel in Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) found the disputed domain name in that case confusingly similar because the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business.  Moreover, because all registered domain names are required to have a top-level domain, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not adequately distinguish the disputed domain name from Complainant’s mark in this proceeding.  The Panel thus concludes that the <> domain name is confusingly similar to Complainant’s ALEX COOPER mark pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).


The Panel finds that Policy ¶ 4(a)(i) has been satisfied.


Rights or Legitimate Interests


Complainant’s initial burden under Policy ¶ 4(a)(ii) is to establish that Respondent lacks all rights and legitimate interests in the disputed domain name.  A mere assertion that Respondent lacks these rights and interests is sufficient to satisfy the burden.  The Panel concludes that the Complaint is sufficient to shift the burden to Respondent to show that it has rights or legitimate interests in the disputed 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. 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 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”). 


Respondent’s failure to respond to the Complaint allows the Panel to presume that Respondent lacks all rights and legitimate interests in the disputed domain name.  In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel found that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence.  However, the Panel will consider all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).  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.”). 


The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also 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). 


Complainant asserts that the disputed domain name resolves to a parked page at the <> domain name, and that Respondent is intentionally trading on the goodwill of the ALEX COOPER mark.  Complainant has provided print-outs of the website that resolves from the <> domain name.  The print-outs of the disputed domain name show links to auction-related websites as well as unrelated websites.  The Panel in U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003), held that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services.  Here, the Panel also finds that this use does not show 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 MSNBC Cable, LLC v., D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).


The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 




Registration and Use in Bad Faith


Complainant contends that Respondent is commercially benefiting by using the disputed domain name to redirect Internet users to the <> domain name.  The print-outs provided in the Complaint also show that the website that resolves from the <> domain name links to auction-related websites.  The Panel infers that Respondent is earning revenue from this service, and benefiting from the goodwill associated with the ALEX COOPER mark.  The <> domain name is capable of creating confusion as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name.  The Panel finds that Respondent’s use is evidence of registration and use in bad faith.  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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).     


The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.




Sandra J. Franklin, Panelist

Dated:  March 5, 2008



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