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,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexcooperauctioneers.com>, 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
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 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.
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 <alexcooperauctioneers.com> domain name is confusingly similar to Complainant’s ALEX COOPER mark.
2. Respondent does not have any rights or legitimate interests in the <alexcooperauctioneers.com> domain name.
3. Respondent registered and used the <alexcooperauctioneers.com> 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 <alexcooper.com> domain name. Complainant filed for registration of the
ALEX COOPER mark with the USPTO on
Respondent registered the <alexcooperauctioneers.com>
domain name 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.
Under Policy ¶ 4(a)(i), Complainant
is not required to own a trademark registration to establish rights to the
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 <alexcooper.com> 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
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 ¶
panel in Space Imaging LLC v. Brownell, AF-0298 (eResolution
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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
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
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
Complainant asserts that the disputed domain name resolves
to a parked page at the <hitfarm.com> 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 <alexcooperauctioneers.com>
domain name. The print-outs of the
disputed domain name show links to auction-related websites as well as
unrelated websites. The Panel in
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is commercially benefiting by using the disputed domain name to redirect Internet users to the <hitfarm.com> domain name. The print-outs provided in the Complaint also show that the website that resolves from the <alexcooperauctioneers.com> 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 <alexcooperauctioneers.com> 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 <mailonsunday.com> 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 <alexcooperauctioneers.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 5, 2008
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