Xcentric Ventures, L.L.C. v. WhoisGuard a/k/a WhoisGuard Protected
Claim Number: FA0802001153351
Complainant is Xcentric Ventures, L.L.C. (“Complainant”), represented by Adam
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebadbusinessbureau.com>, registered with Enom, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 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 <thebadbusinessbureau.com> domain name is confusingly similar to Complainant’s BADBUSINESSBUREAU mark.
2. Respondent does not have any rights or legitimate interests in the <thebadbusinessbureau.com> domain name.
3. Respondent registered and used the <thebadbusinessbureau.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Xcentric Ventures LLC, operates the consumer
protection website known as “The Rip-Off Report,” located at <ripoffreport.com>. Complainant owns a trademark registration for
the RIP-OFF REPORT mark through its filing with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,958,949 issued
Respondent registered the <thebadbusinessbureau.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.
Complainant does not have a registered trademark for the
BADBUSINESSBUREAU mark. However,
registration is unnecessary pursuant to Policy ¶ 4(a)(i),
provided Complainant can establish common law rights in the mark. See
SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Complainant has established common law rights in the
BADBUSINESSBUREAU mark pursuant to Policy ¶ 4(a)(i)
through its history of use. Complainant
has operated the <badbusinessbureau.com> domain
name since 1998 to resolve to Complainant’s trademarked and copyrighted website
located at the <ripoffreport.com> domain name, where Complainant provided
information in the field of consumer protection. The Panel finds that Complainant has
established common law rights by acquiring a secondary meaning among the
general public in the BADBUSINESSBUREAU mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum
Respondent’s <thebadbusinessbureau.com> domain name is confusingly
similar to Complainant’s BADBUSINESS BUREAU mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
name contains Complainant’s mark in its entirety, adds the generic preposition
“the” and adds the generic top-level domain “.com.” The Panel finds that a disputed domain name
that adds a preposition before a complainant’s mark fails to create distinguish
the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). See Marriott
Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May
28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the
domain names fails to make them separate and distinct, as distinguishable from
Complainant’s marks.”); see also John
Fairfax Publ’ns Pty Ltd. v. Pro-Life Domains Not for
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and
legitimate interests in the disputed domain name. When Complainant makes a prima facie case in support of its allegations, the burden is
shifted to Respondent to prove that it does have rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case,
Complainant has established a prima facie
case. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO
Due to Respondent’s failure to respond to the Complaint, the
Panel may assume that Respondent does not have rights or legitimate interests
in the disputed domain name. See CMGI,
Inc. v. Reyes, D2000-0572 (WIPO
Respondent’s registration and use of the disputed domain name by putting an exact copy of Complainant’s official website on the associated website constitutes as an attempt by Respondent to pass itself off as Complainant. The Panel finds that this type of action is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Complainant contends that Respondent is not commonly known by the <thebadbusinessbureau.com> domain name. Respondent’s WHOIS information gives no information that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that without affirmative evidence of being commonly known by the disputed domain name, Respondent lacks all rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s confusingly similar domain name and attempt to pass itself off as Complainant is evidence of bad faith. The Panel finds that this constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
In addition, Respondent’s duplicating of Complainant’s website exactly and the registration of the <thebadbusinessbureau.com> domain name which is nearly identical to Complainant’s BADBUSINESSBUREAU are evidence that Respondent had actual knowledge of Complainant’s rights in the mark. The Panel finds this type of activity constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated the complainant’s name); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to the respondent’s registration of the domain name, and (3) the respondent fails to allege any good faith basis for use of the domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <thebadbusinessbureau.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
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