Thule Organization Solutions, Inc. d/b/a Case Logic,
Inc. v. d&d comleader
Claim Number: FA0808001221717
Complainant is Thule Organization Solutions, Inc. d/b/a Case
Logic, Inc. (“Complainant”),
represented by Miriam Trudell, of Sheridan Ross P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <caselogickorea.com>, registered with Yesnic Co. Ltd.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 22, 2008.
On August 25, 2008, Yesnic Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <caselogickorea.com> domain name is registered with Yesnic Co. Ltd. and that Respondent is the current registrant of the name. Yesnic Co. Ltd. has verified that Respondent is bound by the Yesnic Co. 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 August 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 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@caselogickorea.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <caselogickorea.com> domain name is confusingly similar to Complainant’s CASE LOGIC mark.
2. Respondent does not have any rights or legitimate interests in the <caselogickorea.com> domain name.
3. Respondent registered and used the <caselogickorea.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been a producer of media storage products and accessories since at least 1986. Complainant markets its products under the CASE LOGIC mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on May 27, 1986 (Reg. No. 1,394,720).
Respondent registered the <caselogickorea.com> domain name on November 14, 2002. The disputed domain name does not resolve to a website of any kind. Respondent offered to sell the disputed domain name, in combination with other domain names that incorporate Complainant’s CASE LOGIC mark, to Complainant for $200,000.
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.
The Panel finds that Complainant has established rights in
the CASE LOGIC mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. 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.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under
Complainant contends that Respondent’s <caselogickorea.com> domain name is
confusingly similar to its CASE LOGIC mark. The <caselogickorea.com>
domain name differs from Complainant’s mark in three ways: (1) the space
between the words has been removed; (2) the geographic term “korea” has been
added to the end of the mark; and (3) the generic top-level domain (“gTLD”) “.com”
has been added. Removing a space from a
mark does not reduce or eliminate the likelihood of confusion between a domain
name and that mark; neither does the addition of a geographic term. See Mega
Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that
the <megasociety.net> and <megasociety.com>
domain names were identical or confusingly similar to Complainant's THE
MEGA SOCIETY mark); see also Wal-Mart
Stores, Inc. v. Walmarket
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <caselogickorea.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant contends that Respondent is not commonly known
by the <caselogickorea.com>
domain name nor has it ever been the owner or licensee of the CASE LOGIC
mark. The WHOIS record for the disputed
domain name lists the Respondent as “d&d
comleader.” Respondent has failed to
show any evidence contrary to Complainant’s contentions, and so, in light of
the evidence presented, the Panel finds that Respondent is not commonly known
by the <caselogickorea.com> domain name pursuant to Policy
¶ 4(c)(ii). See Brown v. Sarrault, FA 99584
(Nat. Arb. Forum Oct. 16, 2001) (finding that the
respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”); see also G.D. Searle & Co. v.
Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Respondent has failed to use the disputed domain name in any way during the period since Respondent registered the disputed domain name. The failure to use a domain name for an extended period of time is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Therefore, Respondent has not used the disputed domain name for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A the respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise); see also AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims).
Respondent has made an offer to sell the disputed domain name, along with other domain names which incorporate Complainant’s CASE LOGIC mark, to Complainant for $200,000. An offer to sell a domain name to the rightful holder of a mark is evidence of a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii), and so, the Panel finds that Respondent’s offer to sell the disputed domain name to Complainant is evidence that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has made an offer to
sell the disputed domain name to Complainant.
Under Policy ¶ 4(b)(i), an offer to sell a domain name to the rightful holder of a
mark is evidence of bad faith in registration and use. Campmor,
Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent
registered the disputed domain name and offered to sell it to Complainant for
$10,600. This demonstrates bad faith registration and use pursuant to
Policy ¶ 4(b)(i).”)
Therefore, Respondent’s offer to sell the disputed domain name to
Complainant is evidence that Respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(i). See
Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered
the domain names for sale); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent is not making any active use of the disputed
domain name. The failure to use a domain
name with no evidence of a good faith intent to use it is evidence of bad faith
in registration and use under Policy ¶ 4(a)(iii). Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30,
2000) (finding that the respondent made no use of the domain name or website
that connects with the domain name, and that failure
to use a domain name permits an inference of registration and use in bad
faith). Therefore, the Panel finds that Respondent’s
inactive use of the disputed domain name is evidence of registration and use in
bad faith pursuant to 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 Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the
respondent’s failure to develop its website in a two year period raises the
inference of registration in bad faith).
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 <caselogickorea.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 10, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum