George D. Nicolais v. IT
Manager
Claim Number: FA0809001223213
PARTIES
Complainant is George D. Nicolais (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pricemonger.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
FERNANDO TRIANA, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 4, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 8, 2008.
On September 5, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <pricemonger.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 September 17, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 7, 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@pricemonger.com by
e-mail.
On October 7, 2008, an electronic Response was received and determined
to be deficient by the National Arbitration Forum because Respondent did not
submit the Response in hard copy by the Response deadline.
On October 16, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed FERNANDO TRIANA, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
GEORGE D. NICOLAIS submitted the complaint and it was received on October 8, 2008, and it satisfies the formal requirements of the Policy, Rules and supplemental Rules.
The Complainant’s registered Trademark/Service Mark
is Pricemonger for services of International Class 42 including on line retail
store featuring gift products. The Complainant has provided evidence of the
registration before the U.S Trademark and Patent Office of PRICEMONGER, as
follow:
|
Word
Mark |
PRICEMONGER |
|
Goods
and Services |
IC 042. US
100 101. G & S: On-line retail store services featuring gift products.
FIRST USE: 20040101. FIRST USE IN COMMERCE: 20040201 |
|
Standard
Characters Claimed |
|
|
Mark
Drawing Code |
(4)
STANDARD CHARACTER MARK |
|
Serial
Number |
78431987 |
|
Filing
Date |
June 8,
2004 |
|
Current
Filing Basis |
1A |
|
Original
Filing Basis |
1A |
|
Published
for Opposition |
May 10,
2005 |
|
Registration
Number |
2981136 |
|
Registration
Date |
August 2,
2005 |
|
Owner |
(REGISTRANT)
NICOLAIS, GEORGE D. INDIVIDUAL UNITED STATES 4470 PARK |
|
Type of
Mark |
SERVICE
MARK |
|
Register |
PRINCIPAL |
|
Live/Dead
Indicator |
LIVE |
The domain name <pricemonger.com> and the Complainant’s trademark are identical. The Respondent infringes upon and violates the Complainant’s rights under ICANN Policy and the Respondent should have known that PRICEMONGER was a registered trademark.
The Complainant is the sole shareholder of George Nicolais & Associates, Inc., who is also the registrant of the domain names as follows:
<pricemonger.biz>
<pricemonger.net>
<pricemonger.org>
The Complainant is the sole shareholder of Pricemonger, Inc., incorporated in 2004.
According to the ICANN rule 3 (b)(ix) (3), the Complainant claims that the Respondent had an affirmative obligation of not to register domain names that could violate any registered service or trademark.
The Complainant requests that the Panel issues a decision that the domain-name registration be transferred.
Respondent received a Notification of Complaint and commencement of Administrative Proceeding on October 17, 2008. In its answer to the same, Respondent argues the following:
“Complainant
abandoned the subject domain and the Respondent validly registered the subject
domain readily available to the Public:”
Respondent argues that because of the availability of the subject URL to the public he made an appropriate registration of the domain name. In fact, the Respondent along with multiple others individuals bid on the subject URL on March 4, 2008.
Complainant abandoned usage of the subject domain, and it was validly and in good faith registered by him.
At the time of registration of the domain, Respondent never heard of the Complainant. Respondent was attracted to pricemonger name because of the viability as a developed brand of a price comparison shopping search engine similar to <pricegrabber.com>.
Respondent owned the domain name for over 4 months, before received any communications from the Complainant.
The Complainant neglects to mention that it was the previous registrant so as to mislead the panel into believing that Respondent prevented Complainant from reflecting its mark as a domain name to create a false basis for its requested relief when truly they abandoned use of its domain as evident by the over 4 month delay in initially contacting Respondent.
The Complainant has provided no evidence of bad faith according to the Policy.
There has been no attempt (nor evidence provided) by Respondent to sell, rent or transfer the domain to the Complainant for any amount or consideration.
Since March 4, 2008, the site has been queued for development, which included creating a site for price comparison-shopping, which differs from Complainant’s goods and services.
Complainant has failed to prove that the Respondent has no legitimate interest with respect to the domain name as required under paragraph 4(a)(ii) of the policy.
Complainant has made no meritorious claim for the relief sought, and has failed to meet all three prongs required under the Policy. Complainant has failed to provide adequate proof of an alleged exclusive trademark right or any trademark right.
Complainant has failed to prove Respondent has no legitimate interest with respect to the domain as required under paragraph 4(a)(ii) of the Policy.
Complainant has failed to show Respondent registered and/or used the domain name in bad faith as required under paragraph 4(a) (iii) of the Policy.
Respondent respectfully urges the Panel to reject Complainant’s petitions, and confirm Respondent’s retention of the registration and use of the disputed domain name.
FINDINGS
Paragraph 15 (a) of
the Rules for Uniform Domain Name dispute Resolution Policy (the “Rules”)
instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted and in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Likewise, paragraph
10(d) of “The Rules”, provides that: “The Panel shall determine the
admissibility, relevance, materiality and weight of the evidence.”
In the present case, the Panelist wants to place emphasis in the importance of the evidence filed by the parties to prove their assertions, which has been studied to determine its relevance and weight in arriving at a decision.
Additionally the Panelist considers noteworthy the fact that the Respondent has not timely filed the hardcopy of the Response to the complaint. As consequence, the Panelist may decide whether or not to consider Respondent’s Submission.[1]
The fact that the Respondent has not submitted the hardcopy of the Response, according to Paragraph 14(b) of The Rules, constitutes a technical default, which allows the Panelist to take such fact as evidence against the party in default, i.e., the Respondent.
Nevertheless, the Panelist wants to underline that in order to have an adequate vision of the facts that gave grounds to the present case, it has determine to take into consideration certain contentions and evidence filed by Respondent, in regard to the allegations filed by Complainant, when arriving to a decision in the present proceeding.
Paragraph 4(a) of the Policy requires that
the 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 the Respondent
is identical to a trademark or service mark in which the Complainant has
rights;
(2) The Respondent has no rights or legitimate
interests in respect of the domain name;
(3) The domain name has been registered and is
being used in bad faith.
DISCUSSION
The first element of the paragraph 4(a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.
Complainant contends that the Domain Name is identical with and confusingly similar to the trademark PRICEMONGER pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same with the addition of generic or merely descriptive terms.[2]
The worldwide-accepted definition of a
trademark, involves the concept of distinctive force as the most relevant
element. Said force gives the sign the capability to identify the products or
services of its owner and differentiate them from the product and services of
other participants in the market.
When a sign is registered as a trademark, it
is surrounded by a presumption of existence of sufficient distinctive force,
and the owner is granted with an exclusive right over the trademark, which
entitled him to prevent any third party from using the registered sign or any
other sign confusingly similar to it.
In fact, Complainant has provided evidence of
a registration for the PRICEMONGER mark in The United States of America as
shown above; he owns the trademark since August 2, 2005, which gives him a
legitimate right to file the complaint.
The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[3] Complainant’s registration appears to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services.
Respondent has the burden of
refuting this assumption[4]
and in this case, it has failed to contest Complainant's assertions regarding
its trademark rights. Therefore, the Sole Panelist finds that Complainant,
for purposes of this proceeding, has enforceable rights of the cited trademark.
Before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s registered trademark, the sole panelist wants to point out that the addition of generic top-level domains (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.org” cannot be taken into consideration when studying if the registered domain name is confusingly similar to the registered trademark.
As it has been repeatedly accepted by UDRP Panels the existence of the “.com” gTLD, in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical or confusingly similar to the mark in which the Complainant asserts rights.
“In the strictest sense, the domain name lumena.com is not identical to
the trademark Lumena. The former includes a top level domain “.com” while the
word Lumena stands alone in the latter. However, where the addition of it
top-level domain appeared the domain name was the one that most closely
described that nature of trademark (i.e.; “com” representing a commercial
enterprise). The virtual identically seemed sufficient to satisfy the first
element of paragraph 4(a)(i) of the Policy.” [5]
The Sole Panelist notes that the entirety of the mark PRICEMONGER is included in the Respondent Domain Name <pricemonger.com>. Therefore, the Domain Name is identical and confusingly similar to the PRICEMONGER mark pursuant to the Policy paragraph 4(a)(i). Actually the addition of .com is not a distinguishing difference.[6]
Therefore sole Panelist concludes
that this evidence establishes Complainant’s rights in the pricemonger
trademark for purposes of Policy ¶ 4(a)(i). This because ICANN panels have recognized that reproducing
a trademark in its whole is sufficient to establish that a domain name is
identical or confusingly similar to the Complainant's registered mark; indeed,
the addition of other terms in the domain name does not affect a finding that
the domain name is identical or confusingly similar to the Complainant's
registered trademark.
Paragraph 4(c) of the Policy, determines
that the following circumstances in particular but without limitation, if found
by the sole panelist to be present, shall demonstrate the Respondent’s rights
or legitimate interest to the domain name:
(i) before any
notice to you of the dispute, your use of, or demonstrable preparations to use,
the domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or
(ii) you (as an
individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are
making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue
Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Complainant registration appears to be a prima facie incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the same in connection with the stated services.[7] It’s the Respondent who has the burden of refuting this assumption.
After an investigation, made ex officio, the sole panelist has found that the Complainant is using his trademark in the domain names that he owns (<pricemonger.biz>, <pricemonger.net> and <pricemonger.org>). When the panelist entered said web pages, the following information appears therein:
The copyright date that appears on the web page, evidences that the Complainant owned and used the domain name <pricemonger.com> since 2004; indeed, the Complainant states that he lost the domain name for a technical issue, not due to is a lack of interest.
About the above mentioned matter, the Respondent argues that he registered the domain name in March 2008, and that it has been queued for 4 months in order to develop a site for price comparison shopping, but he does not prove the preparation to use the domain name.
Even if the
Respondent used said domain name, the applicable
Policy makes it clear that only the noncommercial or fair use gives rise to
rights or legitimate interests, according with the Policy 4(c)(iii), and
according to the Respondent contentions, its purpose is strictly commercial.
Respondent could
not rely on equitable doctrines under the Policy to defend its registration of
the disputed domain name after the registration was inadvertently permitted to
lapse by Complainant, noting that apparently Respondent was already aware of
the Complainant’s well-known business and its mark and intended to exploit the
same.[8]
Moreover, the fact that Complainant had previously held the <pricemonger.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).[9]
Another issue to consider in this particular case, is that the Respondent has not made use of its domain name before the complaint was filed, which demonstrate that it do not have a legitimate interest. According to the Paragraph 4(c)(i) the Respondent requires to show:
1) "Demonstrable" evidence of such preparations to use the domain name,
2) That such preparations were undertaken "before any notice to [Respondent]of the dispute.
Respondent’s principal argument with respect to the issue of rights or legitimate interests appears to be that Respondent was attracted to the pricemonger name because of its interest to develop a brand price comparison shopping search engine similar to <pricegrabber.com>:
After an ex officio investigation, the sole panelist could establish that Pricegrabber.com offers the same service of the Complainant.
Therefore, the sole panelist considers that due to the fact none of the contentions made by the Complainant were refuted with sufficient proof, and after reviewing the evidence attached to the present case and the ex officio proofs, it has been proven that there is no right or legitimate interest in the disputed domain name by Respondent, therefore it does not meet Paragraph 4(a)(ii) of the Policy.
Complainant alleges that Respondent has acted in bad faith. The sole panelist has considered the fact that Respondent has failed to evidence its legitimate rights or interest in the disputed domain name. Notwithstanding the aforementioned, the sole panelist will evaluate Complainant’s assertions and evidence regarding Respondent bad faith in the registration of <pricemonger.com> domain name.
According to paragraph 4(b) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The sole panelist considers that the Complainant’s has a history in the online retail business, taking in to consideration the usage that it has given of his trademark.
Moreover, the fact that the Complainant has registered its trademark PRICEMONGER in International class 42 is sufficient evidence for the sole panelist that the Complainant is identifiable in the market by its distinctive sign.
The Complainant owned the domain name in question prior to the Respondent’s registration of the same. Indeed, the domain name is clearly connected to the Complainant’s trademark for business operations and services as the sole panelist could confirm regarding and checking the <pricemonger.biz>, <pricemonger.net> and <pricemonger.org>, domain name usage.
For the sole panelist it is clear that even when the Respondent has not made use of the domain name in question, the passive holding constitute an evidence of bad faith. According to the prevailing opinion of numerous UDRP panels, in some circumstances so called “passive holding” of a domain name can be treated as its being use in bad faith. It is not necessary to find that the Respondent had undertaken any positive action in relation to the domain name.[10]
Also as the sole panelist already stated above, when the domain name has been previously used by the Complainant, the subsequent registration of the domain name by anyone else indicates bad faith.[11]
Given the prior ownership of the domain name by Complainant, the Respondent has disrupted his business operations with the registration of the domain name. Thus Respondent failed to evidence use of the disputed domain for good faith purpose.
The circumstances provided in paragraph 4(b) of the Policy are not limiting factors of how bad faith can be established, but allow merely basic parameters for the sole panelist when determining bad faith of Respondent. Noticing the fact that Respondent ignored the letter that the Complainant sent requesting the transfer of the domain name, has also been addressed by other administrative panels as follows:
“Respondent has ignored Complainant’s request to transfer ownership of the domain name. Failure positively responds to a Complainant’s effort to make contact provides ‘strong support for a determination of bad faith and registration and use’”[12]
Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <pricemonger.com> domain name.
DECISION
The Panel has found that the Complainant has a trademark registration
identical to the domain name in conflict. That the Respondent lacks of
legitimate interest, and that the domain name is used in bad faith. Consequently,
under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <pricemonger.com> domain name be TRANSFERRED.
FERNANDO TRIANA, Esq.,
Panelist
Dated: October 30, 2008.
[1] See Telstra Corp v.
[2] See Snow Fun, Inc. V. O’Connor, F.A. 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the Complainant’s TERMQUOTE mark).
[3] See Janus Int’ l Holding Co. V. Rademacher, D2002-0201 (WIPO March 5,2002).
[4] See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000).
[5] See Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 25, 2000).
[6] See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO April 27, 2000).
[7] See Janus Int`l Holding Co. v. Rademacher, D200-0201 (WIPO, Mar. 5, 2002).
[8] See Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002).
[9] See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005).
[10] Action S.A. v. Gozdowski, D2008-0028 (WIPO Mar. 14, 2008).
[11] See InTest Corp. v. Servicepoint, F.A. 95291 (Nat. Arb. Forum Aug. 30, 2000).
[12] See ebay Inc v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001).
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