Terratec, Inc. v. Terratecinc c/o DP Manager c/o Temporarily assigned to Eurobox Ltd.
Claim Number: FA0810001231247
Complainant is Terratec, Inc. (“Complainant”), represented by Daniel
L.
REGISTRAR
The domain name at issue is <terratecinc.com>, registered with Nicreg Llc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 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@terratecinc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <terratecinc.com> domain name is confusingly similar to Complainant’s TERRATEC mark.
2. Respondent does not have any rights or legitimate interests in the <terratecinc.com> domain name.
3. Respondent registered and used the <terratecinc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is engaged in the construction and
construction-related services industry.
Complainant markets its business under the TERRATEC mark, which
Complainant registered with the United States Patent and Trademark Office
(“USPTO”) on December 6, 2005 (Reg. No. 3,022,574). Complainant has done business throughout the
southeast
Respondent registered the <terratecinc.com> domain name on May 10, 2008. Respondent has failed to make active use of the disputed domain name, and has failed to demonstrate any preparations to do so. Respondent has, in the course of several communications with Complainant, offered to sell the disputed domain name to Complainant for amounts ranging from $900 to $1,200.
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 TERRATEC mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive."); see also Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that
Respondent’s <terratecinc.com>
domain name is confusingly similar to its TERRATEC mark. The <terratecinc.com> domain name differs from Complainant’s mark in two ways:
(1) the generic abbreviated term “inc” has been added to the end of the mark;
and (2) the generic top-level domain (gTLD) “.com” has been added to the
mark. Under Policy ¶ 4(a)(i), the
addition of the generic abbreviated term “inc” does not eliminate or reduce the
likelihood of confusion between a mark and a domain name. See
Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29,
2001) (finding that the generic term “INC” does not change the confusing
similarity). Likewise, the addition of a gTLD is irrelevant when considering
whether a domain name is confusingly similar to a mark. See Nevada
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum
Therefore, the Panel finds that
despite the addition of the generic term “inc” and the gTLD “.com,” the
disputed domain name is nevertheless still confusingly similar to Complainant’s
TERRATEC mark, and so Respondent’s disputed
domain name is not sufficiently distinguished from Complainant’s mark pursuant
to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <terratecinc.com> domain name. Respondent has failed to submit a Response to Complainant’s contentions. Under Policy ¶ 4(a)(ii), if 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known
by the <terratecinc.com>
domain name nor has it ever been the owner or licensee of the TERRATEC mark. The WHOIS record for the disputed domain name
lists Respondent as “Terratecinc c/o DP Manager
c/o Temporarily assigned to Eurobox Ltd,” but Respondent has not
presented any affirmative evidence that Respondent has ever done business under
this name. The lack of this affirmative
evidence of Respondent operating as “Terratecinc
c/o DP Manager c/o Temporarily assigned to Eurobox Ltd,” or any variant
thereof, compels the Panel to find that Respondent is not commonly known by the
<terratecinc.com> domain name pursuant to Policy ¶
4(c)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA
237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information,
Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’
However, since Respondent failed to respond to the Complaint, there has not
been any affirmative evidence provided to the Panel showing that Respondent was
commonly known by the disputed domain name prior to its registration of the
domain name.”); see
also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”).
Respondent has failed either to make any active use of the <terratecinc.com> domain name or to make demonstrable preparations to use the <terratecinc.com> domain name since registering it. The Panel finds that Respondent’s failure to actively use or show demonstrable preparations to use the <terratecinc.com> domain name fails as 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 Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
Respondent has, in the course of several communications with Complainant, offered to sell the disputed domain name to Complainant. An offer to sell a disputed domain name is evidence that a respondent has given up any claim to rights or legitimate interests in the domain name. See 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). Therefore, the Panel finds that Respondent’s offers to sell the disputed domain name to Complainant are evidence that Respondent lacks any rights and legitimate interests in the <terratecinc.com> domain name pursuant to Policy ¶ 4(a)(ii). See American Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has offered to sell the <terratecinc.com> domain name to
Complainant. Registering a domain name
that has value because it incorporates a trademark held by another, and then
offering to sell that domain name to that party who holds the rights to the trademark
for more than the disputed domain name’s out-of pocket costs, is evidence that
the registrant has registered and is using the domain name in bad faith. See
Furthermore, the Respondent’s failure to actively use or demonstrate preparations to use the disputed domain name is also evidence of registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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 inactive use of a domain name permits an inference of registration and use 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 <terratecinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: December 22, 2008
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