Versa Capital Management, LLC v. Roger Schmidt
Claim Number: FA0903001250974
Complainant is Versa Capital Management, LLC (“Complainant”), represented by David
M. Perry, of Blank Rome LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <versa.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 9, 2009.
On March 7, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <versa.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 March 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 2009 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@versa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <versa.com> domain name is identical to Complainant’s VERSA mark.
2. Respondent does not have any rights or legitimate interests in the <versa.com> domain name.
3. Respondent registered and used the <versa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Versa Capital Management, LLC, is a well-known investment firm and has used its VERSA mark in connection with its business and financial services since September 2007. Complainant has filed an intent-to-use application for federal registration of its mark with the United States Patent and Trademark Office (“USPTO”) (App. No. 77/248,369 filed August 7, 2007).
The <versa.com> domain name was originally registered on June 3, 1994. The disputed domain has changed ownership several times. The prior registrant held the disputed domain name as late as January 28, 2009, after which Respondent acquired the disputed domain name. The disputed domain name resolves to a website that displays several hyperlinks to various unrelated third-party websites.
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.
A trademark registration is not required to establish rights in the VERSA mark under Policy ¶ 4(a)(i). Complainant can and has sufficiently established common law rights in the VERSA mark by showing that its mark has established secondary meaning through its continuous use in conjunction with unsolicited media attention. Thus, the Panel finds that Complainant has established common law rights in the VERSA mark under Policy ¶ 4(a)(i) prior to Respondent’s registration of the disputed domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Respondent’s <versa.com>
domain name contains Complainant’s mark and merely adds the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that this addition of a gTLD does nothing to distinguish the <versa.com> domain name from
Complainant’s VERSA mark, and thus, the disputed domain name is identical to
Complainant’s mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA
511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the
<reebok.net> domain name was identical to the complainant’s REEBOK mark
because it fully incorporates the mark and merely adds a generic top-level
domain); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s <versa.com>
domain name resolves to a
website that displays several hyperlinks to various unrelated third-party
websites. The Panel infers that
Respondent receives click-through fees for displaying these hyperlinks. Accordingly, the Panel finds that these
hyperlinks divert Internet users to an unrelated website, which is not a bona fide offering goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8,
2007) (concluding that the operation of a pay-per-click website at a
confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate
noncommercial or fair use, regardless of whether or not the links resolve to
competing or unrelated websites or if the respondent is itself commercially
profiting from the click-through fees); see
also Bank of Am. Fork v. Shen,
FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of
a domain name to redirect Internet users to websites unrelated to a
complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Furthermore, Respondent is listed in the WHOIS information
as “Roger Schmidt,” which does not
indicate that Respondent is commonly known by the <versa.com> domain
name. Respondent has not offered any
evidence to indicate otherwise. The
Panel finds that Respondent is not commonly known by the disputed domain name
under 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.
Although
the <versa.com>
domain name was originally registered on June 3, 1994, the earliest Respondent
can establish rights in the disputed domain name is January 28, 2009 because at
that time the disputed domain name was registered to another registrant, and
thereafter was acquired by Respondent. Therefore, the Panel finds that Respondent
did not register the disputed domain name prior to Complainant establishing
common law rights in its VERSA mark and thus acted in bad faith under Policy ¶
4(a)(iii) when registering and using the disputed
domain name. See The Ass’n of Junior
Leagues Int’l Inc. v. This Domain Name My Be For
Respondent, through the use of the aforementioned hyperlinks, receives fees for diverting Internet users to unrelated websites. Accordingly, the Panel finds this commercial benefit from the use of the disputed domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
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 <versa.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 23, 2009
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