E Manufacturing Co., Inc. v. eNetGroup
Claim Number: FA0903001253527
Complainant is E Manufacturing Co., Inc. (“Complainant”), represented by Michele
The domain name at issue is <emanufacturing.com>, registered with Network Solutions, Inc.
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 March 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 15, 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 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 <emanufacturing.com> domain name is confusingly similar to Complainant’s E MANUFACTURING mark.
2. Respondent does not have any rights or legitimate interests in the <emanufacturing.com> domain name.
3. Respondent registered and used the <emanufacturing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures components for the electrical industry and fabricates custom machined parts. Complainant has operated under the E MANUFACTURING mark since at least as early as 1969.
Respondent registered the <emanufacturing.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.
The Panel finds that Complainant has established common law rights
in the E MANUFACTURING mark for purposes of Policy ¶ 4(a)(i), dating back to
1969, through its continuous use of the mark in commerce since at least as
early as 1969. See Association of Tex. Prof’l Educators, Inc. v. Salvia Corp.,
FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had
demonstrated common law rights in the ATPE mark through continuous use of the
mark in connection with educational services for over twenty-five years); see also
Complainant contends that
domain name is identical to its E
The disputed domain name differs from Complainant’s mark in two ways:
(1) the space between the terms in the mark has been removed; and (2) the
generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The
Panel finds that under Policy ¶ 4(a)(i) removing the
space from a mark does not render the domain name at all different from the
mark. See Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO
Therefore, the Panel finds that the disputed domain name is not sufficiently distinguished from, and remains identical to, Complainant’s E MANUFACTURING mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed
domain name. Based upon the allegations
made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶
4(a)(ii), thus shifting the burden of proof to
Complainant contends that Respondent is not commonly known
by the <emanufacturing.com>
domain name, nor has it ever been the owner or licensee of the E MANUFACTURING
mark. The WHOIS record for the disputed
domain name identifies Respondent as “eNetGroup,”
and no evidence elsewhere indicates that Respondent has ever been commonly
known by the disputed domain name. Complainant also contends that Respondent has
been dissolved as a corporate entity by the State of
There is no evidence presented that the disputed domain name is being used by Respondent in any active manner. Complainant does contend that Respondent, as a consequence of selling the disputed domain name to Complainant for $1025 in 1999, gave up all rights and legitimate interests in the <emanufacturing.com> domain name at that time. The Panel finds that the sale of the disputed domain name by Respondent of the <emanufacturing.com> domain name to Complainant, and the subsequent failure to make active use of the disputed domain name, establishes that Respondent has not used the disputed domain name to make a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Beat the Bookstore, LLC v. May Enter., FA 589501 (Nat. Arb. Forum Dec. 19, 2005) (finding that the respondent’s “protracted period of inaction” in its development of the disputed domain name for over two years indicated that the respondent had no rights or legitimate interests in the disputed domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent sold the disputed
domain name in 1999 to Complainant for $1025, and that Respondent’s willingness
to sell the disputed domain name to Complainant for more than the out-of-pocket
expenses to Respondent is evidence of Respondent’s bad faith registration and
use of the disputed domain name. The
Panel agrees and finds that Respondent’s sale of the disputed domain name to
Complainant for $1025 is evidence that Respondent registered and used the <emanufacturing.com> domain name in
bad faith pursuant to Policy ¶ 4(b)(i). See Grundfos
A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to
use the domain name in any context other than to offer it for sale to the
complainant amounts to a use of the domain name in bad faith); see also Little Six, Inc. v. Domain For
Respondent has also failed to make an active use of the disputed domain name, which the Panel finds is evidence of bad faith registration and use 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”).
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 <emanufacturing.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 4, 2009
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 For reasons that are not apparent in the record, despite the sale of the domain name to Complainant, the change in registration never occurred.