Claim Number: FA0903001253531
Complainant is
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <yumaprisonrun.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2009.
On March 24, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <yumaprisonrun.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 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 postmaster@yumaprisonrun.com by e-mail.
Respondent submitted an e-mail on March 25, 2009 which was not accepted as an official response because of formal deficiencies.
Having received no proper response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2009, Respondent sent a one line e-mail to the National Arbitration Forum.
On April 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <yumaprisonrun.com> domain name is identical to Complainant’s YUMA PRISON RUN mark.
2. Respondent does not have any rights or legitimate interests in the <yumaprisonrun.com> domain name.
3. Respondent registered and used the <yumaprisonrun.com> domain name in bad faith.
B. Respondent’s submissions do not contest the allegations in the complaint and states consent to the transfer.
Complainant, Norwalk
Motorcycle Club, is a non-profit corporation, has used its YUMA PRISON RUN mark
since 1961 in association with a group ride membership. Complainant holds a registration of the mark
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,932,118 issued March 8, 2005, filed October 6, 2003).
Respondent, a former member of Complainant, registered the <yumaprisonrun.com> domain name on April 27, 2004. Respondent was hired by Complainant to build a website using the disputed domain name. The resolving website had contained content for Complainant, but after being contacted by Complainant, Respondent removed all of the resolving website content.
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 sufficiently
established rights in the YUMA PRISON RUN mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the
USPTO.
Although Respondent’s registration date of the <yumaprisonrun.com> domain name of April
27, 2004 was prior to
Complainant’s registration date of its YUMA PRISON RUN mark of March 8, 2005; the
effective date of Complainant’s rights in the registered mark under Policy ¶
4(a)(i) begins upon the filing of its trademark application. Complainant’s filing date of its trademark
registration application is October 6, 2003, which predates Respondent’s registration date of
the disputed domain. See
Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The
effective date of Complainant's federal rights is . . . the filing date of its
issued registration. Although it might be possible to establish rights prior to
that date based on use, Complainant has submitted insufficient evidence to
prove common law rights before the filing date of its federal registration.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8,
2007) (finding that the complainant’s rights in the KISSES trademark through
registration of the mark with the USPTO
“date back to the filing date of the trademark application and predate [the]
respondent’s registration”).
Respondent’s <yumaprisonrun.com>
domain name
contains Complainant’s entire mark, deletes the spaces between the words that
comprise the mark, and merely adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that these
changes to Complainant’s mark do not distinguish the <yumaprisonrun.com> domain name from Complainant’s YUMA
PRISON RUN mark, and therefore, the Panel finds that the disputed domain name
is identical to Complainant’s mark under Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, 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 <yumaprisonrun.com>
domain name resolves to a website, of
which the content has been removed. The
Panel finds Respondent’s inactive use of the disputed domain is not a bona
fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Bloomberg L.P. v. SC Media
Servs. & Info. SRL, FA 296583
(Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating
Complainant’s mark and is not using the <bloomberg.ro> domain name in
connection with an active website. The
Panel finds that the [failure to make an active use] of a domain name that is
identical to Complainant’s mark is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use of the domain name pursuant to Policy
¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh,
FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a
respondent’s non-use of a domain name that is identical to a complainant’s mark
is not a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii)).
Furthermore, Respondent is listed in the WHOIS information as “Evelyn Larason,” which does not indicate that Respondent is commonly known by the <yumaprisonrun.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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Finally, the Panel finds that Respondent lacks rights and
legitimate interests in the disputed domain under Policy ¶ 4(a)(ii) because, as
a former member, Respondent did acquire any rights or legitimate interest to
Complainant’s mark and Respondent deleted the previous content made by
Respondent on behalf of Complainant. See Vinidex Pty Ltd. v. Auinger, AF-0402
(eResolution Oct. 18, 2000) (finding that the respondent lacked rights and
legitimate interests in the domain name because it did not resolve to a
developed website and the respondent, a former employee of the complainant, had
constructive knowledge of the complainant’s rights in the mark); see also Savino Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not
acquire rights or legitimate interests in a domain name identical to the former
employer's trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel emphasizes that a finding of bad faith registration and use under Policy ¶ 4(a)(iii) is not limited to situations enumerated in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
The Panel finds that Respondent’s deletion of all content
from the resolving website and it subsequent failure to actively use the <yumaprisonrun.com> domain name is evidence of bad faith registration and use under Policy ¶
4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7,
2000) (concluding that the respondent’s [failure to make an active use] of the
domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb.
Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active
use of its domain name in the three months after its registration indicated
that the respondent registered the disputed domain name in bad faith).
Furthermore,
Respondent’s refusal to transfer the disputed domain name after Respondent left
the Complainant’s organization is evidence of bad faith registration and use
under Policy ¶ 4(a)(iii). See Anbex Inc. v. WEB-Comm
Techs. Group,
FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding
bad faith registration and use where the complainant hired the respondent to
register the disputed domain name and the respondent later re-registered the
disputed domain name on its own behalf and refused to transfer it to the
complainant once their business relationship ended); see also Arab Bank for Inv. & Foreign Trade v. Akkou,
D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where
the respondent was formerly employed by the complainant, was fully aware of the
name of her employer, and made no use of the infringing domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yumaprisonrun.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 5, 2009
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