Go Modern Limited v. Go Modern c/o Domain Administrator
Claim Number: FA0903001254401
Complainant is Go
Modern Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gomodern.com>, registered with Rebel.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2009.
On March 27, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <gomodern.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.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 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 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 email@example.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 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <gomodern.com> domain name is identical to Complainant’s GO MODERN mark.
2. Respondent does not have any rights or legitimate interests in the <gomodern.com> domain name.
3. Respondent registered and used the <gomodern.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Go Modern Limited, was incorporated in June
2006 and has since become a leading online retailer of high quality designer
modern furniture under the GO MODERN mark.
Complainant predominantly trades in the
The <gomodern.com> domain name was created on July 16, 1998. However, the domain name belonged to a different third-party until February 6, 2008, when the registrant information was altered to a domain proxy service. On March 14, 2008, the listed registrant information was altered from the proxy service to Respondent. Since February 6, 2008, the disputed domain name has resolved to a website with either a search engine or click-through links for the competitors of Complainant.
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.
Preliminary Issue: Relevant Date of Respondent’s Registration
The WHOIS information reflects that the disputed domain name
was created on July 16, 1998.
However, Complainant contends Respondent did not acquire the disputed
domain name until at least February 6, 2008, under a domain name proxy service
that later changed to list Respondent’s registration information on March 14,
2008. The Panel finds the relevant date
Respondent registered the disputed domain name for the purposes of the Policy
is March 14, 2008. See Ass’n of Junior Leagues Int’l
Inc. v. This Domain Name My Be For
Complainant is not alleging a registration for its GO MODERN mark with a governmental trademark authority. However, Complainant can still establish its rights in the mark under Policy ¶ 4(a)(i) if it can demonstrate common law rights through sufficient secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant asserts that it began using its GO MODERN mark in June 2006 when it first incorporated. Complainant has set forth evidence that it has since used its mark for its online designer furniture retail operations, and that it has sold furniture using the <gomodern.co.uk> domain name since November 2006. Moreover, Complainant has received substantial revenue from its operations, and has taken orders from over twenty-two countries worldwide. The Panel finds that Complainant has demonstrated common law rights in the GO MODERN mark that date back to June 2006 through sufficient secondary meaning under Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
The <gomodern.com> domain name contains the GO
MODERN mark while removing the space and adding the generic top-level domain
“.com.” Since neither alteration carries
any weight under the Policy, the Panel finds that the disputed domain name is identical
to the mark under Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See 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).”); see also 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).
The WHOIS information lists Respondent as “Go Modern c/o
Domain Administrator.” However, there is
no corroborating evidence in the record that would substantiate this alleged
identity. Complainant has asserted that
Respondent lacks any association with Complainant, and that Respondent is not
authorized or licensed to use Complainant’s GO MODERN mark. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(ii), since Respondent is not
commonly known by the disputed domain name.
The disputed domain name has, during Respondent’s tenure as registrant, resolved to a website that has featured either a search engine, or competitive pay-per-click links and advertisements. The Panel finds that Respondent has satisfied neither Policy ¶¶ 4(c)(i) nor (iii), because Respondent has not endeavored to join the disputed domain name with a bona fide offering of goods or services or a legitimate noncommercial or fair use, respectively. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The corresponding website for the disputed domain name, as
mentioned above, displays links and advertisements for Complainant’s
competitors, or has displayed a search engine in its prior history. The Panel finds it no stretch to presume that
Respondent has primarily intended to disrupt Complainant’s Internet operations
for commercial gain through the pay-per-click endeavor. This demonstrates Respondent’s bad faith
registration and use under Policy ¶ 4(b)(iii). See
This commercial gain that Respondent obtains through the
accrual of referral fees is key to the Panel’s finding that Respondent engaged
in bad faith registration and use under Policy ¶ 4(b)(iv). Respondent’s confusingly similar disputed
domain name has created a likelihood of confusion as to Complainant’s source or
affiliation with the disputed domain name and corresponding website. That this confusion yields Respondent with
potential and actual monetary gain seals this finding under Policy ¶ 4(b)(iv). See
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 <gomodern.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 7, 2009
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