national arbitration forum

 

DECISION

 

Jim Williams v. Louis Smith

Claim Number: FA0904001257389

 

PARTIES

Complainant is Jim Williams, Florida, USA, (“Complainant”).  Respondent is Louis Smith (“Respondent”), Mississippi, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <hurricanecity.net>, <hurricanecity.org> and <hurricanecity.info>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Hon. Harold Kalina as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 15, 2009.

 

On April 13, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hurricanecity.net>, <hurricanecity.org> and <hurricanecity.info> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 April 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 12, 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@hurricanecity.net, postmaster@hurricanecity.org and postmaster@hurricanecity.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Harold Kalina as Panelist.

 

On May 21, 2009, the Forum received an email from Respondent, alleging that he had only then learned of this dispute.  Complainant followed up with an email the same day, providing tracking numbers for the served complaint, which was received.  The Panel notes that the email address used to serve Respondent is the same from which the Forum received Respondent’s objection. 

 

On May 22, 2009, the Forum received further abbreviated correspondence from both parties.  Neither email was helpful to the Panel in making a decision.  In particular, the Panel notes Respondent made no attempt to utilize the UDRP elements in its defense.

 

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 formal response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hurricanecity.net>, <hurricanecity.org> and <hurricanecity.info> domain names are identical to Complainant’s HURRICANE CITY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hurricanecity.net>, <hurricanecity.org> and <hurricanecity.info> domain names.

 

3.      Respondent registered and used the <hurricanecity.net>, <hurricanecity.org> and <hurricanecity.info> domain names in bad faith.

 

B.  Respondent failed to submit a formal Response in this proceeding.  Its email objecting to this process has been noted but does not affect the Panel’s decision.

 

FINDINGS

Complainant, Jim Williams, is the owner of the <hurricanecity.com> domain name, which resolves to a website providing information about hurricanes and their target cities.  Complainant has operated this website since 1998 as a service to citizens who could be struck by hurricanes. 

 

Respondent registered the <hurricanecity.net> and <hurricanecity.org> domain names on April 11, 2008, and the <hurricanecity.info> domain name on April 11, 2007.  Respondent’s disputed domain names resolve to websites that contain Complainant’s mark and logo, and display replicas of Complainant’s content resolving from its <hurricanecity.com> domain name.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant does not have a trademark registration for the HURRICANE CITY mark with the USPTO.  However, trademark registration is unnecessary where Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also 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).

 

Complainant asserts it has common law rights in its HURRICANE CITY mark through its continuous use in commerce since 1998 and subsequent secondary meaning it has acquired through its use.  Complainant has operated the <hurricanecity.com> domain name in connection with its offering of hurricane information since 1998.  Complainant produces reports and statistics about what cities are likely to be hit by hurricanes.  The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the HURRICANE CITY mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1998.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); 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).

 

Complainant argues that Respondent’s disputed domain names are identical to Complainant’s HURRICANE CITY mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain names each contain Complainant’s mark in its entirety, omit spacing, and add the generic top-level domains (“gTLD”) “.net,” “.org,” or “.info.”  The Panel finds that the omission of spacing and the addition of a gTLD are irrelevant in distinguishing a disputed domain name from an established mark.  See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).  Therefore, pursuant to Policy ¶ 4(a)(i), the disputed domain names are identical to Complainant’s HURRICANE CITY mark.

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).

 

Respondent’s disputed domain names resolve to websites mimicking Complainant’s website resolving from the <hurricanecity.com> domain name by using Complainant’s HURRICANE CITY mark and copying its content.  Respondent is attempting to pass itself off as Complainant by creating a likelihood of confusion in order to divert Internet users to Respondent’s disputed domain names.  The Panel finds that such registration and use of a identical domain names is neither 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 Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

Respondent’s WHOIS registration is evidence that Respondent is not commonly known by the disputed domain names, in that the registrant is listed as “Louis Smith.”  Without further evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the disputed domain names to pass itself as Complainant. The Panel finds that this constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hurricanecity.net>, <hurricanecity.org> and <hurricanecity.info> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Honorable Harold Kalina

Dated:  May 28, 2009

 

 

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