national arbitration forum

 

DECISION

 

Darryl Baker v. J M

Claim Number: FA0904001259254

 

PARTIES

Complainant is Darryl Baker (“Complainant”), Georgia, USA.  Respondent is J M (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <whirlyballatlanta.com>, registered with Dotster.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically April 23, 2009; the National Arbitration Forum received a hard copy of the Complaint April 24, 2009.

 

On April 24, 2009, Dotster confirmed by e-mail to the National Arbitration Forum that the <whirlyballatlanta.com> domain name is registered with Dotster and that Respondent is the current registrant of the name.  Dotster verified that Respondent is bound by the Dotster registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On May 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 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@whirlyballatlanta.com by e-mail.

 

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

 

On May 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that the Respondent registered, <whirlyballatlanta.com>, is confusingly similar to Complainant’s WHIRLYBALL mark.

 

2.      Respondent has no rights to or legitimate interests in the <whirlyballatlanta.com> domain name.

 

3.      Respondent registered and used the <whirlyballatlanta.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Darryl Baker, operates a WhirlyBall Center in Roswell, Georgia (a suburb of Atlanta).  Complainant is a licensee of Flo-tron Enterprises, Inc, which holds a trademark registration of the WHIRLYBALL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,265,825 issued Jan. 31, 1984).  Complainant held the registration of the <whirlyballatlanta.com> domain name for over nine years, until that registration was inadvertently allowed to expire.

 

Respondent, J M, registered the <whirlyballatlanta.com> domain name in mid-April 2009 after Complainant’s registration expired.  Respondent offered to sell the disputed domain to Complainant for the “discounted” price of $2,999 “just to avoid the UDRP.”  Respondent has made no changes to the resolving website except to attach a trojan virus to the website that activates with Internet users click through the website.

 

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."

 

Given 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 as the Panel 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 Complainant to 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: Complainant’s Standing & Interest in the mark

 

The WHIRLYBALL mark is registered with the USPTO by Flo-tron Enterprises, Inc.  Complainant submitted proof that he is a current licensee of Flo-tron and is allowed to use the WHIRLYBALL mark.  Complainant previously held the <whirlyballatlanta.com> domain name from February 2001 until the registration expired in April 2009.  The Panel finds that in this case Complainant submitted sufficient proof to establish such interests in the WHIRLYBALL mark to have standing to bring a UDRP complaint and establish interests in the mark under Policy ¶4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).

 

Identical to and/or Confusingly Similar

 

As addressed in the Preliminary Issue above, the Panel finds that Complainant has sufficient interest in the WHIRLYBALL mark to satisfy Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, supra; see also Smart Design LLC v. Hughes, supra.

 

The <whirlyballatlanta.com> domain name contains the WHIRLYBALL mark in its entirety, adding the geographic identifier “atlanta” and the generic top-level domain (gTLD) “.com.”  The Panel finds that the <whirlyballatlanta.com> domain name is confusingly similar to Complainant’s WHIRLYBALL mark pursuant to Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <whirlyballatlanta.com> domain name.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <whirlyballatlanta.com> domain name pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights to or legitimate interests in the disputed domain name.  However, this Panel still examines the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <whirlyballatlanta.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the WHIRLYBALL mark, and the WHOIS information identifies Respondent as “J M.”  Thus, Respondent has not established rights to or legitimate interests in 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The <whirlyballatlanta.com> domain name is being used to resolve to a website that appears to have all the same content that it had when Complainant held the registration.  However, Respondent has attached a destructive virus to the disputed domain name, which activates when Internet users click through the website.  The Panel finds this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii).  See Dell Inc. v. Versata Software, Inc., FA 1246916 (Nat. Arb. Forum Apr. 10, 2009) (finding the respondent’s use of the disputed domain name to attempt to download malware on Internet users’ computers did not establish that the respondent had rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) or (iii)); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

Additionally, the Panel finds that Respondent’s offer to sell the <whirlyballatlanta.com> domain name for $2.999., an amount in excess of Respondent’s out-of-pocket expenses, is further evidence that Respondent does not have any rights to or legitimate interests in the <whirlyballatlanta.com> domain name pursuant to Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).

 

Finally, the Panel finds that Respondent’s registration of the <whirlyballatlanta.com> domain name immediately after Complainant inadvertently allowed its registration of the disputed domain name to expire is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Clark v. HiNet, Inc., FA 405057 (Nat. Arb. Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent offered to sell the <whirlyballatlanta.com> domain name back to Complainant for $2,999. “to avoid the UDRP.”  The Panel finds that the timing of the registration, the offer to sell the disputed domain name for more than any out-of-pocket registration expenses, and the stated reason for selling the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").

 

Respondent has not changed the website resolving from the <whirlyballatlanta.com> domain name but is using Complainant’s website content in an attempt to trick Internet users into downloading a malicious virus.  The Panel infers that Respondent is attempting profit in some way by preying on Internet users who mistaken believe they are viewing Complainant’s legitimate, business website.  Therefore, the Panel finds Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name to “divert Internet users to a website that uses tactics that may be harmful to users’ computers” is evidence of bad faith registration and use); see also 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO March 5, 2009) (finding the respondent’s use of a website to distribute malware was an attempt to attract Internet users to its website or other online location for commercial gain, by creating a likelihood of confusion with the complainant’s mark).

 

The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors 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.”).

 

Respondent registered the <whirlyballatlanta.com> domain name immediately after Complainant had held the registration for more than nine years and inadvertently allowed the registration to expire.  The Panel finds this is evidence of opportunistic bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (holding that the complainant’s prior registration and use of the disputed domain name and the respondent’s registration of the domain name immediately after the complainant failed to timely renew its registration “gives rise to an inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <whirlyballatlanta.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: June 12, 2009.

 

 

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