Robert Hamic v. Legit Security
Claim Number: FA0905001261015
Complainant is Robert
W. Hamic (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <robhamic.com>, registered with Godaddy.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 14, 2009.
On May 20, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <robhamic.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 May 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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@robhamic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <robhamic.com> domain name is confusingly similar to Complainant’s RobB Hamic service mark.
2. Respondent does not have any rights or legitimate interests in the <robhamic.com> domain name.
3. Respondent registered and used the <robhamic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the President and Founder of SUMMIT Security and Investigations. Complainant has been known by the name Robb Hamic for thirty-five years and uses that name to conduct business. Complainant holds multiple domain names registered under the Robb Hamic name or a variation of that name.
Respondent registered <robhamic.com> on March 24, 2009. Respondent is using the disputed domain name to redirect Internet users interested in Complainant and Complainant’s services to a website with the stated purpose of disrupting Complainant’s business by promoting a competitor of Complainant and criticizing the 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.
Complainant has not registered the ROBB HAMIC mark, but
governmental trademark registration is not necessary to establish rights under
Policy ¶ 4(a)(i). Previous panels have
determined that a federal registration is not required so long as the
Complainant can establish common law rights through proof of sufficient
secondary meaning associated with the mark.
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 uses the ROBB HAMIC mark to conduct business in public and on over one-hundred additional domain names and websites. Complainant has been known by this mark for the entire thirty-five years of his life. Complainant has established common law rights in the ROBB HAMIC service mark through continuous and extensive commercial use predating Respondent’s registration of the disputed domain name under Policy 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”).
Respondent’s <robhamic.com> domain name is confusingly similar to Complainant’s ROBB HAMIC mark because Respondent’s domain name differs by deleting the “b” from the “Robb” element and adds the generic top-level domain “.com.” The Panel finds that such minor variations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <robhamic.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent is using the <robhamic.com> domain name to operate a website with the stated purpose of disrupting Complainant’s business by promoting a competitor of Complainant and criticizing the Complainant. The Panel finds Respondent’s use of a domain name that is confusingly similar to Complainant’s mark for this purpose is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <robhamic.com> domain name. Complainant asserts that the Respondent has no license or agreement with Complainant authorizing Respondent to use the ROBB HAMIC mark, and the WHOIS information identifies Respondent as “DomainsByProxy.com.” Complainant asserts other information naming the Respondent as “Legit Security.” Thus, Respondent has not established rights or legitimate interests in the <robhamic.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <robhamic.com> domain name, which is confusingly similar to
Complainant’s ROBB HAMIC mark, to disrupt Complainant’s business by promoting a
direct competitor of Complainant and criticizing Complainant. The Panel finds that such use
constitutes a disruption of Complainant’s business and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See David Hall Rare
Coins v.
The Panel infers that Respondent receives commercial gain
from promotion of Complainant’s competitor.
Because Respondent’s name is confusingly similar to Complainant’s ROBB
HAMIC mark, Internet users accessing Respondent’s domain name may become
confused as to Complainant’s affiliation with the resulting website and
disputed domain name. Therefore,
Respondent’s use of the <robhamic.com> domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Univ. of Houston Sys. v. Salvia
Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain
name to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv).”).
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 <robhamic.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 29, 2009
National
Arbitration Forum
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