Coding Clan, LLC v. Steven
Clayton
Claim Number: FA0906001271178
PARTIES
Complainant is Coding Clan, LLC (“Complainant”), represented by Kathryn
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <codingclan.com>, 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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 29, 2009; the
National Arbitration Forum received a hard copy of the Complaint on July 1, 2009.
On June 30, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <codingclan.com> domain name is
registered with Godaddy.com, Inc. and
that the 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 July 14, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 3, 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@codingclan.com by e-mail.
A timely Response was received and determined to be complete on July 30, 2009.
An Additional Submission from the Complainant was received on August 3,
2009. It was deemed to be in compliance
with Supplemental Rule 7.
An Additional Submission from the Respondent was received on August 10,
2009. It was deemed to be receivable.
On August 4, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that it is a company whose business is to build
websites for a variety of customers. It
was incorporated in 2005 and has been in business since then. The Complainant registered the disputed
domain name in 2005 and has used it to promote its business since then. The Complainant’s website at the disputed
domain name included a distinctive design, logos, and copyrighted material.
According to the Complainant, it used its trade name CODING CLAN on
business cards, marketing material, and invoices, thus becoming known under
that name.
The Complainant states that, in May 2009, its registration for the
disputed domain name was cancelled due to an administrative failure in the
renewal of the annual fees. The
Respondent immediately acquired the domain name and proceeded to copy the
contents (“scrape the contents”) of the Complainant’s web site onto his own
server, thus displaying the same content as before at the disputed domain
name. The content in question includes
material that is protected by the Complainant’s trademarks and copyrights.
According to the Complainant, this has disrupted its business. Further, it constitutes violation of various
laws related to trademarks and copyrights.
This constitutes bad faith registration and use under the Policy. The Respondent does not have any legitimate
interests or rights in the disputed domain name.
The Complainant requests that the Panel issue an award transferring the
disputed domain name to the Complainant and awarding the costs of the
arbitration to the Complainant.
B. Respondent
The Respondent states: “We buy lots of domains at auction, and we
routinely get contacted by people like the complainant that, through their own
neglect, don’t renew their domains. It
is our policy to give these domains back after recouping our costs for the
auction itself and our initial registration cost. If the complainant had simply contacted us through
the domains by proxy email and asked for the domain back, we would have given
it immediately after being reimbursed for our expenses. This is our policy and why we ‘scrape the
content’ as well.”
He continues: “The complainant talks about our ‘scraping’ of the site
and putting up their protected content back up on the site after we obtained
control of the site. We absolutely did
this, and we do it ALL the time for EVERY domain we buy and leave it like that
for a period of time in case someone wants the domain back.”
He concludes: “We are
more than willing to give control of this domain back, just as we would have
had the complainant contacted us through domains by proxy. We simply ask for a reimbursement of our cost
for the auction and the registration of the domain ($515.89).”
C. Additional Submissions
In its Additional Submission, the Complainant notes that the Respondent
has made no effort, and presented no evidence, to establish that it was using
(or planning to use) the disputed domain name in connection with a bona fide offering of goods or service;
or that he had been commonly known by the domain name; or that he was making a
legitimate noncommercial or fair use of the domain name.
Further, says the Complainant, the Respondent has admitted that he
copied onto his own website the Complainant’s logo, contact information,
trademark, graphics, and copyrighted material.
This constitutes violation of trademark and copyright laws.
According to the Complainant, it did send E-Mails to the Respondent
(through the domain-name proxy service), but never received a reply.
In his Additional Submission, the Respondent reiterates that he does
not wish to keep the disputed domain name.
He denies engaging in certain activities alleged by the Complainant. In particular, he denies diverting customers:
although he admits that the E-Mail link on the web site was no longer
operational, the address and phone number of the Complainant were still
correct. The Respondent denies that he
intended to sell the disputed domain name and he denies cybersquatting. He reiterates that he never received a
communication from the Complainant: the E-Mail cited by the Complainant did not
identify the Complainant as the source. The
Respondent reiterates his conclusion, namely that the disputed domain name be
returned to the Complainant in return for reimbursement of the Respondent’s
costs.
FINDINGS
The Complainant has common law trademark
rights in the name CODING CLAN.
The disputed domain name is identical to the
Complainant’s mark.
The Respondent copied onto his own website
the content of the Complainant’s website, which content included protected
trademarks and material protected by copyright.
The Respondent has not indicated that he has
any plans to use the disputed domain name for any particular business. On the contrary, he indicates that he is
willing to return the disputed domain name to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Procedural issues
Before dealing with the merits of the case, the Panel will deal with a
procedural issues raised by the prayers for relief.
The Complainant requests that the disputed domain name be transferred
to it and that it be awarded the costs of the present proceedings.
The Respondent requests that
the Panel award control of the disputed domain name to the Complainant after the
Complainant pays him a certain monetary amount.
According to Paragraph 4(i) of the Policy, the remedies available to a Complainant
pursuant to any proceeding before an Administrative Panel shall be limited to
requiring the cancellation of a domain name or the transfer of a domain name
registration to the Complainant. Symmetrically, the remedies available to a Respondent
are limited to the acceptance or the rejection of the Complaint’s request
regarding the cancellation or the transfer of a domain name. See, e.g.,
Telekom
Austria AG v. Reginaldo Mercatello, D2002-0235 (WIPO June 5, 2002).
It is settled case law under the Policy that a Panel may not award
monetary amounts, whether for costs or damages.
See, e.g., Indian
Farmers Fertiliser Cooperative Limited v. International Foodstuffs Company, D2001-1110 (WIPO
Jan 4, 2002).
As a consequence, the monetary claims of the parties are not receivable
and cannot be considered by this panel.
Thus, with respect to what can be considered by this Panel, the prayer
for relief by the Complainant (that the name be transferred) is identical to
the prayer for relief by the Respondent.
As noted above, 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” (emphasis added).
In this case, the parties have both asked for the domain name to be transferred
to the Complainant. This Panel holds
that in this UDRP proceeding, in accordance with a general legal principle
governing arbitrations as well as national court proceedings, that it would not
be appropriate for it to act nec ultra
petita nec infra petita, that is, that it should not here issue a decision
that would be either less than requested, nor more than requested by the
parties. Since the requests of the
parties in this case are identical, the Panel recognizes the common request, and
it will order the transfer of the disputed domain name.
A similar conclusion was reached by the Panel in Boehringer
Ingelheim International GmbH v. Modern Limited ‑ Cayman Web Development,
FA 133625 (Nat. Arb. Forum, Jan.
9, 2003); in Alstyle Apparel/Active Wear v. John Schwab d/b/a Alstyle
de Mexico, FA 170616 (Nat. Arb. Forum, Sept. 5, 2003); and in United
Pet Group, Inc. v.
In such cases, it is not necessary for the Panel to analyze the three
elements of the Policy, nor to make findings of fact. However, in this particular case, the Panel
will proceed to make findings and to discuss the elements of the Policy.
It is established
case law under the Policy that a Complainant need not hold a registration of
its mark with a governmental authority in order to establish rights in that
mark under Policy ¶ 4(a)(i) provided that it can sufficiently establish common
law rights in that mark through a sufficient showing of secondary meaning in
that mark. 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
The Complainant provides
evidence showing that it began using the CODING CLAN mark in September 2005 in
connection with building websites for customers such as magazine publishers,
universities, and large corporations, in particular using the mark on its
business cards and on invoices to customers located within the
The disputed domain name contains the Complainant’s
CODING CLAN mark in its entirety, deletes the space within the mark, and adds
the generic top-level domain “.com.” The
Panel finds that the disputed domain name is identical to the Complainant’s
CODING CLAN mark under Policy ¶ 4(a)(i).
See U.S. News & World Report,
Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of
punctuation and the space between the words of Complainant’s mark, as well as
the addition of a gTLD does not sufficiently distinguish the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006)
(finding <vindiesel.com> to be identical to complainant’s mark because “simply
eliminat[ing] the space between terms and add[ing] the generic top-level domain
(“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name
from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
The Panel finds that the Complainant has
satisfied its burden of proof for this element of the Policy.
The Complainant asserts that the Respondent copied,
exactly and with no changes, the Complainant’s website layout, logos, and
business address to its own website at the disputed domain name. The Respondent admits that this is the case.
As the Complainant correctly points out, such
copying violates the Complainant’s copyrights.
Further, it violates the Complainant’s trademark rights.
As a consequence, the Respondent’s use of the
disputed domain name cannot represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See also the discussion below regarding
registration and use in bad faith.
The Panel finds that the Complainant has
satisfied its burden of proof for this element of the Policy.
As noted above, it is not contested that the
Respondent copied the Complainant’s website onto its own website. The Respondent states that it did that as a
convenience to the Complainant, and requests that the Complainant pay it a
certain sum of money before it returns control of the contested domain name.
But misuse of a party’s trademark and copyright-protected
material constitutes evidence of bad faith registration and use under the
Policy, in particular when the purpose of such misuse is to obtain money from
the Complainant. See Target Brands, Inc. v. JK
Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding
bad faith because the respondent not only registered Complainant’s famous
TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added
Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point
of being indistinguishable from the original.”).
The Panel finds that the Complainant has
satisfied its burden of proof for this element of the Policy.
DECISION
For all the reasons set for above, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is Ordered that the <codingclan.com> domain name be TRANSFERRED
from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 11, 2009
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