national arbitration forum

 

DECISION

 

L.L. Dustman Inc. d/b/a thethingshop.com v. Mahesa Putra

Claim Number: FA0908001277019

 

PARTIES

Complainant is L.L. Dustman Inc. d/b/a thethingshop.com (“Complainant”), represented by Larry Dustman, of L.L. Dustman Inc. d/b/a thethingshop.com, Arizona, USA.  Respondent is Mahesa Putra (“Respondent”), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thethingshop.com>, registered with Enom, Inc.

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2009.

 

On August 3, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <thethingshop.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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@thethingshop.com by e-mail.

 

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

 

On September 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <thethingshop.com> domain name is identical to Complainant’s THE THING SHOP mark.

 

2.      Respondent does not have any rights or legitimate interests in the <thethingshop.com> domain name.

 

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

 

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

 

FINDINGS

Complainant, L.L. Dustman Inc. d/b/a thethingshop.com, has been doing business under the name THE THING SHOP for twenty-five years.  Complainant is in the business of selling and distributing restoration parts for the Volkswagen Thing, a vehicle that was made in Mexico in 1973.  Complainant registered the domain name <thethingshop.com> in 1997 to use in connection with their business.  Complainant has submitted numerous articles, newspaper clippings, and advertisements to support the use of its THE THING SHOP mark since 1987. 

 

Respondent gained control of the <thethingshop.com> domain name in April 2008.  It is unclear how Respondent gained control of the disputed domain name and whether Respondent is currently using the disputed 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

 

While trademark registration is one way to demonstrate rights in a mark, 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 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 claims common law rights in its THE THING SHOP mark in connection with the sale of restoration parts for the Volkswagen Thing, which is an automobile that was manufactured in Mexico in 1973.  As evidence of Complainant’s widespread and long-standing utilization of THE THING SHOP mark, Complainant offers newspaper articles, advertisements, and magazine articles to corroborate Complainant’s contentions that it has been doing business under THE THING SHOP mark since 1987.  The Panel finds that Complainant’s submissions demonstrate that its THE THING SHOP mark had acquired substantial secondary meaning for the purposes of Policy ¶ 4(a)(i).  Thus,  the Panel finds that Complainant has sufficiently established common law rights in THE THING SHOP mark through continuous and extensive commercial use starting in 1987 under Policy ¶ 4(a)(i).  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 Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). 

 

Complainant contends that Respondent’s <thethingshop.com> domain name is identical to Complainant’s THE THING SHOP mark under Policy ¶ 4(a)(i).  The disputed domain name incorporates Complainant’s THE THING SHOP mark in its entirety with the mere omission of the spaces between the words of the mark and the affixation of the generic top-level domain “.com.”  The Panel finds that these alterations are insufficient to distinguish Respondent’s disputed domain name from Complainant’s mark.  Therefore, the Panel finds that Respondent’s <thethingshop.com> domain name is identical to Complainant’s THE THING SHOP mark under Policy ¶ 4(a)(i).  See 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”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

 Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <thethingshop.com> domain name.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a prima facie case.  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 <thethingshop.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant contends that it originally registered the <thethingshop.com> domain name in 1997 and that the disputed domain name was “stolen” by an unknown party in April 2008.  Although Complainant makes no contentions as to Respondent’s use of the disputed domain name, and there is no evidence in the record to demonstrate the current use, Complainant contends that Respondent’s theft of the disputed domain name prevented Complainant from rightfully accessing the disputed domain name.  Thus, the Panel finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).  See Andersen v. Direction Int’l, D2007-0605 (WIPO June 27, 2007) (finding that the respondent’s actions in unlawfully hijacking the domain name through deception precluded a finding that the respondent had used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial use under Policy ¶ 4(c)(i) or (iii)); see also 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).”). 

Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names using THE THING SHOP mark.  The pertinent WHOIS information lists the registrant as “Mahesa Putra,” thus providing no affirmative evidence that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent has not established rights 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

            Complainant has established Policy ¶ 4(a)(ii). 

Registration and Use in Bad Faith

 

The factors enumerated under Policy ¶ 4(a)(iii) to describe bad faith are intended to be illustrative and not exhaustive.  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).  Although it is unclear how Respondent gained control of the <thethingshop.com> domain name, it is apparent that Respondent’s actions were not authorized by Complainant.  Complainant alleges that Respondent constructively “stole” the disputed domain name.  Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).  See Good o/a Pornreports.com v. Anderson, D2004-0391 (July 5, 2004) (finding that the respondent registered and used the disputed domain name in bad faith even though it was not clear how the respondent gained control of the disputed domain name; it was clear to the Panel that the respondent gained control of the disputed domain name through improper means, which is enough to infer bad faith under Policy ¶ 4(a)(iii)); see also Worldcom Exch., Inc v. Wei.com, Inc., D2004-0955 (WIPO Jan. 5, 2005) (finding bad faith registration and use under Policy ¶ 4(a)(iii) because the respondent likely gained control over the disputed domain name through fraudulent means and subsequently deprived the complainant of access to its domain name). 

 

Complainant has satisfied 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 <thethingshop.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  September 16, 2009

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum