Jonmor Investments, Inc. v. Martin Eckrich
Claim Number: FA0908001280228
Complainant is Jonmor Investments, Inc. (“Complainant”), represented by Meredith
D. Pikser, of Reed Smith LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eckrich.com>, registered with Backslap Domains, 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.
Hon. Hong Oo Baak as Panelist, Paul Decicco as Panelists, and Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2009.
On August 19, 2009, Backslap Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <eckrich.com> domain name are registered with Backslap Domains, Inc and that Respondent is the current registrant of the name. Backslap Domains, Inc has verified that Respondent is bound by the Backslap Domains, 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 September 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 21, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
An Additional Submission was received from Complainant on September 28, 2009 that was determined to be timely and complete pursuant to Supplemental Rule 7.
On September 30, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Hong Oo Baak as Panelist, Paul Decicco as Panelist, and Richard Hill as Presiding 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.
According to the Complainant, it has US federally registered marks for several variations of the string ECKRICH, for various food products. The marks have been in use for over a century, long before the Respondent’s registration of the disputed domain name in September 1997.
The Complainant alleges that its marks are famous and enjoy a reputation in connection with high quality products in the food industry. The disputed domain name is clearly identical to the Complainant’s mark.
The Respondent has developed a web site at the contested domain name. But, in April 2009, when an agent of the Complainant sought to acquire the contested domain name, for US $ 1,500, it was advised that the Respondent “does not sell any of his domains for less than six figures.”
According to the Complainant, this constitutes evidence of bad faith registration and use under the 4(b)(i) of the Policy.
The Respondent did not submit a Response in this proceeding.
C. Additional Submissions
In its Additional Submission, the
Complainant informs the Panel that, subsequent to filing the Complaint, it
learned that the actual registrant of the disputed domain name claims to be a
private person called Martin Eckrich, with an address in
The Complainant acknowledges that there is a German artist named Martin Eckrich, whose website is at <martin-eckrich.de>. But that artist has a different address and it is highly unlikely that he is the owner of the disputed domain name.
The Complainant alleges that the Respondent is a cybersquatter, who adopted a false name in an attempt to justify ownership of the disputed domain name.
The Complainant owns registered trademarks for the string ECKRICH and uses them to market a variety of food products.
A purported agent of the Respondent offered to sell the disputed domain name for a price well above out-of-pocket costs.
The disputed domain name does not resolve to an active web site.
The Respondent has not provided any arguments or evidence regarding plans to use the disputed domain name for some legitimate purpose.
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).
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.
The Panel finds that the Complainant has rights in the ECKRICH mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,695,413, issued March 11, 2003). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
And the Panel finds that the disputed domain name is identical, in the sense of the Policy, to the Complainant’s mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Under paragraph 4(a)(ii) of the Policy, the Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden of production then shifts to the Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the domain name at issue.
The Complainant makes out its prima facie case regarding Policy 4(a)(ii) by showing that the domain name registrant is NOT commonly known by the domain name, that the Respondent is not authorized to use its mark, and further that the Respondent is not making a fair non-commercial use of the domain name. In fact the domain name is not being used as Internet address at all. That the registration record may show the registrant of the domain name as “Martin Eckrich” is of little or no relevance here since there is no foundation for such a claim and since the the Complainant in its supplemental papers contends with credible arguments that Martin Eckrich is not the real domain name registrant.
Furthermore, according to 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate.
The Complainant has argued that the Respondent is a mere cybersquatter, who registered the disputed domain name in order to sell it in excess of out-of-pocket costs. Since the Respondent does not contest this assertion when it might be expected to if untrue, the Panel will consider the non-response as a further indication that Complainant is correct and that Respondent lacks rights or interest in respect of the domain name.
Thus the Panel holds that the Complainant has satisfied its burden of proof for this element of the Policy.
According to the Complainant, the Respondent has not only registered the disputed domain name, it has actively used it, by offering it for sale. But, from the evidence, it is not clear whether the agent who did offer to sell the domain name was in fact explicitly authorized to do so by the Respondent. However, if the Respondent had not authorized the offer, then it should have submitted a Response, which it did not. By not responding to the Complainant’s allegations when a reasonable person would have if they were false, the Respondent admits by his silence that the allegations are true.
In other words, since the Respondent does not contest the Complainant’s allegation that it offered the disputed domain name for sale at a price well above out-of-pocket costs when we would expect a respondent to answer if untrue, the Panel will consider that the allegation is true. The Panel thus finds that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).
See Campmor, Inc.
v. GearPro.com, FA 197972 (Nat.
Arb. Forum Nov. 5,
2003) (“Respondent registered the disputed domain name and offered to sell it
to Complainant for $10,600. This demonstrates bad faith registration and
use pursuant to Policy ¶ 4(b)(i).”); see also Dynojet Research, Inc. v.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eckrich.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Hong Oo Baak, Panelist
Paul Decicco, Panelist
Dated: October 13, 2009
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