PSC Management Limited Partnership v. Target250 c/o John Palek
Claim Number: FA0909001285438
Complainant is PSC
Management Limited Partnership (“Complainant”), represented by Cathryn Berryman, of Winstead, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <perotsystemsmail.com>, registered with Enom, Inc.
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. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 21, 2009.
On September 21, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <perotsystemsmail.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 September 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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@perotsystemsmail.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <perotsystemsmail.com> domain name is confusingly similar to Complainant’s PEROT SYSTEMS mark.
2. Respondent does not have any rights or legitimate interests in the <perotsystemsmail.com> domain name.
3. Respondent registered and used the <perotsystemsmail.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PSC Management Limited Partnership, is the owner of several registrations for the PEROT SYSTEMS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,106,634 issued October 21, 1997). Complainant is a worldwide leader in the field of technology and business consulting services. Complainant uses its PEROT SYSTEMS mark in connection with the provision of these computer-related services, including computer software design, development, and implementation.
Respondent, Target250 c/o John Palek, registered the <perotsystemsmail.com> domain name on August 19, 2009. The disputed domain name resolves to a blank website displaying only the message “Welcome to perotsystemsmail.com.”
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 established rights in the PEROT SYSTEMS mark
pursuant to Policy ¶ 4(a)(i) based on its multiple
registrations of the mark with the USPTO (e.g., Reg. No. 2,106,634 issued
October 21, 1997).
Respondent’s disputed domain name incorporates Complainant’s PEROT SYSTEMS mark in its entirety with the mere omission of the space between the terms of the mark, the addition of the generic term “mail,” and the affixation of the generic top-level domain “.com.” The Panel finds that these alterations are inconsequential for the determination of confusing similarity under Policy ¶ 4(a)(i). Thus, the Panel concludes that Respondent’s <perotsystemsmail.com> domain name is confusingly similar to Complainant’s PEROT SYSTEMS mark under Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also 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).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights
or legitimate interests in the disputed domain name. Once Complainant
presents a prima facie case outlining these allegations, the burden
shifts to Respondent to establish it does have rights or legitimate interests
in the disputed domain name. The Panel finds that Complainant has
presented a sufficient prima facie case to support its allegations and
that Respondent has failed to submit a response in this proceeding.
Therefore, the Panel may assume that Respondent does not have rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record and
determine whether Respondent has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c). See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); 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).
Respondent’s <perotsystemsmail.com> domain name resolves to an inactive website. The only content displayed at the website resolving from the disputed domain name is the message “Welcome to perotsystemsmail.com.” Previous panels have held that the inactive holding of a disputed domain name is evidence Respondent lacks rights and 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), respectively. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The pertinent WHOIS information for <perotsystemsmail.com> domain name identifies the registrant as “Target250 c/o John Palek” and there is no other information in the record with regards to Policy ¶ 4(c)(ii). Moreover, Respondent has failed to submit a response in this proceeding, leaving the Panel with no information that would suggest that Respondent is or was commonly known by the <perotsystemsmail.com> domain name. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The considerations enumerated in Policy ¶ 4(b) are not exclusive, so that we may consider other circumstances in determining whether Respondent registered and is using the disputed domain name in bad faith. See 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); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
In this light, the Panel notes that Respondent has failed to demonstrate any intent to make active use of the <perotsystemsmail.com> domain name, which was registered on August 19, 2009. Accordingly, the Panel concludes that this inactive use of the <perotsystemsmail.com> domain name establishes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <perotsystemsmail.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: November 5, 2009
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