national arbitration forum

 

DECISION

 

Russell Energy Corporation c/o Robert Russell v. Branch Russell

Claim Number: FA0909001287019

 

PARTIES

Complainant is Russell Energy Corporation c/o Robert Russell (“Complainant”), represented by Michael J. Ripes, of Ripes, Nelson, Baggot & Kalobratsos, P.C., Illinois, USA.  Respondent is Branch Russell (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <russellenergy.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2009.

 

On September 30, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <russellenergy.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 October 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 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@russellenergy.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 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <russellenergy.com> domain name is confusingly similar to Complainant’s RUSSELL ENERGY CORPORATION mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Russell Energy Corporation c/o Robert Russell, invented and markets an engine generator.  Complainant holds a patent with the United States Patent and Trademark Office (“USTO”) for its engine generator (Patent No. 6,230,670 B1 issued May 15, 2001).  Complainant also holds a patent with the World Intellectual Property Organization (“WIPO”) (Patent No. WO/2002/079625 issued March 28, 2001).  Complainant has operated under its RUSSELL ENERGY CORPORATION mark since March 7, 1995. 

 

Respondent, Branck Russell, registered the <russellenergy.com> domain name on August 14, 2005.  The disputed domain name resolves to an “Under Construction” page and is not in use by Respondent.

 

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

 

Complainant has not registered the RUSSELL ENERGY CORPORATION mark, but the Panel finds 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 RUSSELL ENERGY CORPORATION mark to conduct business and market an engine generator, which it invented. Complainant holds a registered patent for this invention with the USPTO and WIPO.  Complainant has been known by this mark for the past fourteen years, since 1995, and has continuously used the mark as the name of Complainant’s corporation and in connection with its offering of Complainant’s engine generator.  Complainant has established common law rights in the RUSSELL ENERGY CORPORATION 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 BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

 

Respondent’s <russellenergy.com> domain name is confusingly similar to Complainant’s RUSSELL ENERGY CORPORATION mark.  The disputed domain name removes the term “corporation” and the spaces between the terms in Complainant’s mark.  The Panel finds the removal of a term and spaces in Complainant’s mark fail to adequately distinguish the disputed domain name from a complainant’s mark.  See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  The disputed domain name further adds the generic top-level domain (“gTLD”) “.com.”  The Panel also finds the addition of a gTLD fails to sufficiently distinguish the disputed domain name from Complainant’s mark.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Thus, the Panel determines Respondent’s <russellenergy.com> domain name is confusingly similar to Complainant’s RUSSELL ENERGY CORPORATION mark pursuant to Policy ¶ 4(a)(i).

 

Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

 

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <russellenergy.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). The Panel finds that in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to these proceedings.  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”).  Nonetheless, the Panel will examine the record for compliance with the Policy.

 

The WHOIS information, provided by Complainant, lists Respondent as “Branch Russell.”  Respondent fails to offer evidence showing Respondent is commonly known by the <russellenergy.com> domain name.  Complainant further asserts that Respondent is not authorized to use the RUSSELL ENERGY CORPORATION mark.  Therefore, the Panel finds that Respondent is not commonly known by the <russellenergy.com> domain name and therefore has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).

 

Respondent’s <russellenergy.com> domain name resolves to a website which is “Under Construction.”  Respondent fails to make an active use of the disputed domain name.  The Panel finds Respondent’s failure to make an active use of the confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under  Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Respondent’s <russellenergy.com> domain name resolves to a website which is “Under Construction.”  Respondent registered the <russellenergy.com> domain name on August 14, 2005 and has since failed to make an active use of the disputed domain name.  The Panel finds Respondent’s failure to make an active use constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

The Panel finds Complainant has established the elements of 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 <russellenergy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra J. Franklin, Panelist

Dated:  November 12, 2009

 

 

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