Josh Anon v. 19th Parallel d/b/a Rob Nelson
Claim Number: FA0910001292007
Complainant is Josh
Anon (“Complainant”), represented by Paul
W. Kruse, of Bone McAllester Norton PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lightboxeditor.com>, registered with Register.com.
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.
Hon. Karl V. Fink (Ret) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
Having received no proper timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2009, Respondent submitted a late Response which was not in compliance with ICANN Rule #5a. The Response was not considered by the Panel.
On December 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret) 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 <lightboxeditor.com> domain name is confusingly similar to Complainant’s LIGHTBOX mark.
2. Respondent does not have any rights or legitimate interests in the <lightboxeditor.com> domain name.
3. Respondent registered and used the <lightboxeditor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Josh Anon, holds a registration of the LIGHTBOX
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
Respondent, 19th Parallel d/b/a Rob Nelson, registered the <lightboxeditor.com>
domain name on
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
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 submitted proof of its registration of the
LIGHTBOX mark with the USPTO (Reg. No. 2,870,252 issued
Complainant contends that the <lightboxeditor.com>
domain name is confusingly similar to its LIGHTBOX mark because the disputed
domain name uses the entire mark with the generic word “editor” and the generic
top-level domain (gTLD) “.com” added to the end. Further, since Complainant’s uses its
LIGHTBOX mark to market photo-editing software, the word “editor” has an
obvious relationship to Complainant’s business wherein it uses the mark. The Panel finds that these changes are
insufficient to create distinctiveness from Complainant’s mark and therefore
finds that the <lightboxeditor.com> domain name is confusingly
similar to Complainant LIGHTBOX mark under Policy ¶ 4(a)(i). See
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant
to prove that Respondent does not have any rights or legitimate interests in
the disputed domain name. Once
Complainant has made a prima facie
case, the burden shifts to Respondent to show that it does have rights or
legitimate interests pursuant to the directions provided in Policy ¶ 4(c). Also, no response has been submitted in this
case. Therefore, the Panel presumes that
Respondent has no rights or legitimate interests in the <lightboxeditor.com>
domain name; however, the Panel will
still examine the record in consideration of the factors listed under Policy ¶
4(c). See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <lightboxeditor.com> domain
name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the LIGHTBOX mark, and the WHOIS information identifies Respondent as
“19th Parallel d/b/a Rob Nelson.” Thus,
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
The <lightboxeditor.com> domain name resolves
to a website that appears to offer Complainant’s picture editing software or
software that is similar in direct competition with services offered by
Complainant under its LIGHTBOX mark. The
Panel finds that this use is not 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 Bank of Am. Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered the <lightboxeditor.com>
domain name on
Respondent is using the <lightboxeditor.com>
domain name to redirect Internet users searching for Complainant to its own
directly competing website. When
Internet users type in Complainant’s mark, they would reasonably expect to be
directed to Complainant’s website offering Complainant’s goods under
Complainant’s authorization. When
Respondent’s website appears instead, Internet users are likely to become
confused as to Complainant’s affiliation with the disputed domain name and
resulting website. Respondent is
attempting to profit from this confusion, which the Panel finds to be evidence
of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
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 <lightboxeditor.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret), Panelist
Dated: December 18, 2009
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