Dua Musim (a/k/a The Dusun Hotel) v. Access
Claim Number: FA0912001297995
Complainant is PT Dua
Musim (a/k/a The Dusun Hotel) (“Complainant”),
represented by Robert Hepworth,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thedusun.com>, registered with DirectNIC, Ltd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 10, 2009.
On December 9, 2009, DirectNIC, Ltd. confirmed by e-mail to the National Arbitration Forum that the <thedusun.com> domain name is registered with DirectNIC, Ltd. and that Respondent is the current registrant of the name. DirectNIC, Ltd. has verified that Respondent is bound by the DirectNIC, Ltd. 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 December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010 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.
On January 12, 2010, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thedusun.com> domain name is identical to Complainant’s THE DUSUN mark.
2. Respondent does not have any rights or legitimate interests in the <thedusun.com> domain name.
3. Respondent registered and used the <thedusun.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PT Dua Musim (The Dusun Hotel), operates hotels
and villas on the
Respondent, Access Bali Online c/o Kumara, I Gede Sanat, registered the <thedusun.com> domain name on January 29, 2001. The disputed domain name resolves to a website purporting to be Complainant’s website, utilizing Complainant’s images and logos, and listing inaccurate rates for Complainant’s hotel and villa services.
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.
Previous panels have found that the registration of a mark
with a federal trademark authority is sufficient to establish rights in a mark
pursuant to Policy ¶ 4(a)(i). See Miller Brewing
Complainant claims Respondent’s <thedusun.com>
domain name is identical to Complainant’s THE DUSUN mark. The disputed domain name simply removes the
space from Complainant’s mark and adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that even after
the removal of a space and the addition of a gTLD the disputed domain name
remains identical to Complainant’s mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <thedusun.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 <thedusun.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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <thedusun.com> domain name. Complainant asserts that Respondent is not authorized to use its THE DUSUN mark. Complainant further claims that Respondent is not affiliated with Complainant in any way. The WHOIS information identifies the disputed domain name registrant as “Access Bali Online c/o Kumara, I Gede Sanat,” which Complainant contends is not similar to the disputed domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <thedusun.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent utilizes the <thedusun.com> domain name to resolve to a website nearly identical to Complainant’s website. Respondent is attempting to pass itself off as Complainant by using the confusingly similar disputed domain name and Complainant’s images and logos. Respondent offers incorrect rate information about Complainant’s hotel and villas. The Panel finds Respondent attempt to pass itself off as Complainant does not constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s trademark was registered with the Indonesian trademark authority on September 4, 2003. Prior to that date, Respondent registered the <thedusun.com> domain name on January 29, 2001. Complainant has not provided any further evidence of when Complainant’s rights in the THE DUSUN mark began. Since the evidence available to the Panel establishes that Respondent registered the disputed domain name prior to Complainant’s establishment of rights in the mark, the Panel finds Respondent could not have registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The Panel finds Complainant has not satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thedusun.com> domain name REMAIN with Respondent.
James A. Carmody, Esq., Panelist
Dated: January 25, 2010
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