Group Interactive Solutions, Inc. v. Domain Admin
Claim Number: FA0912001299004
Complainant is Group Interactive Solutions, Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ginsystem.com>, registered with Namesdirect.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 16, 2009.
On December 15, 2009, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <ginsystem.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is bound by the Namesdirect 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 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 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 postmaster@ginsystem.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <ginsystem.com> domain name is identical to Complainant’s GIN SYSTEM mark.
2. Respondent does not have any rights or legitimate interests in the <ginsystem.com> domain name.
3. Respondent registered and used the <ginsystem.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Group Interactive
Solutions, Inc., holds a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for the GIN SYSTEM mark (Reg. No. 3,514,971
filed August 31, 2007; issued October 14, 2008) in connection with
communication services.
Respondent, Domain Admin,
registered the <ginsystem.com> domain name on February 9, 2008. The
disputed domain name resolves to an inactive website.
Respondent has offered to sell Complainant the disputed domain name. Respondent sent Complainant an email offering to sell the disputed domain name for a price of $15,000.00
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 asserts rights in its GIN SYSTEM mark through
its holding of a trademark registration for the GIN SYSTEM mark with the USPTO
(Reg. No. 3,514,971 filed August 31, 2007;
issued October 14, 2008). The Panel
finds that Complainant has established rights in the GIN SYSTEM mark under
Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See
Expedia, Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also
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.”). The Panel finds that the relevant date for
the determination of rights in a mark is the date the application was filed
with the USPTO. See Hershey
Complainant argues that Respondent’s <ginsystem.com> domain name is identical to
Complainant’s GIN SYSTEM mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s GIN SYSTEM mark and merely eliminates the space between the words
and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of the
space between the words in Complainant’s mark does not distinguish between the
disputed domain name and the mark. See
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Domain Admin.”
Complainant alleges that Respondent has never operated any bona fide or legitimate business under
the disputed domain name and that Complainant has not granted any license or
permission by which Respondent could have registered or used Complainant’s GIN
SYSTEM mark. Without evidence to the
contrary, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See 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); see
also
Respondent’s <ginsystem.com> domain name was registered on February 9, 2008. The disputed domain name resolves to an inactive website. The Panel finds Respondent’s failure to make an active use of the domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent registered the disputed
domain name with the intent of selling the disputed domain name to
Complainant. Complainant has evidence of
this intent in the form of an email offering to sell Complainant the disputed
domain name for the price of $15,000.00 which Complainant alleges is in excess
of Respondent’s out-of-pocket expenses directly related to the domain
name. The Panel finds that Respondent’s
attempt to sell the disputed domain name for an amount far in excess of
registration fees is evidence of bad faith registration and use under Policy ¶
4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007)
(concluding that the respondent registered and was using the
<gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i)
where it offered it for sale for far more than its estimated out-of-pocket
costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)).
Respondent is not making an active use of the identical <ginsystem.com> domain name. The Panel finds that Respondent’s failure to
make an active use of the disputed domain name over a period of eleven months
is sufficient to support a finding of bad faith registration and use under
Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v.
Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding
that the respondent’s failure to make active use of its domain name in the
three months after its registration indicated that the respondent registered
the disputed domain name in bad faith); see also Pirelli &
C. S.p.A. v.
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ginsystem.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 28, 2010
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