White Eagle Partners, LLC v. Tech, En
Claim Number: FA1003001312046
PARTIES
Complainant is White Eagle Partners, LLC (“Complainant”), represented by David J. Katz, of Schlam Stone & Dolan LLP, New York, USA. Respondent is Tech, En (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whiteeagle.com>,
registered with Network Solutions, Inc.
PANEL
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.
Richard DiSalle as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 8, 2010.
On March 8, 2010, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <whiteeagle.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name.
Network Solutions, Inc. has verified that Respondent is bound by the
Network Solutions, 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 March 15, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of April 5,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@whiteeagle.com. Also on March 15, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April
5, 2010.
Complainant’s Additional Submission was received on April 9, 2010 in
compliance with Supplemental Rule 7.
On April 13, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard DiSalle as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Amended Complaint is based on the service mark “WHITE EAGLE PARTNERS” for financial services, namely asset management services, in Class 36 (U.S. CLS. 100, 101, and 102). The service mark is registered with the United States Patent and Trademark Office to Complainant, Reg. No. 3,614,922, May 5, 2009. In addition, Complainant conducts business under the name “WHITE EAGLE.”
The domain name that is the subject of this Amended Complaint is whiteeagle.com.
The domain name whiteeagle.com is confusingly similar to the service mark “WHITE EAGLE PARTNERS” in which Complainant owns intellectual property rights because the words “WHITE EAGLE” appear in both. Furthermore, the domain name is the same as Complainant’s e-mail extension, which is “@whiteeagle.com.” Finally, Complainant’s business is known in the financial services industry as “WHITE EAGLE.” These words are the exact same as the domain name. Complainant had been operating the domain name at issue here, with Respondent’s knowledge, in connection with its business until Niket Jain was terminated for cause as a Managing Member of that business and refused to relinquish the domain name to Complainant.
Respondent should be considered as having no rights or legitimate interests in the domain name because Respondent: (i) does not own any marks in connection with the domain name, (ii) has never used, and does not use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (iii) has not been commonly known by the domain name; and (iv) is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The domain name should be considered as having been registered in bad faith for the following reasons: Complainant instructed Niket A. Jain, when he was a Managing Member of Complainant, to obtain a domain name and e-mail address for Complainant under the name Complainant does business. That name is “WHITE EAGLE.” Mr. Jain did so and Complainant, with Jain’s knowledge: (i) registered a federal trademark in connection with the domain name, and (ii) has consistently used the domain name or a name corresponding to the domain name for almost two years in connection with a bona fide offering of services.
B. Respondent
The <whiteeagle.com>
domain name was registered personally by Niket Jain prior to the establishment
of White Eagle LLC entity, as well as prior to filing of the trademark.
The receipt for the domain indicates it was
purchased by Mr. Jain on March 13, 2008 using his personal credit card. Mr. Jain has never received payment from any
party whatsoever regarding the usage of <whiteeagle.com>. He has paid for this name with his own money,
and as such, remains the rightful owner of the domain name. The domain name was registered over 15 years
ago by an NBC (the media channel) affiliate.
It has been sold in the secondary market to Niket Jain.
White Eagle Partners, LLC was established
as a legal entity on April 23, 2008 – clearly formed after Mr. Jain had taken
ownership of the domain name. “White Eagle Partners” was trademarked on May 5,
2009 – once again clearly (over one year) after Mr. Jain had taken ownership of
the domain name, as well as after Mr. Jain was no longer involved in any of the
operations of White Eagle Partners, LLC.
There is no agreement between White Eagle
Partners LLC and Mr. Jain to lend usage or give ownership of
whiteeagle.com. White Eagle Partners has
no legal right nor claim to the domain name. There are no provisions for intellectual
property in the partnership agreement, nor does the agreement specify that any
intellectual capital was to be contributed.
The name “White Eagle” is a creation of Mr. Jain’s, and this was done
prior to the creation and development of White Eagle Partners.
The domain registration was not in bad
faith. The complainant never instructed
Mr. Jain to obtain a domain name. There
is no proof nor documentation of this. Mr. Jain purchased <whiteeagle.com> on his own prior to even forming the partnership
with Mr. Rasteh.
FINDINGS
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 provided evidence of the registration of its WHITE EAGLE
PARTNERS mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 3,614,922 filed April 25, 2008; registered May 5, 2009). The Panel finds Complainant’s registration of
its WHITE EAGLE PARTNERS mark is sufficient to establish Complainant’s rights
under Policy ¶ 4(a)(i). 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
Complainant argues that Respondent’s disputed
domain name is confusingly similar to Complainant’s WHITE EAGLE PARTNERS
mark. The disputed domain name deletes
the word “partners,” deletes the spaces between the words in Complainant’s
mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations do not
overcome a finding of confusing similarity under Policy ¶ 4(a)(i). And Respondent’s <whiteeagle.com> domain name is confusingly similar to
Complainant’s WHITE EAGLE PARTNERS mark under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v.
While Respondent argues that its registration of the <whiteeagle.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such prior registration is not conclusive under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant must
first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it
does have rights or legitimate interests.
See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information lists the registrant as “Tech, En.” The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also asserts that the disputed domain name currently resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is neither a bona fide offering of goods or 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).”).
The Panel may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and is not necessarily 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.”).
In June 2009, Niket Jain was terminated for cause as a Managing Member of Complainant. Jain sued Complainant challenging his mandatory withdrawal. In a Decision and Order dated February 1, 2010, the New York Supreme Court dismissed Mr. Jain’s lawsuit on the pleadings and sustained Complainant’s decision to terminate Mr. Jain for cause. See Jain v. Rasteh & White Eagle Partners, LLC, Sup. Ct. N.Y. County Index No. 109920/2009. After Mr. Jain was terminated for cause, he closed down the Complainant’s site, <whiteeagle.com> domain name. Complainant contacted Network Solutions and learned that Mr. Jain, when he was a Managing Member of Complainant, registered its domain name under the name Tech, En.
The Panel finds that Respondent’s actions as a former employee are evidence of Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name).
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 <whiteeagle.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: May 5, 2010
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