national arbitration forum

 

DECISION

 

The Saint At Large, Inc. v. blackparty.com c/o Whois Privacy Service

Claim Number: FA1007001334316

 

PARTIES

Complainant is The Saint At Large, Inc. (“Complainant”), represented by Jerald M. Tenenbaum, of Fridman Law Group, LLC, New York, USA.  Respondent is blackparty.com c/o Whois Privacy Service (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <blackparty.com>, registered with TIERRANET INC. d/b/a DOMAINDISCOVER.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2010.

 

On July 9, 2010, TIERRANET INC. d/b/a DOMAINDISCOVER confirmed by e-mail to the National Arbitration Forum that the <blackparty.com> domain name is registered with TIERRANET INC. d/b/a DOMAINDISCOVER and that Respondent is the current registrant of the name.  TIERRANET INC. d/b/a DOMAINDISCOVER has verified that Respondent is bound by the TIERRANET INC. d/b/a DOMAINDISCOVER 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 July 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@blackparty.com by e-mail.  Also on July 16, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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 <blackparty.com> domain name is confusingly similar to Complainant’s THE BLACK PARTY mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, The Saint At Large, Inc., is an organizer and presenter of dance parties under the THE BLACK PARTY mark that was founded in 1981.  Complainant contends that it has been continuously operating under its THE BLACK PARTY mark since 1981.  Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its THE BLACK PARTY mark (Reg. No. 2,512,461 filed December 13, 2000; issued November 27, 2001).

 

Respondent, blackparty.com c/o Whois Privacy Service, registered the <blackparty.com> domain name on February 11, 2000.  Respondent’s disputed domain name previously resolved to a website located at <worknyc.com> that advertised employment opportunities.  Respondent’s disputed domain name currently redirects Internet users to the third-party website <mcdonalds.com>.  Respondent’s disputed domain name is currently listed for sale for $2,488.

 

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 submitted evidence to show that it has rights in its THE BLACK PARTY mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (Reg. No. 2,512,461 filed December 13, 2000; issued November 27, 2001).  In addition, Complainant has established that it has been continuously doing business under its THE BLACK PARTY mark since 1981.  Complainant further notes it has invested over twenty-five years of work and a substantial amount of money to establish its mark in the market.  The Panel finds that Complainant has submitted sufficient evidence to establish common law rights in its THE BLACK PARTY mark since as early as 1981.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).   

 

Complainant contends that the <blackparty.com> domain name is confusingly similar to Complainant’s THE BLACK PARTY mark.  Complainant argues that the disputed domain name contains its entire mark that simply omits the spaces separating the terms of the mark, omits the article “the,” and adds the generic top-level domain (“gTLD”) “.com.”  The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See American 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.”); see also Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark); Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”);  Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).       

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights and legitimate interests in the <blackparty.com> domain name under Policy ¶ 4(a)(ii).  Complainant is required to produce a prima facie case in support of its allegations before the burden of proof shifts to Respondent to show that it does have rights and legitimate interests in the <blackparty.com> 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.”).  The Panel finds that Complainant has established a prima facie case to support its allegations.  Due to Respondent’s failure to respond to these proceedings the Panel finds that it may accept as true all the allegations within the Complainant that are not clearly contradicted by the evidence on record.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).  Nevertheless, the Panel will continue to evaluate the evidence in the record to determine whether Respondent has rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). 

 

The WHOIS information for the <blackparty.com> domain name identifies “blackparty.com c/o Whois Privacy Service” as the registrant, and Respondent has not come forward with any evidence indicating that it is commonly known by the disputed domain name.  Therefore, the Panel finds that, although Respondent appears to be known by the disputed domain name, Respondent is not commonly known by the <blackparty.com> domain name within the meaning of Policy ¶ 4(c)(ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).

 

Complainant contends that Respondent was previously using the disputed domain name to resolve to Respondent’s employment website at <worknyc.com>.  Complainant argues that Respondent’s use of the disputed domain name to divert Internet users to an unrelated website for Respondent’s commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  The Panel agrees and finds that Respondent’s previous use of the disputed domain name to redirect Internet users to Respondent’s employment website 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. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).

 

Complainant also alleges that after receiving Complainant’s cease and desist letter, Respondent redirected the disputed domain name to the unrelated third-party website of <mcdonalds.com>.  The Panel finds that such us of a confusingly similar domain name does not constitute 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 Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). 

 

The Panel further finds that Respondent is attempting to sell the disputed domain name for $2,488.  Complainant’s submitted screen shot of the WHOIS record, “Blackparty.com is for sale.  The Owner of the domain you are researching has it listed for sale for $2,488.”  There is also a hyperlink to click on that presumably allows an Internet user to offer to buy the domain name for the listed price.  The Panel finds that Respondent’s offer to sell the disputed domain name is further evidence of its lack of rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).

 

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

 

Registration and Use in Bad Faith

 

The Panel has already determined that Respondent is attempting to sell the disputed domain name to the general public for $2,488.  Previous panels have determined that a respondent’s willingness to sell a disputed domain for an amount over its out-of-pocket expenses is evidence of registration and use in bad faith under Policy ¶ 4(b)(i).  The Panel agrees with those past findings and finds that Respondent’s attempt to sell the disputed domain name for $2,488 is further evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i).  See 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)); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). 

 

Complainant has alleged that Respondent formerly used the <blackparty.com> domain name to redirect Internet users to Respondent’s employment website for Respondent’s financial gain.  Complainant claims Respondent is currently using the disputed domain name to resolve to the unrelated website <mcdonalds.com>.  The Panel finds that Respondent’s misappropriation of Complainant’s THE BLACK PARTY mark to redirect Internet users to an unrelated website operated by Respondent or an unrelated website operated by a third-party, for Respondent’s commercial gain, is evidence that Respondent registered and used the <blackparty.com> domain name in bad faith under Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

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

 

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 <blackparty.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  August 17, 2010

 

 

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