CopsPlus, Inc. v. Christopher Patzer / Buckstaff Public Safety
Claim Number: FA1102001371377
Complainant is CopsPlus, Inc. (“Complainant”), represented by Joshua R. Bressler of Bressler Law PLLC, New York, USA. Respondent is Christopher Patzer / Buckstaff Public Safety (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copsplus.mobi>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 4, 2011; the National Arbitration Forum received payment February 4, 2011.
On February 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <copsplus.mobi> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2011, 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@copsplus.mobi. Also on February 11, 2011, 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 March 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 the Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <copsplus.mobi>, is identical to Complainant’s COPSPLUS mark.
2. Respondent has no rights to or legitimate interests in the <copsplus.mobi> domain name.
3. Respondent registered and used the <copsplus.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CopsPlus, Inc., uses the COPSPLUS mark in connection with online retail store services featuring police supplies and duty gear and equipment. Complainant has owned the <copsplus.com> domain name since 2002 and maintains it as Complainant’s official website using this domain name. Complainant filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the COPSPLUS mark August 13, 2010 (No. 85/107,343 filed August 13, 2010).
Respondent, Christopher Patzer / Buckstaff Public Safety, registered the <copsplus.mobi> domain name November 24, 2009. The disputed domain name resolves to an adult-oriented website.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 to 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 filed a trademark application with the USPTO, but Complainant does not yet hold a trademark registration for the COPSPLUS mark. However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant urges that it has common law rights in the COPSPLUS mark because it has made continuous and extensive use of the mark in interstate commerce since 2002. Complainant provides evidence that it has owned the <copsplus.com> domain name since February 16, 2002. Complainant states that it uses the <copsplus.com> domain name to operate its official website. In addition, Complainant claims that it has served thousands of police, fire safety, and other professionals as its customers. The Panel finds that the evidence in the record supports a finding that Complainant has acquired sufficient secondary meaning in the COPSPLUS mark through its substantial use of the mark and service to the law enforcement community for many years. Therefore, the Panel holds that Complainant established common law rights in the COPSPLUS mark pursuant to Policy ¶ 4(a)(i), dating back to 2002. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant alleges that the <copsplus.mobi> domain name is identical to its COPSPLUS mark. Respondent replicates Complainant’s mark in the disputed domain name and then merely attaches the generic top-level domain (“gTLD”) “.mobi” to Complainant’s mark. The Panel finds a gTLD is irrelevant for Policy ¶ 4(a)(i) purposes. See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”). Therefore, the Panel finds that Respondent’s <copsplus.mobi> domain name is identical to Complainant’s COPSPLUS mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove that it does have such rights or legitimate interests in the <copsplus.mobi> domain name. The Panel may make an inference from Respondent’s failure to submit a Response that Respondent lacks rights to and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to submit a Response, the Panel still evaluates the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant urges that it has not licensed or authorized Respondent to use its COPSPLUS mark. Additionally, the WHOIS information lists “Christopher Patzer / Buckstaff Public Safety” as the registrant of the disputed domain name, which the Panel finds is a name that is not similar to the <copsplus.mobi> domain name. Without evidence to the contrary, the Panel holds that Respondent is not commonly known by the disputed domain name under 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant next asserts that the <copsplus.mobi> domain name resolves to a third-party website at the <policepride.prideaccess.com> domain name. Complainant alleges that the resolving website contains adult-oriented images featuring men attired in police uniforms and toting police and duty gear and equipment. The resolving website also sells membership services to Internet visitors. Complainant submits a screen shot of the resolving website that shows a page that displays the text, “Get Instant Access Now For Just $1!” Complainant claims that Internet users with memberships can access a library of police-themed adult content in exchange for membership fees. In addition, Complainant argues that Respondent receives affiliate fees from the publisher of the resolving third-party website. Based on the evidence in the record, the Panel finds that Respondent uses the disputed domain name to resolve to an adult-oriented website. Furthermore, the Panel finds that Respondent uses the <copsplus.mobi> domain name for commercial purposes because Respondent most likely profits from its use of the domain name through the receipt of affiliate fees. Prior panels have held that these uses do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). Therefore, the Panel concludes that Respondent does not use the <copsplus.mobi> domain name to make 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).
Finally, Complainant claims that Respondent’s domain name resolves to a website that offers police uniforms that compete with Complainant’s police and duty products. The Panel finds that using a domain name that is identical to another’s mark to connect to a competing commercial website does not amount to 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that the website resolving from the disputed domain name sells police and duty gear and equipment. Complainant alleges that this site states: “Welcome to POLICE PRIDE! If you like uniform stuff this is your place.” Accordingly, the Panel finds that the <copsplus.mobi> domain name resolves to a website that sells uniforms that compete with Complainant’s uniforms. As a result, the Panel finds that Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel finds that Respondent uses the disputed domain name in an attempt to profit from the receipt of affiliate fees from a third-party adult-oriented website. Moreover, the Panel finds that the <copsplus.mobi> domain name is identical to Complainant’s COPSPLUS mark. Therefore, the Panel finds that the evidence in the record indicates that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s COPSPLUS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Consequently, the Panel finds that this behavior provides additional evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Finally, the Panel finds that Respondent’s use of the disputed domain name to resolve to an adult-oriented website qualifies as registration and use in bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to a pornographic website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).
The Panel finds that Complainant satisfied the elements of ICANN 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 <copsplus.mobi> domain name TRANSFERRED Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 25, 2011.
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