Omni Development, Inc. d/b/a The Omni Group v Graffle, Inc

On April 26, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <graffle.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@graffle.com. Also on May 2, 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.

A timely Response was received and determined to be complete on May 24, 2011.

On May 31, 2011 an Additional Submission was received from Complainant and later an additional submission from Respondent was received. Both documents were carefully considered by the panel.

On June 1, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the above named Neutrals as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to the Complainant.

Preliminary Issue: Deficient Response

Respondent in this matter did not file the response within 20 days of the date of commencement of the arbitration proceedings making the response untimely under ICANN Rule 5. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, has chosen to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

PARTIES' CONTENTIONS

A. Complainant

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

Complainant contends that it has established its rights in the GRAFFLE mark by registering that mark with a federal trademark authority, the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,371,418 filed October 16, 2006; issued January 22, 2008).

Complainant also contends that Respondent’s <graffle.com> domain name is identical to its GRAFFLE mark. Complainant alleges that the disputed domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com.”

Respondent makes no contentions with regards to Policy ¶ 4(a)(i)

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

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) (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 UDRP ¶ 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) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. 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 alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information on record identifies the registrant of the disputed domain name as “gRaffle, Inc.”

Complainant alleges that the disputed domain name resolves to a site that offers no bona fide goods or services but merely features links to software and other commercial products.

Respondent:

Respondent contends that it is commonly known by the disputed domain name because of its organization under the “gRaffle, Inc.” corporation name. Respondent alleges that it has registered the corporate name with the State of Delaware, which supports a finding that it is commonly known by the disputed domain name.

Respondent claims that its rights in the disputed domain name exist concurrently with Complainant’s rights in the GRAFFLE mark because they operate in different fields of business. Respondent alleges that it will soon be offering global raffle services through the disputed domain name. Complainant asserts that it is a software application firm and uses the GRAFFLE mark in that field.

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

Complainant contends that the initial registrant of the site, “Stanley Pace,” had established a pattern of bad faith registration over multiple UDRP disputes.

Complainant contends that the disputed domain name resolves to an inactive site. Furthermore, it is Complainant’s contention that the failure to make an active use of the disputed domain name constitutes bad faith registration and use.

Respondent claims that it has obtained and made preparations to use the disputed domain name in good faith because it intends to utilize the <graffle.com> domain name in conjunction with its business.

C. Additional Submissions

Both parties filed additional submissions which were read and considered by the panel.

Complainant filed two affidavits with attachments relating to various items of E-Mail transmissions between the parties and a “Reply to Graffle, Inc.'s Response”. These were found to be helpful.

The respondent filed one response with an attachment of graphics from Complainant's website and later an E-Mail to the case coordinator making certain arguments that the panel found not to be helpful.

FINDINGS

The panel finds for the Complainant on the following points:

(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.

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."

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 canceled 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

Previous panels have determined that registering a mark with the USPTO creates affirmative rights in that mark dating back to the filing date. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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 Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds Complainant has established its rights under Policy ¶ 4(a)(i) on October 16, 2006 by filing for, and ultimately obtaining, a trademark registration for the GRAFFLE mark with the USPTO.

The Panel finds the addition of a gTLD does not differentiate the disputed domain name from the GRAFFLE mark in a manner that would vitiate their confusing similarity under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark)

Rights or Legitimate Interests

The Panel finds, based upon the lack of substantial evidence in the record showing otherwise, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) (“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant’s MB FINANCIAL mark.”); see also Wyndham IP Corp. v. Golden Door, FA 341231 (Nat. Arb. Forum Dec. 1, 2004) (finding that the respondent was not commonly known by the <goldendoor2.com> domain name even though the domain name WHOIS information indicated that the respondent was conducting business under the ‘Golden Door’ name because the domain name’s resultant website offered a link to the complainant).

Complainant alleges the disputed domain name resolves to a site that offers no bona fide goods or services but merely features links to software and other commercial products.

The panel finds that while links sites may constitute a legitimate interest when they consist of links that relate to a domain name that is a descriptive term, we do not see any such use of the site in the current case. Graffle is not a descriptive term nor do links on the site relate to raffles. Hence, the panel finds against Respondent on the issue of legitimate right and interest.

After a review of all of Respondent’s exhibits, the Panel finds them simply inadequate to demonstrate Respondent’s claim to be developing a global raffle business and therefore holds Respondent has not established any right or legitimate interest under Policy ¶ 4(c).

Registration and Use in Bad Faith

The Panel finds that Stanley Pace has engaged in many instances of cybersquatting in the past and that this pattern is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Nat. Arb. Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)).

The Panel finds Respondent’s use of the disputed domain name to link to goods and services that include those competing with the Complainant constitutes bad faith or use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith). Respondent’s history of cybersquatting and failure to use the site for any fair use purposes provides sufficient evidence to conclude that registration was also in bad faith.

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

ROBERT T. PFEUFFER, CHAIR

Ms. Diane Cabell, Panelist

Mr. Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: June 14, 2011