ICRCO, Inc. v. NA / Admin, Domain
Claim Number: FA1105001389920
Complainant is ICRCO, Inc. (“Complainant”), represented by Robert Duane Rowlett, California, USA. Respondent is NA / Admin, Domain (“Respondent”), represented by Ying Qian, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <icrco.com>, registered with MYDOMAIN, INC.
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.
Judge ROBERT T. PFEUFFER, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2011; the National Arbitration Forum received payment on May 20, 2011.
On May 20, 2011, MYDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <icrco.com> domain name is registered with
MYDOMAIN, INC. and that Respondent is the current registrant of the name. MYDOMAIN, INC. has verified that Respondent is bound by the MYDOMAIN, INC. 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 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@icrco.com. Also on May 27, 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 June 17, 2011.
On June 22, 2011 an additional submission was received from Complainant, but was determined by the Forum to be filed late. While the panel could ignore the materials contained in the late additional submission, it has chosen to consider it and has found the evidence helpful in deciding this case.
On June 27, 2011, Respondent timely filed an additional submission which was received by the Panel and fully considered prior to reaching its final decision.
On June 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant requests that the domain name be transferred from Respondent to
Complainant.
A. Complainant
Complainant argues that it has established its rights in the ICRCO mark through its registration with the United States Patent and Trademark Office (Reg. No. 3,820,193; filed December 10, 2008; issued July 20, 2010).
The complainant's CEO filed a sworn statement supporting its contention that it had long ago established common law rights in the name ICRCO through continual use in the radiology industry. Further, many annexes attached to the additional submission supports this contention.
Complainant asserts that Respondent’s <icrco.com> domain name is identical to its ICRCO mark. Complainant states that the disputed domain incorporates the ICRCO mark entirely and only changes it by adding the generic top-level domain (“gTLD”) “.com.”
Complainant asserts that Respondent is not commonly known by the <icrco.com> domain name.
Complainant argues that Respondent previously used the <icrco.com> domain name to reroute Complainant’s potential customers and Internet users to competing radiology company websites. Complainant believes that Respondent received click-through fees from these featured links.
Complainant alleges that the Respondent’s disputed domain name is being held with no actual use or website as indicated in Annex 4.
Complainant alleges that Respondent offered by e-mail to sell the <icrco.com> domain name to Complainant for $6,500, only one day after the July 2, 2006 date of registration.
Complainant maintains that Respondent attempted to sell the disputed domain to Complainant for $6,500 via e-mail. Complainant claims this e-mail was sent by Respondent the day after Respondent registered this domain name. Respondent claims that a different third-party contacted Complainant about selling the disputed domain name. In response to this allegation, Complainant claims that the registrant e-mail for the disputed domain name was formerly jinyangshen@yahoo.com. Recently, Complainant states it received an email from the registrant’s current listed email, claiming that the registrant has held <icrco.com> since the July 2006 registration date. Complainant provides a copy of the purported email. Complainant argues that although the registrant name for the disputed domain name has changed multiple times after the initial registration, the creation date of the domain name did not change, which Complainant claims indicates that the current registrant is the same identity as the initial registrant and that the domain name has not been transferred from one entity to another. According to Complainant’s theory, Respondent merely changed the registrant’s contact information and remains the same entity that contacted Complainant and attempted to sell the disputed domain name.
Complainant alleges that when Respondent failed to get money from selling the disputed domain to Complainant, Respondent used the disputed domain name to disrupt its business. According to Complainant, Respondent’s <icrco.com> domain name previously resolved to a website which provided links to third-parties offering products directly competing with Complainant’s provision of radiology equipment.
Complainant contends that Respondent registered and used the disputed domain to create a likelihood of confusion between Complainant’s ICRCO services and the services of its competitors. Complainant claims that Respondent tried to benefit from the confusion of Internet users by reaping profits from click-through fees from the competing links featured on the resolving website.
Complainant argues that Respondent currently holds the <icrco.com> domain name at an inactive website. Previous panels have determined that inactive holding of a website or making no active use is evidence of bad faith use and registration according to Policy ¶ 4(a) (iii).
Complainant alleges that Respondent had actual or constructive notice of Complainant’s rights in the ICRCO mark due to Complainant’s trademark registration with the USPTO, Complainant’s commercial success, and Respondent’s use of the disputed domain name to sell products similar to those sold under Complainant’s mark.
Respondent' Contentions
Respondent claims that Complainant provides no evidence to support its common law rights assertion in the ICRCO mark and that mere assertion of such rights are insufficient since Complainant does not submit evidence to show that the public identified Complainant’s ICRCO mark exclusively with Complainant’s products prior to its 2010 trademark registration.
Respondent contends that the <icrco.com> domain name is not identical or confusingly similar. Respondent claims that the trademark described in the USPTO registration is “design plus words, letters and/or numbers” and that the trademark consists of more than just ICRCO, but that the trademark is for a blue oval containing the stylized letter string “iCRco” and the mere text “ICRCO” is easily distinguished from the design.
Respondent argues that its disputed domain name was registered prior to Complainant’s alleged rights in the mark. However, this argument is not applicable under Policy ¶ 4(a) (i).
Respondent claims that the <icrco.com> domain name incorporates a simple five-letter combination and that anyone, including Respondent, is entitled to register a domain name incorporating a simple list of letters and since Respondent was the first person to register this domain name, it has rights and legitimate interests in the name, especially considering that at the time of registration, Complainant had no trademark rights in ICRCO. Respondent argues that Complainant does not have exclusive rights to the five-letter combination and that “CO” is a common abbreviation for “company,” and that ICR CO is a common abbreviation for any company with the ICR acronym as their business name.
Respondent maintains that it did not contact Complainant to offer the <icrco.com> domain name for sale. Respondent states that it registered the <icrco.com> domain name via eNom Club Drop auction on July 6, 2006, which was a backorder and auction platform provided by eNom at the time. Respondent claims that when Complainant received the offer to purchase the disputed domain name on July 3, 2006, the domain name was in a 3-day auction period at eNom and was prior to Respondent’s registration date. Respondent claims the offer came from another potential bidder in the auction attempting to sell a domain name he did not yet own.
Respondent argues that its registration of the <icrco.com> domain name predates Complainant’s trademark registration or common law rights in the ICRCO mark. According to Respondent, Respondent acquired the disputed domain name on July 6, 2006. The WHOIS information lists the registration date of the disputed domain name as July 2, 2006.
The panel finds:
(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.
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 cancelled or transferred:
(4) to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) The domain name has been registered and is being used in bad faith.
The domain name registered by Respondent is identical or confusingly similar
Previous panels have determined that trademark rights can be established by registration with a trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a) (I)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Past panels have also found that a complainant’s trademark rights begin on the filing date of a registered trademark. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”). The Panel finds Complainant has demonstrated its rights in the ICRCO mark through its trademark registration with the USPTO, pursuant to Policy ¶ 4(a)(i), dating back to December 10, 2008.
The Panel finds that Complainant has presented sufficient evidence to demonstrate its common law rights in the ICRCO mark under Policy ¶ 4(a)(i), dating back to April 2004. 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 Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
The Panel finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a) (i) determination. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, the Panel concludes that Respondent’s disputed domain is identical to Complainant’s ICRCO mark pursuant to Policy ¶ 4(a) (i).
While Respondent argues that its registration of the <icrco.com> domain name predates Complainant’s alleged rights in the ICRCO mark, the Panel finds that such a determination is not necessary 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).”).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and that 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.”).
The Panel has determined that the WHOIS information does not indicate that Respondent is commonly known as the disputed domain name. As such, the Panel finds that there has been no evidence presented that would support a finding that Respondent is commonly known by the disputed domain name, under 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name.
The Panel finds that Respondent’s use of the disputed domain name to host a website which provides commercial links directly competing with Complainant’s business 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
The Panel finds that Respondent’s failure to make an active use of the <icrco.com> domain name is evidence that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(I) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel has determined that Respondent’s willingness to dispose of its interest in the <icrco.com> domain name so soon after registration is further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See 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); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
Registration and Use in Bad Faith
The Panel finds that by trying to sell the disputed domain name for more than its out-of-pockets costs, Respondent’s registration and use of the <icrco.com> domain name constitutes bad faith 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 Bank of Am. Corp. v. Nw. 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).”).
The Panel has determined that such registration and use is disruptive and was, therefore, in bad faith under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel finds that Respondent’s former registration and use of the <icrco.com> domain for commercial gain is indicative of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Previous panels have determined that inactive holding of a website or making no active use is evidence of bad faith use and registration according to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also 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). The Panel finds accordingly.
Constructive knowledge has generally not been held sufficient to support a finding of bad faith, however, the Panel finds Respondent had actual knowledge of Complainant's mark, the Panel thus finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icrco.com> domain name be TRANSFERRED from Respondent to Complainant.
JUDGE ROBERT T. PFEUFFER, Panelist
Dated: JUNE 28, 2011
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