Click Sales, Inc. v. Tim Norton
Claim Number: FA1106001394488
Complainant is Click Sales, Inc. (“Complainant”), represented by Ian V. O’Neill of Holland & Hart LLP, Colorado, USA. Respondent is Tim Norton (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clickbank.org>, registered with 1 & 1 Internet AG.
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 June 20, 2011; the National Arbitration Forum received payment June 20, 2011.
On June 28, 2011, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <clickbank.org> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG verified that Respondent is bound by the 1 & 1 Internet AG registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@clickbank.org. Also on June 29, 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 July 22, 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 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, <clickbank.org>, is identical to Complainant’s CLICKBANK mark.
2. Respondent has no rights to or legitimate interests in the <clickbank.org> domain name.
3. Respondent registered and used the <clickbank.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Click Sales, Inc., owns the CLICKBANK mark. Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for its CLICKBANK mark (e.g., Reg. No. 2,237,676 registered April 6, 1999). Complainant uses its mark as a provider of digital products and services worldwide.
Respondent, Tim Norton, registered the <clickbank.org> domain name April 12, 2010. The disputed domain name resolves to a page that displays animated gifs of dancing cartoon hippopotamuses.
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 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 contends that it has rights in the CLICKBANK mark. Registration of a mark with a federal trademark authority is sufficient evidence for a complainant to establish rights in a mark. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant has provided the Panel with evidence of registrations for its CLICKBANK mark with the USPTO (e.g., Reg. No. 2,237,676 registered April 6, 1999).
The Panel therefore finds that Complainant established rights in the CLICKBANK mark under Policy ¶ 4(a)(i).
The disputed domain name adds to Complainant’s mark the generic top-level domain (“gTLD”) “.org.” This does not distinguish the disputed domain name from the protected mark within it; therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to the complainant’s well-known and registered BMW trademarks).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Once a complainant makes a prima facie case to support its assertions, the burden of proof shifts to the respondent to show that it does have rights or legitimate interests in the disputed domain name. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
When a respondent fails to respond to a complaint, the panel is permitted to presume that Respondent does not challenge complainant’s assertions. 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.”); see also EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as an admission of the allegations contained in the Complaint.”). The Panel finds that Complainant made a prima facie case, but this Panel still reviews the evidence in the record before making a determination as to Respondent‘s rights or legitimate interests under a Policy ¶ 4(c) analysis.
A panel may find that a respondent has rights or legitimate interests where a respondent is commonly known by a disputed domain name—a determination based on the information provided on the record, including the WHOIS listing for the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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 urges that it has in no way authorized or affiliated itself with Respondent and the WHOIS information for the <clickbank.org> domain name does not provide any evidence to suggest that Respondent is commonly known by the domain name. The Panel finds that, pursuant to Policy ¶ 4(c)(ii), Respondent is not commonly known by the <clickbank.org> domain name.
A Respondent may also show rights or legitimate interests by bona fide use of the disputed domain name. However, passive holding of a website is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. 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).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”).
Respondent holds the disputed domain name to show gifs of dancing cartoon hippopotamuses. The Panel finds that this is passive holding; Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant also alleges that Respondent registered the <clickbank.co.uk> domain name and that Respondent’s use of that site as well further demonstrates Respondent’s lack of rights and legitimate interests in the <clickbank.org> domain name. However, since the <clickbank.co.uk> is not involved in the present case, the Panel finds that the use and existence of that domain has no bearing on Respondent’s activities involving the <clickbank.org> domain name except to suggest a pattern of such registrations that has not been proved.
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and used the disputed domain name with the intent to sell it to Complainant for an amount in excess of Respondent’s out-of-pocket costs. However, Complainant did not assert that Respondent made an offer of sale to Complainant and did not provide evidence that Respondent made a general offer of sale to the general public. Additionally, the WHOIS record for the <clickbank.org> domain name as well as the domain name’s resolving website contain no evidence that Respondent has offered or is willing to sell the domain name. The Panel finds that Complainant did not show bad faith registration and use under a Policy ¶ 4(b)(i) analysis.
Complainant additionally alleges that Respondent has engaged in a pattern of bad faith registration and use of domain names. Complainant did not provide the Panel with evidence of past cases in which Respondent was found to have registered and used domain names in bad faith and has not identified other domain names registered by Respondent that contain Complainant’s mark other than the allusion to the <clickbank.co.uk> domain name. The Panel finds that Complainant has not established bad faith registration and use in a Policy ¶ 4(b)(ii) analysis.
However, passive holding of a domain name supports findings of bad faith registration and use. 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Respondent’s holding of the <clickbank.org> domain name without an active use demonstrates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <clickbank.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 30, 2011.
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