national arbitration forum

 

DECISION

 

Global Networks Enterprise & Technologies, Inc., d/b/a LAN/WAN Professional v. Guard Protected / Namecheap.com

Claim Number: FA1108001402544

 

PARTIES

Complainant is Global Networks Enterprise & Technologies, Inc., d/b/a LAN/WAN Professional (“Complainant”), represented by Patrick Pule, California, USA.  Respondent is Guard Protected / Namecheap.com (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <lanwanprofessional.info> and <lanwanprofessionalscam.com>, registered with eNom, Inc.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2011; the National Arbitration Forum received payment on August 9, 2011.

 

On August 11, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <lanwanprofessional.info> and <lanwanprofessionalscam.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 August 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@lanwanprofessional.info and postmaster@lanwanprofessionalscam.com.  Also on August 16, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 (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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <lanwanprofessional.info> and <lanwanprofessionalscam.com> domain names are confusingly similar to Complainant’s LAN/WAN mark.

 

2.    Respondent does not have any rights or legitimate interests in the <lanwanprofessional.info> and <lanwanprofessionalscam.com> domain names.

 

3.    Respondent registered and used the <lanwanprofessional.info> and <lanwanprofessionalscam.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Global Networks Enterprise & Technologies, Inc., d/b/a LAN/WAN Professional, uses its LAN/WAN mark in connection with technical instruction on Microsoft and Cisco operating systems. Complainant claims common law rights in the LAN/WAN mark based on its use of the mark in connection with its goods and services since 2008.

 

Respondent, Guard Protected / Namecheap.com, registered the <lanwanprofessional.info> and <lanwanprofessionalscam.com> domain names on September 9, 2010. Complainant alleges that the disputed domain names resolve to websites that only intend to damage the LAN/WAN mark and are used to extort money from Complainant’s business but provides no screenshots or other evidence of Respondent’s use.

 

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 does not own a trademark registration for the LAN/WAN mark. Previous panels, in cases such as Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001), and Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007), found that a trademark registration is not necessary to establish rights under the Policy. In situations where Complainant has no registered mark, panels have concluded that Complainant can prove rights if it demonstrates that it has continuously used the mark and that the mark subsequently acquired secondary meaning. See Kaino v. Fix, FA 699578 (Nat. Arb. Forum June 19, 2006) (finding common law rights where the complainant has been “…creating and displaying artwork under the GLENN KAINO mark since 1999, and that Complainant’s mark has been recognized as associated with Complainant’s artwork by several publications and the national media.”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).  The Panel finds accordingly.

 

Complainant alleges that it has common law rights in the LAN/WAN mark. To support this assertion, Complainant contends that it has continuously used this mark in connection with technical instruction since 2008 and has advertised its products and services under the mark online at its <lanwanprofessional.com> domain name. Complainant provides no evidence in support of these claims, however, other than a copy of its fictitious business name statement showing that it registered the “LAN/WAN Professional” name on November 3, 2008. There is no evidence showing that Complainant ever used the mark, no evidence of advertisement of the mark at Complainant’s <lanwanprofessional.com> domain name or otherwise, and no evidence of any consumer recognition of the mark. Based on this lack of evidence, the Panel determines that Complainant has failed to show either continuous use or the subsequent acquisition of secondary meaning. The Panel therefore concludes that Complainant has not proven common law rights in the LAN/WAN mark for the purposes of Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).   

 

Based on the Panel’s determination that Complainant has no rights in the LAN/WAN mark, the Panel holds that Complainant has not satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

While the Panel is not required to continue its analysis under the UDRP after finding that Complainant has not satisfied Policy ¶ 4(a)(i), this Panel chooses to conduct a Policy ¶ 4(a)(ii) analysis.

 

Complainant asserts that Respondent does not possess rights and legitimate interests in the disputed domain names because it contends that Respondent’s use of the disputed domain names only began after Respondent became a customer of Complainant. Complainant argues that the disputed domain names resolve to websites with content indicating that the only purpose is to damage the LAN/WAN Professional mark. Complainant does not make any specific allegations regarding the content of the resolving websites, however, nor does it provide any screenshots showing Respondent’s use of the disputed domain names. Based on the lack of specific allegations and evidence, the Panel cannot conclude that Respondent does not have rights and legitimate interests in the disputed domain names as it does not have sufficient knowledge regarding the content of the resolving websites. Accordingly, the Panel finds that Complainant has failed to prove that Respondent lacks rights and legitimate interests in the disputed domain names according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).

 

Due to Complainant’s failure to present a prima facie case against Respondent under Policy ¶ 4(a)(ii), the Panel holds that Complainant has not satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel also chooses to conduct a Policy ¶ 4(a)(iii) analysis.

 

Complainant alleges that after registering disputed domain names identical to Complainant’s LAN/WAN mark, Respondent then approached Complainant as an SEO consultant who claimed he could make the websites disappear if hired. Complainant asserts that Respondent has therefore registered the disputed domain names for the purpose of disrupting or extorting money from Complainant’s business, which shows bad faith registration and use according to Policy ¶ 4(b)(iii). Complainant has again provided no evidence to support these allegations, however. There is no proof of the content of the websites nor of any communication or interaction between Complainant and Respondent. Due to the lack of evidence, the Panel concludes that Complainant has not proven that Respondent registered or uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

The Panel finds Complainant has not satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <lanwanprofessional.info> and <lanwanprofessionalscam.com> domain names REMAIN WITH Respondent.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  September 16, 2011

 

 

 

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