Precitec Corp. d/b/a Poly-clip Corp. v. US Domain4U
Claim Number: FA1109001405637
Complainant is Precitec Corp. d/b/a Poly-clip Corp. (“Complainant”), represented by Timothy M. McCarthy of Clark Hill PLC, Illinois, USA. Respondent is USDomain4u (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <poly-clip.us> and <polyclip.us>, registered with GoDaddy.com, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2011; the Forum received a hard copy of the Complaint on August 31, 2011.
On September 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <poly-clip.us> and <polyclip.us> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 6, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 26, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <poly-clip.us> and <polyclip.us> domain names domain names are identical to Complainant’s POLY-CLIP mark.
2. Respondent does not have any rights or legitimate interests in the <poly-clip.us> and <polyclip.us> domain names.
3. Respondent registered and used the <poly-clip.us> and <polyclip.us> domain names domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Precitec Corp. d/b/a Poly-clip Corp., owns the POLY-CLIP mark that it uses in connection with closure clips and machines for setting closure clips. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its POLY-CLIP mark (e.g., Reg. No. 715,725 registered March 16, 1960).
Respondent, US Domain4U, registered the <poly-clip.us> and <polyclip.us> domain names on June 22, 2002. The disputed domain names resolve to Complainant’s official website. Respondent has offered to sell the disputed domain names to Complainant.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has provided evidence of its trademark registrations with the USPTO for its POLY-CLIP mark (e.g., Reg. No. 715,725 registered March 16, 1960). The Panel determines that such evidence is sufficient to prove Complainant’s rights in the POLY-CLIP mark for the purposes of Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to UDRP ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i)).
Respondent’s <poly-clip.us> and <polyclip.us> domain names contain Complainant’s POLY-CLIP mark, aside from the hyphen in the <polyclip.us> domain name, and also contain the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the alterations to the disputed domain names are insufficient to distinguish the disputed domain names from Complainant’s mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Thus, the Panel holds that Respondent’s <poly-clip.us> and <polyclip.us> domain names are identical to Complainant’s POLY-CLIP mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <poly-clip.us> and <polyclip.us> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <poly-clip.us> and <polyclip.us> domain names. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that Respondent has provided no indication that it is known by the <poly-clip.us> and <polyclip.us> domain names and Complainant has found no such evidence. The Panel has also examined the record and has found no evidence that Respondent is commonly known by the disputed domain names. As the WHOIS information identifies the registrant of the disputed domain names as “US Domain4U,” the Panel concludes that Respondent is not commonly known by the <poly-clip.us> and <polyclip.us> domain names pursuant to Policy ¶ 4(c)(iii). 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 UDRP ¶ 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).
According to Complainant, Respondent uses the <poly-clip.us> and <polyclip.us> domain names to resolve to Complainant’s official website. The Panel determines that such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iv). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trade mark; see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”).
Complainant claims that Respondent offered to the sell the <poly-clip.us> and <polyclip.us> domain names to Complainant. Complainant provides a string of e-mails in which Respondent clearly offers to sell the disputed domain names, but refuses to produce any terms unless Respondent was allowed to speak to Complainant’s CEO. The Panel determines that this information is sufficient to demonstrate that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under UDRP ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
As noted above, Respondent has offered to sell the disputed domain names to Complainant. While Respondent has not made public its terms, the Panel presumes that the amount Respondent is willing to sell the disputed domains for is in excess of Respondent’s out-of-pocket registration costs. Either way, the Panel determines that Respondent’s offer to sell the <poly-clip.us> and <polyclip.us> domain names to Complainant is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Respondent’s <poly-clip.us> and <polyclip.us> domain names both resolve to Complainant’s official website. As the UDRP panel noted in Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010), “[w]hile this use of the disputed domain name may not seem to harm Complainant, Respondent’s appropriation of Complainant’s mark in the disputed domain name deprives Complainant effective control over its mark.” Therefore, this Panel holds that Respondent’s registration and use of the <poly-clip.us> and <polyclip.us> domain names was, and is, in bad faith pursuant to Policy ¶ 4(a)(iii). See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under UDRP ¶ 4(a)(iii)); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <poly-clip.us> and <polyclip.us> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 6, 2011
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