national arbitration forum

 

DECISION

 

Implus Footcare, LLC v. John Ellison

Claim Number: FA1109001406760

 

PARTIES

Complainant is Implus Footcare, LLC (“Complainant”), represented by Patrick T. Casey of Buchanan Ingersoll & Rooney PC, Pennsylvania, USA.  Respondent is John Ellison (“Respondent”), Ireland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yaktraxireland.biz>, registered with Blacknight Internet Solutions Ltd.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

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

 

On September 9, 2011, Blacknight Internet Solutions Ltd confirmed by e-mail to the National Arbitration Forum that the <yaktraxireland.biz> domain name is registered with Blacknight Internet Solutions Ltd and that Respondent is the current registrant of the name.  Blacknight Internet Solutions Ltd has verified that Respondent is bound by the Blacknight Internet Solutions 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 September 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@yaktraxireland.biz.  Also on September 14, 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 October 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <yaktraxireland.biz> domain name is confusingly similar to Complainant’s YAKTRAX mark.

 

2.    Respondent does not have any rights or legitimate interests in the <yaktraxireland.biz> domain name.

 

3.    Respondent registered and used the <yaktraxireland.biz> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Implus Footcare, LLC, is the designer and manufacturer of a shoe accessory marketed under the YAKTRAX mark that is used as a traction device attached to shoes that enables the user to walk on packed snow and ice easily.  Complainant owns the following trademark registrations for its YAKTRAX mark:

 

1.    United States Patent and Trademark Office ("USPTO") (Reg. No. January 25, 2000);

2.    European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 2,938,041 registered February 8, 2004);

3.    Japanese Patent Office (“JPO”) (Reg. No. 5,031,326 registered March 9, 2007); and

4.    Chinese State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5,579,877 registered October 14, 2009).

 

Respondent, John Ellison, registered the <yaktraxireland.biz> domain name on June 18, 2011.  Respondent’s disputed domain name resolves to a website that states, “Yaktrax Ireland,” “Safety Footwear,” and “Yaktrax footwear is used for stopping slipping on ice and snow.”  There are no active links contained on the website, nor does the website purport to sell any products. 

 

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 has provided evidence that it has registered the YAKTRAX mark with several national trademark authorities worldwide, including the USPTO (Reg. No. January 25, 2000), OHIM (Reg. No. 2,938,041 registered February 8, 2004), the JPO (Reg. No. 5031326 registered March 9, 2007), and the SAIC (Reg. No. 5,579,877 registered October 14, 2009).  The Panel finds that such evidence sufficiently establishes Complainant’s rights in the YAKTRAX mark under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Complainant notes that the domain name contains the entire YAKTRAX mark while adding the geographic identifier “ireland” and the generic top-level domain (“gTLD”) “.biz.”  Complainant contends that the geographic term does not distinguish the domain name from its mark and that the addition of “.biz” is irrelevant under the Policy.  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <yaktraxireland.biz> domain name.  Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name.  The Panel finds Complainant has adequately established a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fan Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

Complainant further contends that Respondent is not commonly known by the disputed domain name and that Complainant has not given Respondent permission to use Complainant’s mark.  The WHOIS information for the disputed domain name identifies Respondent as “John Ellison,” and there is no further evidence on record showing that Respondent is commonly known by the disputed domain name.  The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Respondent’s disputed domain name resolves to a website that states, “Yaktrax Ireland,” “Safety Footwear,” and “Yaktrax footwear is used for stopping slipping on ice and snow.”  There are no active links contained on the website, nor does the website purport to sell any products.  The Panel finds that as such, Respondent has failed to make an active use of the disputed domain name.  Under Policy ¶ 4(a)(ii), a failure to make an active use of a domain name has been held to leave the respondent without rights or legitimate interests in the domain name at issue.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also 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).”).  Therefore, the Panel finds that Respondent has not made 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) and as such lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive.  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith)   Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b).  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).    

The Panel has already determined that Respondent has failed to make an active use of the disputed domain name.  Such failure to make an active use of a domain name has also been held to constitute bad faith registration and use under Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name 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 that Respondent’s failure to make an active use of the <yaktraxireland.biz> domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 

Lastly, Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the YAKTRAX mark prior to registration of the domain name.  Complainant contends its mark has been registered worldwide for many years and that it is clear from the limited content on Respondent’s website that Respondent knows what Complainant’s products are.  Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, if the Panel finds Respondent had actual knowledge of Complainant's mark, the Panel may find Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also 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).  The Panel finds that under the circumstances it appears as though Respondent had actual knowledge of Complainant and its rights in the YAKTRAX mark.  Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii) based upon such knowledge.

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <yaktraxireland.biz> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 24, 2011

 

 

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