Batteries Plus, LLC v. Jason Rager / Paydues Inc
Claim Number: FA1109001408552
Complainant is Batteries Plus, LLC (“Complainant”), represented by Dean C. Eyler of Gray, Plant, Mooty, Mooty & Bennett, P.A., Minnesota, USA. Respondent is Jason Rager / Paydues Inc (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <batteriesplusfranchise.org>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 22, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <batteriesplusfranchise.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@batteriesplusfranchise.org. Also on September 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <batteriesplusfranchise.org> domain name is confusingly similar to Complainant’s BATTERIES PLUS mark.
2. Respondent does not have any rights or legitimate interests in the <batteriesplusfranchise.org> domain name.
3. Respondent registered and used the <batteriesplusfranchise.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Batteries Plus, LLC, sells batteries and operates franchises under the BATTERIESPLUS mark. Complainant has registered the BATTERIESPLUS and related marks with the United States Patent and Trademark Office (“USPTO”):
BATTERIES PLUS Reg. No. 1,697,440 registered June 30, 1992;
BATTERIESPLUS Reg. No. 3,322,549 registered October 30, 2007; &
BATTERIESPLUS Reg. No. 3,715,049 registered November 24, 2009.
Respondent, Jason Rager / Paydues Inc, registered the <batteriesplusfranchise.org> domain name on July 7, 2011. Respondent’s disputed domain name allegedly resolves to a website promoting competing goods and services under Complainant’s BATTERIESPLUS mark, displaying Complainant’s BATTERIESPLUS logo, and holding himself out as a representative of Complainant by offering to provide information to consumers about Complainant’s franchise but does not provide evidence to support these assertions.
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.
As Complainant has registered its BATTERIESPLUS mark with the USPTO, Complainant asserts rights in the mark. Complainant has several registrations with the USPTO for the BATTERIESPLUS and related marks:
BATTERIES PLUS Reg. No. 1,697,440 registered June 30, 1992;
BATTERIESPLUS Reg. No. 3,322,549 registered October 30, 2007; &
BATTERIESPLUS Reg. No. 3,715,049 registered November 24, 2009.
In Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007), and Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002), prior panels determined that a trademark registration, including with the USPTO, is prima facie evidence of a complainant’s rights in a mark under Policy ¶ 4(a)(i). Consistent with this longstanding recognition of the rights protected by a USPTO registration, the Panel holds that Complainant has successfully proven its rights in the BATTERIESPLUS mark for the purposes of Policy ¶ 4(a)(i).
Complainant also alleges that Respondent’s <batteriesplusfranchise.org> domain name is confusingly similar to Complainant’s BATTERIESPLUS mark because the disputed domain name is comprised of the mark along with the generic term “franchise” and the generic top-level domain (“gTLD”) “.org.” It has been repeatedly established, including in cases such as Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004), that a domain name containing a mark and a generic word cannot avoid a finding of confusing similarity. It is also clear from UDRP precedent that the presence of a gTLD does distinguish the disputed domain name from the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel thus concludes that Respondent’s <batteriesfranchiseplus.org> domain name is confusingly similar to Complainant’s BATTERIESPLUS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
In arguing against Respondent’s rights and legitimate interests, Policy ¶ 4(a)(ii) mandates that Complainant must present a prima facie case before Respondent is faced with the obligation to defend its rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). In this proceeding, the Panel finds Complainant has not satisfied its initial burden, as discussed in further detail below.
Complainant contends that Respondent owns no federally registered trademark relating to the disputed domain name and is not affiliated in any way with Complainant. Complainant further asserts that Respondent is not licensed or authorized to use Complainant’s mark. The WHOIS information identifies the registrant as “Jason Rager / Paydues Inc,” which reveals no apparent connection between Respondent and the <batteriesplusfranchise.org> domain name. In light of Complainant’s allegations, the WHOIS information, and the lack of evidence presented by Respondent, the Panel concludes that Respondent is neither commonly known by the <batteriesplusfranchise.org> domain name nor has rights and legitimate interests under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant initially alleges that Respondent uses the <batteriesplusfranchise.org> domain name to promote competing goods and services under Complainant’s BATTERIES PLUS mark. Complainant also argues that at the resolving website, Respondent displays Complainant’s BATTERIES PLUS logo, provides false information about Complainant, and holds himself out as a representative of Complainant as he solicits information from and provides information to prospective franchisees. Complainant fails to provide any evidence confirming this use of the disputed domain name, however. Based on this failure to prove Respondent’s use of the disputed domain name, the Panel finds that Complainant has not shown that Respondent makes no bona fide offering of goods of services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also 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).
The Panel finds Policy ¶ 4(a)(ii) has not been met.
Complainant argues that Respondent’s registration and use of the <batteriesplusfranchise.org> domain names indicates bad faith because Respondent uses Complainant’s logo and mark in the disputed domain name and on the resolving website in order to attract people and attempt to pass itself off as Complainant. Complainant alleges that Respondent holds himself out as a representative of Complainant, which leads Internet users to believe that Respondent is somehow affiliated with Complainant. Complainant contends that Respondent operates the website in this way for the purpose of profiting from Complainant’s mark, which indicates that Respondent registered and uses the <batteriesplusfranchise.org> in bad faith under Policy ¶ 4(b)(iv). Complainant has not provided any evidence regarding the disputed domain name’s use to support these allegations, however. The Panel accordingly finds that there is no evidence of Respondent’s bad faith use under Policy ¶ 4(a)(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)).
Complainant also contends that Respondent had actual knowledge of Complainant and its rights in the BATTERIESPLUS mark at the time Respondent registered the disputed domain name. Complainant first argues that Respondent only registered the <batteriesplusfranchise.org> domain name after being contacted by Complainant regarding inaccurate information about Complainant that was posted on Respondent’s other domain name, <bestfranchiseforums.com>. Complainant alleges that its contact with Respondent, Respondent’s previous mention of Complainant on the <bestfranchiseforums.com> domain name, and the alleged use of Complainant’s mark and logo at the <batteriesplusfranchise.org> domain name all indicate that Respondent had actual knowledge of Complainant’s rights in the BATTERIESPLUS mark. The Panel concurs that Respondent was aware of Complainant and its mark at the time of the domain name registration and thus registered the disputed domain name in bad faith pursuant to 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 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”).
The Panel finds Policy ¶ 4(a)(iii) has not been met as Complainant has proven only bad faith registration but not bad faith use.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <batteriesplusfranchise.org> domain name REMAIN with Respondent.
James A. Carmody, Esq., Panelist
Dated: October 25, 2011
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