LKN Communications, Inc. (d/b/a ACN, Inc.) v. Stanley Pace
Claim Number: FA1203001435578
Complainant is LKN Communications, Inc. (d/b/a ACN, Inc.) (“Complainant”), represented by Jeremy Smuckler, North Carolina, USA. Respondent is ACN Pacific Pty Ltd (“Respondent”), represented by Jeremy Smuckler, North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acnpacific.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2012; the National Arbitration Forum received payment on March 21, 2012.
On March 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <acnpacific.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2012 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@acnpacific.com. Also on March 27, 2012, 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.
A timely Response was received and determined to be complete on March 28, 2012.
On April 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, LKN Communications, Inc. (d/b/a ACN, Inc.), owns the identified Respondent as a subsidiary of Complainant.
Complainant’s original Complaint identified the domain name registrant as “Stanley Pace” per the WHOIS report at that time.
Complainant believes that Mr. Pace subsequently changed the registrant information in the WHOIS database to reflect Complainant’s subsidiary’s contact information.
Mr. Pace remains in full control of the domain name despite what the WHOIS information says and therefore should be the correct Respondent in this matter.
Complainant owns numerous worldwide trademark registrations for the ACN mark with the following trademark authorities, among others:
i. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,052,737 registered May 12, 2000);
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA550469 registered September 10, 2001); and
iii. United States Patent and Trademark Office ("USPTO") (Reg. No. 3,180,228 registered December 5, 2006).
Mr. Pace purchased the domain name through auction on August 28, 2011 for $1,100.
Mr. Pace was contacted by Complainant and rejected Complainant’s offer of $1,500 for the domain name, citing “higher offers.”
Mr. Pace has parked the domain name with <sedo.com>, thereby allowing competing commercial links to be displayed on the website while also offering the domain name for sale.
Mr. Pace is a serial cyber squatter with many adverse UDRP proceedings against it for registering domain names in bad faith.
Mr. Pace registered and used the current domain name in bad faith.
B. Respondent
Respondent, ACN, consents to the transfer of the domain name at issue. In the instant proceeding, the identified Respondent based on the current WHOIS information is Complainant’s own subsidiary. Complainant’s counsel, (who, in this case, is also counsel for the entity listed in the Whois), consents to the transfer of the domain name.
The correct Respondent in this case is Stanley Pace, who changed the Whois information after this complaint was filed, in a practice known as cyberflight. The Panel directs the Forum to update the case caption accordingly. Respondent’s domain name is identical or confusingly similar in violation of Policy ¶ 4(a)(i), Respondent has no rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), Registration and Use was in Bad Faith violating Policy ¶ 4(a)(iii), and Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
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."
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.
Complainant has presented the Panel with several trademark registrations for the ACN mark that it owns with national trademark authorities worldwide, including OHIM (Reg. No. 1,052,737 registered May 12, 2000); CIPO (Reg. No. TMA550469 registered September 10, 2001); and the USPTO (Reg. No. 3,180,228 registered December 5, 2006). The Panel finds that Complainant has submitted sufficient evidence indicating its rights in the ACN 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <acnpacific.com> domain name is confusingly similar to its ACN mark where the domain name merely adds the geographic indicator “pacific,” which also happens to be the name of Complainant’s subsidiary, as well as adding the generic top-level domain (“gTLD”) “.com.” The Panel determines that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) despite these minor changes. See 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that the underlying domain name registrant, Stanley Pace, is the true Respondent, and that Mr. Pace is not commonly known by the disputed domain name. Complainant points the Panel to its Annex A-2, which is a WHOIS report dated January 30, 2012 that shows “Stanley Pace” as the registrant with an address in Flower Mound, Texas. The Panel notes that the current WHOIS information that identifies “ACN Pacific Pty Ltd” as the registrant retains Flower Mound, Texas as its location although Complainant’s subsidiary is not located in Texas. The Panel finds that Stanley Pace is the Respondent in this matter and also finds that no evidence has been presented indicating that Stanley Pace is commonly known by the <acnpacific.com> domain name under Policy ¶ 4(c)(ii). 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 Policy ¶ 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).
Complainant argues, and submits evidence to show that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent has merely used the domain name as a parked website that directs Internet users to competitors of Complainant in the telecommunications industry. See Complainant’s Annex I (presenting a screen shot of the resolving website). The Panel finds that Respondent’s use of the domain name is not 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Further, Complainant asserts that Respondent’s true motivation for registering and holding the domain name is to sell its rights to the registration for valuable consideration. Complainant notes that the resolving website for the domain name states that it is for sale, and that after being offered $1,500 for the domain name by Complainant, Respondent rejected this offer because there were higher offers available. The Panel finds that such conduct is indicative of Respondent’s lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
Complainant argues that Respondent’s sole reason for registering the domain name was to entice Complainant, or others, to purchase the domain name registration for valuable consideration. Complainant notes that it offered Respondent $1,500 for the domain name but was rejected by Respondent as it had “higher offers.” Further, Complainant notes that the resolving website also identifies that the domain name may be for sale. The Panel finds that Respondent’s attempts to sell the domain name are indicative of bad faith under Policy ¶ 4(b)(i). See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant argues that Stanley Pace has been the Respondent in several previous UDRP cases in which the respective panels ordered the transfer of the domain names to the trademark holders. See Baylor Univ. v. Pace, FA 1370357 (Nat. Arb. Forum Mar. 8, 2011); see also Assurant, Inc. v. Pace, FA 1396626 (Nat. Arb. Forum Aug. 9, 2011); see also 24 Hour Fitness USA, Inc. v. Pace, FA 1315664 (Nat. Arb. Forum May 10, 2010). Complainant argues that those previous cases are telling of Respondent’s pattern of bad faith registration and use of domain names, including the <acnpacific.com> domain name. The Panel agrees and finds accordingly under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant further argues that Respondent has merely parked the domain name and allowed links to Complainant’s competitors to be displayed on the resolving website strictly for profit. Complainant asserts that Respondent intends for Internet users who are searching for Complainant’s products to happen upon the disputed domain name and become confused about Complainant’s involvement with the website. Complainant argues that these users then click on the links contained on the website, which results in profit for Respondent. The Panel finds that such use of a disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acnpacific.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: April 11, 2012
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