TRS Quality, Inc. v. Roger W Sprague Jr
Claim Number: FA1204001440786
Complainant is TRS Quality, Inc. (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA. Respondent is Roger W Sprague Jr (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radioshackltd.net>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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 April 24, 2012; the National Arbitration Forum received payment on April 24, 2012.
On April 25, 2012, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <radioshackltd.net> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 April 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@radioshackltd.net. Also on April 26, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2012, 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 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
a) Complainant has rights in the RADIO SHACK mark, which it uses in connection with the sale of consumer electronic goods and services;
b) Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the RADIO SHACK mark (e.g., Reg. No. 706,962 registered November 8, 1960);
c) The <radioshackltd.net> domain name is confusingly similar to the RADIO SHACK mark;
d) Respondent is not commonly known by the <radioshackltd.net> domain name;
e) The <radioshackltd.net> domain name previously resolved to a website which sold products identical to those that Complainant sells;
f) The <radioshackltd.net> domain name currently resolves to an inactive website;
g) Respondent’s previous use of the disputed domain name was attempting to pass off as being affiliated with Complainant;
h) Respondent registered and uses the disputed domain name in a bad faith attempt to divert Internet users from Complainant’s website to its own website for commercial gain;
i) Respondent had constructive and/or actual knowledge of Complainant’s rights in the RADIO SHACK mark prior to its registration and use of the <radioshackltd.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark registrations with the USPTO for its RADIO SHACK mark. Respondent failed to submit a Response to the Complaint.
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.
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.”).
Complainant asserts that it has rights in the RADIO SHACK mark, which Complainant claims it uses in connection with the sale of consumer electronic goods and services. Complainant provides the Panel with evidence of its trademark registrations for the RADIO SHACK mark (e.g., Reg. No. 706,962 registered November 8, 1960) with the USPTO. the registration of a mark with a federal trademark authority is sufficient evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds under Policy ¶ 4(a)(i) that Complainant has rights in the RADIO SHACK mark.
Complainant also asserts that Respondent’s <radioshackltd.net> domain name is confusingly similar to the RADIO SHACK mark. Complainant argues that Respondent simply took Complainant’s mark and added the generic term “ltd,” deleted the spaces between words, and added the generic top-level domain (“gTLD”) “.net” to create the disputed domain name. The addition of a generic term fails to differentiate the disputed domain name from the RADIO SHACK mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). Similarly, the Panel finds that the elimination of spaces and the addition of a gTLD fail to negate a finding of confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore find that Respondent’s <radioshackltd.net> domain name is confusingly similar to the RADIO SHACK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the requirement of Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant asserts that it has not provided Respondent with permission to use the RADIO SHACK mark and that Respondent is no way affiliated with Complainant. Complainant offers the Panel the WHOIS record for the <radioshackltd.net> domain name, which lists “Roger W Sprague Jr” as the domain name registrant. The panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), held that the WHOIS record and the contentions made by the complainant are often illustrative of whether a respondent is commonly known by a disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the <radioshackltd.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s previous use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant claims that the <radioshackltd.net> domain name previously resolved to a website that sold identical products to those that Complainant sells. The operation of a competing business is not a protected use of a disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). Therefore, the Panel finds that Respondent’s previous use of the <radioshackltd.net> domain name was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent’s current nonuse of the disputed domain name similarly fails to convey rights or legitimate interests to Respondent. The <radioshackltd.net> domain name currently is being held inactively by Respondent, Complainant argues. The panels in Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000), and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), determined that the nonuse of a disputed domain name demonstrates a lack of rights and legitimate interests in the disputed domain name. As such, the Panel finds that Respondent’s inactive holding of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant further alleges that Respondent’s previous use of the disputed domain was meant to pass itself off as being affiliated with Complainant. Complainant asserts that “Welcome To RadioShack Ltd Online” appeared at the top of the <radioshackltd.net> domain name’s resolving website along with Complainant’s logo and registered trademark symbol. Additionally, Complainant asserts that identical products were being sold at the <radioshackltd.net> domain name previously. Therefore, the Panel finds that Respondent lacked rights and legitimate interests under Policy ¶ 4(a)(ii) because Respondent was attempting to pass off the <radioshackltd.net> domain name as being associated with Complainant. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).
The Panel finds that Complainant has satisfied the requirement of Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and was previously using the disputed domain name in order to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name. Complainant contends that the <radioshackltd.net> domain name previously resolved to a website that sold goods and services identical to those that Complainant sells. Complainant contends that Respondent previously used Complainant’s trademark and logo on the resolving website to falsely imply a connection between Complainant and Respondent. The Panel finds that Respondent’s registration and previous use of the disputed domain name were done in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent intended to divert, for commercial gain, Internet users to the disputed domain name by creating confusion as to the source of the <radioshackltd.net> domain name. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Complainant argues that Respondent’s registration and current nonuse of the <radioshackltd.net> domain name is also evidence of bad faith. The <radioshackltd.net> domain name presently resolves to an inactive website which Respondent is holding. The registration and nonuse of a disputed domain name is evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used 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). Therefore, the Panel finds that Respondent’s registration and current use of the <radioshackltd.net> domain name is a product of bad faith under Policy ¶ 4(a)(iii).
Complainant next contends that Respondent’s bad faith is illustrated by Respondent’s attempt previously to pass off the <radioshackltd.net> domain name as being affiliated with Complainant, which Complainant asserts it is not. Complainant contends that Respondent’s previous use of the disputed domain name included the sale of identical products, the display of Complainant’s logo, and the use of Complainant’s mark. Therefore, the Panel finds that Respondent registered and previously used the disputed domain name in bad faith under Policy ¶ 4(a)(iii) as Respondent intended to pass off the <radioshackltd.net> domain name as being associated with Complainant. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the RADIO SHACK mark prior to registration of the disputed domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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 Complainant has satisfied the requirement of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radioshackltd.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 25, 2012
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