AdvantageCEUs, LLC v. Advantage CEU / Benoit, Danielle
Claim Number: FA1206001450957
Complainant is AdvantageCEUs, LLC (“Complainant”), represented by Darrell Wayne Smith , Oklahoma, USA. Respondent is Advantage CEU / Benoit, Danielle (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advantageceu.com>, registered with Network Solutions, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2012; the National Arbitration Forum received payment on June 27, 2012.
On June 27, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <advantageceu.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 July 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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@advantageceu.com. Also on July 2, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 1,2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. The Panel has issued 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
Complainant asserts trademark rights and alleges that the disputed domain name is identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides continuing education courses for healthcare professionals.
2. Complainant provides the aforementioned services by reference to the registered trademark ADVANTAGECEUS.COM (United States Federal Trademark Reg. No. 4,009,298 registered August 9, 2011).
3. The disputed domain name was registered on October 13, 2009.
4. The domain name resolves to a website that merely displays a message stating “Here are some of the course topics we expect to offer online” without actually offering any goods or services.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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
(1) 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.”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant provides evidence of its United States Patent and Trademark Office trademark registration for ADVANTAGECEUS.COM. Panel is satisfied that it has trademark rights. Panel is also satisfied that the disputed domain name is confusingly similar to Complainant’s trademark since they are virtually identical and differ only in pluralisation and the addition of the gTLD (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
Panel finds that Complainant has satisfied the first element of the Policy.
Complainant’s Trademark Reg. No. 4,009,298 was filed January 10, 2011 and registered August 9, 2011. The disputed domain name was registered on October 13, 2009. Panel notes here that whilst paragraph 4(a)(i) of the Policy is disinterested in the question of whose rights were first established so long as Complainant can establish its trademark rights, the fact that Respondent registered the domain name prior to the establishment of those rights may be very pertinent to paragraphs 4(a)(ii) and (iii) of the Policy.
Although Respondent makes no contentions with regards to any aspect of the Policy, Complainant nonetheless carries the burden to establish the three elements of the Policy on the balance of probabilities and, in particular regard to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, after which 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant states that Respondent has posted a message on the website corresponding with the domain name about the educational courses Respondent intends to offer but that none has been available thus far. Panel does not find legitimate noncommercial or fair use of the domain name, nor demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
The publicly available WHOIS information identifies Respondent as “Advantage CEU / Benoit, Danielle” which raises a question whether it might be said that Respondent has been known by the disputed domain name. In the absence of a Response, there is no evidence that Respondent is commonly known by the name, as is required.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
This dispute turns ultimately on determination of the question of whether or not Respondent registered the domain name in bad faith on October 13, 2009, a significant period of time before Complainant filed for its Federal registration (see, for example, Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
United States Federal Trademark Reg. No. 4,009,298 claims a first use date of August 17, 2009. Notably, the registration claims a date of first use in commerce of February 22, 2010.
Panel finds that the relevant enquiry is whether Respondent targeted Complainant’s trademark. Given that there was no use in commerce of Complainant’s trademark on or before October 13, 2009, no compelling inference can be drawn that Respondent had the trademark in mind when it registered the disputed domain name. Panel does not find that it is more likely than not that Respondent registered the domain name in bad faith.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. Complainant alleges that Respondent’s conduct falls under paragraph 4(b)(i) which states:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
Panel finds no evidence of that claim. Accordingly, Panel finds that Complainant has failed to establish the third element of the Policy.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <advantageceu.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: August 9, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page