national arbitration forum

 

DECISION

 

Watch Empire, LLC d/b/a Timeandgems v. Muhammad Al-Quaid

Claim Number: FA1208001456432

 

PARTIES

Complainant is Watch Empire, LLC d/b/a Timeandgems (“Complainant”), represented by Salar Atrizadeh, California, USA.  Respondent is Muhammad Al-Quaid (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <timeandgems.us>, registered with GODADDY.COM, INC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically August 2, 2012; the National Arbitration Forum received payment August 2, 2012.  The National Arbitration Forum received a hard copy of the Complaint August 2, 2012.

 

On August 3, 2012, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <timeandgems.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name.  GODADDY.COM, INC. verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On August 9, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) setting a deadline of August 29, 2012, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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

I.     Complainant alleges in this proceeding:

 

a.    Complainant owns an application with the United States Patent and Trademark Office (“USPTO”) for the TIME & GEMS mark (App. No. 85,625,636 filed May 15, 2012).

b.    Complainant owns the <timeandgems.com> domain name that Complainant uses for its business. 

c.    Respondent’s <timeandgems.us> domain name is identical or confusingly similar to Complainant’s TIME & GEMS mark.

d.    Respondent is not commonly known by the disputed domain name.

e.    Respondent’s <timeandgems.us> domain name resolves to a website that contains critical comments regarding Complainant’s products.

f.      Due to the similarity between the disputed domain name and Complainant’s mark, Internet users may be confused as to whom the comments are attributed to.

g.    Respondent registered and uses the <timeandgems.us> domain name for the purpose of selling the disputed domain name.  See Complainant’s Exhibit C.

h.    Respondent registered and uses the <timeandgems.us> domain name as part of a pattern of bad faith registration and use.

i.      The website resolving from the <timeandgems.us> domain name disrupts Complainant’s business.

j.      Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s affiliation with the domain name.

 

II.    Respondent did not submit a Response.

a.    The Panel notes that Respondent registered the <timeandgems.us> domain name September 19, 2011, a date in time before Complainant’s registration was filed on May 15, 2012.

 

FINDINGS

Complainant has common law rights in the mark contained within the disputed domain name.

 

The disputed domain name is identical to the Complainant’s mark.

 

The Respondent has shown no rights to use the mark in a domain name.

 

The Respondent registered and used the domain name in bad faith.

 

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."

 

Paragraph 4(a) of the Policy requires Complainant to 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 to or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

Given 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 will draw such inferences as the Panel 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.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical to and/or Confusingly Similar

 

While Complainant alleges that it owns an application for the TIME & GEMS mark with the USPTO, the Panel notes that Complainant does not provide evidence of any trademark registrations with any national trademark authority.  The Panel finds that Policy ¶ 4(a)(i) does not require a national trademark registration in order to establish Complainant’s rights in the mark as long as Complainant can establish common law rights.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under UDRP ¶ 4(a)(i)).

 

As referenced above, Complainant claims it owns an application with the USPTO for the TIME & GEMS mark (App. No. 85,625,636 filed May 15, 2012).  Complainant also alleges that it owns the <timeandgems.com> domain name that Complainant uses for its business.  The Panel notes that Complainant does not make any other allegations or produce any further evidence of rights in the TIME & GEMS mark.  Nevertheless, the Panel finds that Respondent’s use and registration provides some evidence that Complainant owned and used the mark at the time Respondent registered the disputed domain name. Complainant’s evidence sufficiently demonstrates Complainant’s common law rights in the TIME & GEMS mark for the purpose of Policy ¶ 4(a)(i).  See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).

 

Complainant argues that Respondent’s <timeandgems.us> domain name is identical to or confusingly similar to Complainant’s TIME & GEMS mark.  The Panel notes that the disputed domain name exchanges the ampersand for the term “and,” removes the spaces found in Complainant’s mark, and adds the country-code top-level domain (“ccTLD”) “.us.” These alterations fail to properly distinguish the disputed domain name because ampersands and spaces are not permissible and top-level domains are required. The Panel holds that Respondent’s <timeandgems.us> domain name is identical to Complainant’s TIME & GEMS mark under Policy ¶ 4(a)(i).  See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i).

 

The Panel finds that the disputed domain name is identical to a mark in which Complainant has shown common law rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

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 such 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.”).

 

The Panel finds no evidence in the record to support any suggestion that Respondent owns any service marks or trademarks that reflect the <timeandgems.us> domain name.  Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant contends that Respondent is not commonly known by the disputed domain name.  The Panel notes that the WHOIS information lists “Muhammad Al-Quaid” as the registrant of the disputed domain name and that Respondent did not present any evidence that it was commonly known by the domain name.  Based on this evidence, the Panel finds that Respondent is not commonly known by the <timeandgems.us> domain name under Policy ¶ 4(c)(iii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant alleges that Respondent’s <timeandgems.us> domain name resolves to a website that contains critical comments regarding Complainant’s products.  Complainant argues that, due to the similarity between the disputed domain name and Complainant’s mark, Internet users may be confused as to who the comments are attributed to.  The Panel finds that Respondent’s use of the <timeandgems.us> domain name to provide criticism of Complainant’s business is not a Policy ¶ 4(c)(ii) bona fide offering of goods or services and it is not a Policy ¶ 4(c)(iv) legitimate noncommercial or fair us of the <timeandgems.us> domain name.  See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (finding that the respondent was using a domain name that falsely conveyed an association with complainant and lead Internet users to his complaint website.  This was evident by the fact that complainant’s EASTMAN trademark figured prominently at the top of the website. The Panel found respondent was “illegitimately identifying himself as the complainant and attracting visitors to his site by trading off the complainant’s goodwill in its EASTMAN CHEMICALS trademark.”).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

 

Complainant accuses Respondent of registering and using the <timeandgems.us> domain name for the purpose of selling the disputed domain name.  The Panel notes that Complainant provides e-mail correspondence between Complainant and Respondent in which Complainant offered Respondent $11,700. to settle all disputes and for the purchase of the disputed domain name.  See Complainant’s Exhibit C.  The Panel notes that Respondent counter-offered with a demand for $30,000., that the Panel finds Complainant turned down.  Id.  The Panel finds that Respondent’s counter-offer for the disputed domain name likely exceeds Respondent’s out-of-pocket costs.  Thus, the Panel finds that Respondent both registered and uses the <timeandgems.us> domain name in bad faith pursuant to 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to UDRP ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).

  

Complainant further alleges that Respondent engaged in bad faith under the various sections of Policy ¶ 4(a)(iii).  The Panel is not persuaded to find bad faith under these sections and notes as follows.  Complainant alleges that Respondent registered and uses the <timeandgems.us> domain name as part of a pattern of bad faith registrations and use.  However, Complainant did not provide the Panel with any evidence of Respondent’s pattern of bad faith registrations.  The Panel notes that Complainant admits it owns the <timeandgems.com> domain name.  Therefore, the Panel finds that Complainant did not show that Respondent registered or used the <timeandgems.us> domain name in order to prevent Complainant’s registration of a domain name to incorporate its mark or as part of a pattern of bad faith registrations.  The Panel declines to find bad faith registration and use under Policy ¶ 4(b)(ii).

 

Complainant also asserts that the website resolving from the <timeandgems.us> domain name disrupts Complainant’s business.  The Panel notes that disruption under Policy ¶ 4(b)(iii) is usually reserved for websites that offer competing content.  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”).  In this case, Complainant alleges that Respondent provides criticism of Complainant on the website resolving from the <timeandgems.us> domain name and does not allege that Respondent competes with Complainant.  Consequently, the Panel does not find bad faith registration or use of the <timeandgems.us> domain name under Policy ¶ 4(b)(iii).

 

Complainant further contends that Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s affiliation with the domain name.  As noted previously, Complainant argues that Respondent creates confusion regarding Complainant’s association with the <timeandgems.us> domain name by using Complainant’s mark on the resolving website, registering the confusingly similar domain name, and referencing Complainant throughout the website.  The Panel notes that Complainant does not make any allegations relating to Respondent’s commercial gain. The Panel does not find evidence to support commercial gain and therefore the Panel finds that Complainant did not show bad faith registration and use under a Policy ¶ 4(b)(iv) analysis. 

 

Finally, the Panel finds that some evidence suggests that Respondent registered and uses the <timeandgems.us> domain name for the purpose of hosting a criticism website, however, this is based on the potentiality for a finding by the Panel and not on any direct evidence offered by Respondent or established in the record. The Panel does not therefore make any finding on this issue. But See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website).

 

The Panel notes as well that it appears that Respondent could have produced an argument relating to a potential predating issue. The Panel notes that Complainant claims it applied for a trademark registration May 15, 2012 and that Complainant did not provide any other dates relating to its use of the mark.  The Panel notes as well that Respondent registered the disputed domain name September 19, 2011. Although Respondent’s registration of the disputed domain name predates Complainant’s date in which it claims right to a legal registration, the evidence is clear that Respondent knew about the Complainant and know about the Complainant’s rights in its mark given Respondent’s use of the domain name.  The Panel finds that it is inconceivable that Respondent did not know of Complainant and its rights in its mark if Respondent has used the site as a place in which to offer negative comments about Complainant.  Bad faith is not limited to the circumstances set out in Policy ¶ 4(a)(iii).  The Panel is permitted to look to the totality of the circumstances. Having found bad faith in Respondent’s offer to sell the disputed domain name for an amount presumed to be greater than Respondent’s reasonable costs of registration or development, the Panel declines to find an absence of bad faith where it is obvious on its face that the domain name was registered specifically with Complainant’s mark in mind.

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

Taking into consideration the totality of the circumstances, the Panel finds that the evidence is sufficient to find that Respondent registered and used the disputed domain name in bad faith.

 

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 <timeandgems.us> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: September 18, 2012. 

 

 

 

 

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