Netword
Publishing Inc. v. Melucha Cardozo
Claim
Number: FA0302000146244
Complainant is
Netword Publishing Inc., San Clemente, CA, USA (“Complainant”) represented
by Patrick W. Fletcher of Fletcher Law Offices. Respondent is
Melucha Cardozo, Allama Iqbal Town, Pakistan (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <verbaladvantage.com> registered with Go
Daddy Software, Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 20, 2003; the Forum received a hard copy of the
Complaint on February 21, 2003.
On
February 21, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <verbaladvantage.com> is registered with Go
Daddy Software, Inc. and that Respondent is the current registrant of the name.
Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
February 25, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 17, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@verbaladvantage.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 25, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. The domain name registered by Respondent,
<verbaladvantage.com>, is identical to Complainant’s VERBAL
ADVANTAGE mark.
2. Respondent has no rights to or legitimate
interests in the <verbaladvantage.com> domain name.
3. Respondent registered and used the <verbaladvantage.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the VERBAL ADVANTAGE mark (Reg. No. 2,446,166 registered
April 24, 2001) related to instructional manuals featuring information about
increased communication skills. Complainant is the registrant of
<verbaladvantage.net>, <verbaladvantage.biz> and
<verbaladvantage.org>.
On October 1,
2002, Complainant signed a Web Development Retainer Agreement whereby Web Solutions,
LLC (“Web Solutions”) would design and host a website for Complainant. Boris
Acosta, an employee of Web Solutions, signed the retainer agreement on October
3, 2002.
The registration
of the <verbaladvantage.com> domain name was transferred from Complainant
to Respondent on October 18, 2002. Complainant alleges that Boris Acosta in
turn transferred the registration of the disputed domain name and that he and
Melucha Cardoza are one and the same person. The disputed domain name continues
to resolve to Complainant’s website.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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
established in this proceeding that it has rights in the VERBAL ADVANTAGE mark
through registration with the USPTO and by use in commerce since 1984.
Respondent’s <verbaladvantage.com>
domain name is identical to Complainant’s VERBAL ADVANTAGE mark because the
disputed domain name incorporates Complainant’s entire mark; it merely omits
the space between the words and adds the generic top-level domain (gTLD) “.com”
to the end of the mark. Neither the omission of spaces nor the addition of a
gTLD sufficiently distinguishes the disputed domain name from Complainant’s
mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat.
Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to
HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); Fed’n
of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark GAY
GAMES).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Respondent did
not submit a Response in this proceeding. Thus, the Panel is permitted to
accept all reasonable inferences and allegations in the Complaint as true. See
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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Moreover, by
failing to submit a Response, Respondent failed to invoke any circumstances
that could demonstrate that Respondent has rights or legitimate interests in
the <verbaladvantage.com> domain name. When Complainant asserts a prima
facie case against Respondent, the burden of proof shifts to Respondent to
show that it has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
a domain name it is incumbent upon Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name).
Despite
Respondent’s registration of the domain name, the <verbaladvantage.com>
domain name continues to resolve to Complainant’s website, indicating that
Respondent is not using the disputed domain name. Non-use of a domain name
indicates that a party has no rights or legitimate interests with respect to
the domain name pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy”).
Respondent has
not come forward with any proof and no evidence in the record suggests that
Respondent is commonly known by VERBAL ADVANTAGE or <verbaladvantage.com>.
Therefore, Respondent failed to establish that it is commonly known by the
domain name pursuant to Policy ¶ 4(c)(ii). See 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"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been established.
While the Policy
lists four circumstances demonstrating registration and use of a domain name in
bad faith, this list merely illustrates possible situations that demonstrate
bad faith. The Panel may look to the totality of the circumstances surrounding
the registration and use of a domain name in determining whether bad faith is
present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (determining that Policy paragraph 4(b) sets forth certain circumstances,
without limitation, that shall be evidence of registration and use of a domain
name in bad faith); see also Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”).
Respondent
changed the registration of the <verbaladvantage.com> domain name
to Respondent after a commercial dispute arose between Complainant and Respondent.
The Panel may infer that Respondent registered the disputed domain name to
obtain a better bargaining position with regard to the commercial dispute.
Respondent’s behavior indicates that it registered the domain name for the
purpose of obtaining valuable consideration from Complainant, which is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding that
because Respondent was hired by Complainant to help design and register
Complainant’s websites, Respondent had intimate knowledge of Complainant’s
business and use of its TEENFLO mark. Therefore, Respondent’s
registration of <teenflo.com> was in bad faith); see also Savino
Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2000) (finding "Respondent's registration of the
company name of his former employer as a domain name is an act of bad
faith").
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <verbaladvantage.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 3, 2003.
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