BidPal, Inc. v. InterMediaOne
Claim Number: FA1210001465833
Complainant is BidPal, Inc. (“Complainant”), represented by Nicholas R. Merker of Ice Miller LLP, Indiana, USA. Respondent is InterMediaOne (“Respondent”), Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bidpal.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.
Luiz Edgard Montaury Pimenta has been appointed as the Chair of the three-member Panel along with David Perkins and The Honourable Neil Anthony Brown QC.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2012; the National Arbitration Forum received payment on October 4, 2012.
On October 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bidpal.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 October 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@bidpal.com. Also on October 8, 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.
On November 12, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta has been appointed as the Chair of the three-member Panel along with David Perkins and The Honourable Neil Anthony Brown QC.
On December 5, 2012 , the Forum has issued an order determining that the Complainant clarified its relationship with “LACEK, MARK” who appears as registrant for the trademark registration with the United States Patent and Trademark Office ("USPTO") for the BIDPAL mark (Reg. No. 3,419,104 registered Apr. 29, 2008), in which the Complainant claimed rights.
On December 5, 2012, in response to such order, the Complainant has submitted a copy of the “Confirmatory Assignment” entered between Complainant and Mr. Mark Lacek, evidencing that Mr. Lacek assigned and transferred to Complainant his rights and interests on the mentioned trademark registration.
On December 12, 2012, Respondent submitted a Response. This Response was received after the deadline to file a response. Therefore, the Forum does not consider this Response to be in compliance with ICANN’s UDRP Rule 5(a) (below) and/or the Annex to the Supplemental Rules.
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
i. Respondent is not commonly known by the disputed domain name, and has not been given permission from Complainant to use the BIDPAL mark.
ii. Respondent’s disputed domain name simply resolves to a placeholder page with the Registrar and contains no original content.
B. Respondent
Respondent failed to submit a timely Response in this proceeding. However, on December 12, 2012, Respondent has submitted a Response, which the Panel decides to consider. Respondent has presented the following arguments:
1. Respondent has full rights and legitimate interests with respect to the Disputed Domain Name;
2. Respondent rejects the Complainant’s statements as to the intent and current purpose of the website;
3. Respondent does not trade – intentionally or unintentionally – on the fame of Complainant;
4. The Disputed Domain Name was registered years before the Complainant’s existence;
5. Respondent has invested significantly in the development of software that will allow it to take advantage of the Domain Name;
6. The Disputed Domain Name was registered in good faith and Respondent is unaware of any current monetary income from the domain’s parked page;
7. Respondent's conduct does NOT violate paragraph 4(b)(iv) of the ICANN Policy.
The Panel finds that the <bidpal.com> domain name was registered on January 5, 2000.
The Panel finds that Complainant claims rights over a trademark registration with the United States Patent and Trademark Office ("USPTO") for the BIDPAL mark (Reg. No. 3,419,104 registered Apr. 29, 2008), which is registered to “LACEK, MARK”. The Panel finds that Complainant has submitted a copy of the “Confirmatory Assignment” entered between Complainant and Mr. Mark Lacek, evidencing that Mr. Lacek assigned and transferred to Complainant his rights and interests on the mentioned trademark registration.
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 contends that it is the owner of the BIDPAL mark, which it uses in connection with its provision of auctioning services, including computer software for point-of-sale auctioning, hand-held auctioning devices, and auctioning services over telecommunications networks. The Panel notes that Complainant claims rights over a trademark registration with the USPTO for the BIDPAL mark (Reg. No. 3,419,104 registered Apr. 29, 2008). See Complainant’s Annex A. On December 5, 2012, in response to an order issued by the Forum, the Complainant has submitted a copy of the “Confirmatory Assignment” entered between Complainant and Mr. Mark Lacek, evidencing that Mr. Lacek assigned and transferred to Complainant his rights and interests on the mentioned trademark registration. Therefore, the Panel finds that Complainant has proved rights on the mark BIDPAL.
Complainant also argues that the <bidpal.com> domain name is confusingly similar to the BIDPAL mark under Policy ¶ 4(a)(i) as the domain name uses the entire BIDPAL mark. The Panel finds that the Disputed Domain Name is identical to Complainant’s mark under Policy ¶ 4(a)(i), where the only addition to the mark is the generic top-level domain (“gTLD”) “.com.” See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
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 Respondent is not commonly known by the disputed domain name and has not been given permission from Complainant to use the BIDPAL mark. The Panel notes that the WHOIS information identifies “InterMediaOne” as the registrant of the disputed domain name. Based upon the WHOIS information and Complainant’s arguments, the Panel finds that Respondent is not commonly known by the disputed 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).
Complainant contends that Respondent’s disputed domain name simply resolves to a placeholder page with the Registrar and contains no original content. The Panel notes that Complainant’s Annex B contains a screenshot of the resolving website which states, “Welcome to bidpal.com This Web page is parked FREE, courtesy of GoDaddy.com.” The Panel also notes that the screenshot shows that the disputed domain name to promote GoDaddy.com’s services in domain names and website hosting. Complainant contends that Respondent “simply intends to park the Domain Name and draw upon traffic generated through web users’ confusion with the BIDPAL mark…to drive up the value of the Domain Name.”
Respondent, on the other hand, alleges having invested significantly in the development of software that will allow it to take advantage of the Disputed Domain Name and that Respondent is unaware of any current monetary income from the domain’s parked page.
The Panel finds that the Respondent has proved using the Disputed Domain Name in connection with a bona fide offering of goods or services (displaying Go Daddy’s advertising unrelated to Complainant or its activities) since the Disputed Domain Name was registered in January 5, 2000. The Panel finds it can be considered a legitimate noncommercial or fair use of the domain name.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(ii).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Respondent has proved use of the Disputed Domain Name (displaying Go Daddy’s advertising unrelated to Complainant or its activities). Even if he had not been able prove the use of the Disputed Domain Name, the Panel finds that it is not considered a violation of the Policy just to register a domain name and not give it an active use. Prior panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. See Jupiters Ltd. v. Hall, D2000-0574 (WIPO Oct. 8, 2000), <jupiterscasino.com> inter alia, Transfer. (Finding that passive holding of a domain name which reproduces a well-known trademark can be deemed as both registration and use in bad faith). However, the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.
Respondent contends, with regards to Policy ¶ 4(a)(iii), that the Domain Name was registered in good faith and many years before the Complainant’s existence.
In fact, the Panel notes that Respondent’s disputed domain name was registered on January 5, 2000. The Panel also notes that Complainant does not claim that it possesses any rights in the BIDPAL mark until at least 2006 (which, as stated above, has not been proved), that is, six years after the disputed domain name was registered. The Complainant itself was only incorporated on August 29, 2011, according with the Indiana Secretary of State ( see https://secure.in.gov/sos/online_corps/view_details.aspx?guid=34AB7A8D-BC0B-471E-B445-03C797509FEC), that is, 11 years after the Disputed Domain Name was registered. Therefore, the Panel does not find that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) where Respondent’s disputed domain name was registered at least six years prior to Complainant’s alleged adoption and use of the mark in question. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
The Panel also finds that Complainant has failed to demonstrate that Respondent is using the Disputed Domain Name in bad faith, as it has not proved that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent has not, for example, offered the Disputed Domain Name for sale, and the current use does not seem to have any reference to Complainant or even Complainant’s activities. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bidpal.com> domain name REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta
David Perkins
The Honourable Neil Anthony Brown QC
Dated: December 14, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page