PMB Technologies, LLC v. Paul Winter / Winter Works
Claim Number: FA1211001471044
Complainant is PMB Technologies, LLC (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is Paul Winter / Winter Works (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <protocel.us>, registered with TUCOWS.COM CO.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2012; the National Arbitration Forum received a hard copy of the Complaint on November 21, 2012.
On November 14, 2012, TUCOWS.COM CO. confirmed by e-mail to the National Arbitration Forum that the <protocel.us> domain name is registered with TUCOWS.COM CO. and that Respondent is the current registrant of the name. TUCOWS.COM CO. has verified that Respondent is bound by the TUCOWS.COM CO. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the usTLD (the “Policy”).
On November 28, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 18, 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”).
On December 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "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 Policy, 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.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Respondent’s <protocel.us> domain name is confusingly similar to Complainant’s PROTOCEL mark.
2. Respondent does not have any rights or legitimate interests in the <protocel.us> domain name.
3. Respondent registered or used the <protocel.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant owns the PROTOCEL mark and has an incontestable registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,620,647 registered September 17, 2002).
2. Complainant also owns trademark registrations for the PROTOCEL mark with government agencies in the European Community, Israel, and Hong Kong.
3. Complainant also owns common law trademark rights dating back to 2000, when it began selling its goods using the PROTOCEL mark.
4. Complainant uses the <protocel.com> domain name in its business.
5. Respondent registered the <protocel.us> domain name on February 5, 2008, and has since controlled the domain.
6. The <protocel.us> domain name is identical to Complainant’s PROTOCEL mark.
7. Respondent has no legitimate rights or interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Respondent does not have any affiliation with Complainant’s business.
8. Respondent adopted Complainant’s well-known trademark with the intent to use it in Respondent’s own business.
9. Respondent had actual knowledge of Complainant’s rights in the PROTOCEL mark, because Respondent prominently displays the mark at the resolving website, and the website displays images of Complainant’s goods and posts information regarding Complainant and its PROTOCEL goods at the resolving website.
10. Respondent attempts to attract Internet users to its website by confusing consumers and making a commercial gain, which shows Respondent’s bad faith registration and use.
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 or 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.”).
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.
Complainant alleges that it owns rights in the PROTOCEL mark through its USPTO registration (Reg. No. 2,620,647 registered September 17, 2002). The panel in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), stated that because the complainant’s mark is registered with the USPTO, the complainant met the requirements of the Policy. The Panel likewise determines that Complainant’s USPTO registration of its PROTOCEL mark demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <protocel.us> domain name is identical to its PROTOCEL mark, making the claim that the domain name fully incorporates the mark in the domain, and adds only the country-code top-level domain (“ccTLD”) “.us.” The panel in Orange Glo Int’l, Inc. v. Blume, FA118313 (Nat. Arb. Forum Oct. 4, 2002), stated that the respondent’s domain name was identical the complainant’s mark because the second-level domain mirrored the complainant’s mark in form and spelling, and included the addition of a top-level domain “.us.” The Panel finds that the addition of the ccTLD “.us” to a domain that consists entirely of Complainant’s mark renders the <protocel.us> domain name identical to Complainant’s PROTOCEL mark under Policy ¶ 4(a)(i).
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.”).
The Panel notes that there is no evidence present to support a determination that Respondent owns any trademarks that reflect the <protocel.us> domain name, and consequently finds that Respondent does not have rights and legitimate interests in the domain name 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 was identical to the <persiankitty.com> domain name).
Complainant contends that Respondent is not commonly known by the <protocel.us> domain name, because Respondent has no affiliation with Complainant and did not receive consent to use the PROTOCEL mark in any manner. Further, Complainant contends that Respondent identifies itself as “Paul Winter” and operates under the company name “Winter Works,” according to the WHOIS information associated with the disputed domain name. The Panel determines that Respondent cannot claim rights or legitimate interests in the <protocel.us> domain name as a result of the WHOIS information showing that Respondent is not commonly known by the domain pursuant to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel notes that Complainant does not address Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii) or 4(c)(iv), but the Panel determines that Complainant’s allegations under Policy ¶ 4(a)(iii) indicate that Respondent uses the <protocel.us> domain name to display hyperlinks and unauthorized information regarding Complainant’s products, and provides links at the resolving website that lead to websites selling goods purporting to originate from Complainant at the resolving website. The Panel finds that using the domain name to sell goods under Complainant’s mark without authorization demonstrates failure to use the <protocel.us> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant makes the allegation that Respondent uses the <protocel.us> domain name to attract Internet consumers to its website by using a confusingly similar domain name to Complainant’s mark in order to benefit financially by generating pay-per-click fees. Complainant contends that Respondent took the PROTOCEL domain name to create a false affiliation with Complainant, and uses the resolving website to prominently display the PROTOCEL mark and offer hyperlinks to a website operated by Respondent itself, which sells hypnosis CDs, tapping DVDs, and alternative cancer treatment test kits and other goods that deceive consumers into believing that the products are “legitimately provided under the PROTOCEL mark.” The Panel determines that Respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) by attempting to make a profit through the sale products that appear to be produced by Complainant and causing consumer confusion. See 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 had both actual and constructive notice of the PROTOCEL mark prior to registering the <protocel.us> domain name. Complainant’s allegation of constructive knowledge is due to Complainant USPTO trademark registration of the PROTOCEL mark several years before Respondent’s domain name registration. The Panel concludes that Respondent’s constructive knowledge of Complainant’s mark does not satisfy Policy ¶ 4(a)(iii) in making a determination of bad faith registration. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the [UDRP]."). Complainant contends that Respondent’s prominent and frequent use of the PROTOCEL mark on its resolving websites demonstrates that Respondent had actual knowledge of the mark at the time Respondent registered the <protocel.us> domain name. The Panel therefore finds that Respondent’s bad faith registration under Policy ¶ 4(a)(iii) is apparent by its use of the mark throughout the website and the relation between the advertised goods and Complainant’s business, which demonstrates actual knowledge of the PROTOCEL mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <protocel.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 10, 2013
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