Lewis E. Patrick v. Virtual Assistant / Abbey Danielle
Claim Number: FA1301001483014
Complainant is Lewis E. Patrick (“Complainant”), Idaho, USA. Respondent is Virtual Assistant / Abbey Danielle (“Respondent”), British Columbia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandpointstorage.com>, registered with Fastdomain, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2013; the National Arbitration Forum received payment on February 1, 2013.
On February 1, 2013, Fastdomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <sandpointstorage.com> domain name is registered with Fastdomain, Inc. and that Respondent is the current registrant of the names. Fastdomain, Inc. has verified that Respondent is bound by the Fastdomain, Inc. 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 February 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2013 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@sandpointstorage.com. Also on February 6, 2013, 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 March 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. 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 makes the following assertions:
Respondent’s <sandpointstorage.com> domain name, the domain name at issue, is confusingly similar to Complainant’s SANDPOINT STORAGE mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) in the SANDPOINT STORAGE mark (Reg. No. 4,249,736 filed April 3, 2012 and registered Nov. 27, 2012) and began using the SANDPOINT STORAGE name on September 26, 2007. Respondent registered the <sandpointstorage.com> domain name on February 26, 2009. Respondent is actually Dawn Dempsey, a competitor of Complainant’s who does not use the SANDPOINT STORAGE mark for her business and who registered the disputed domain name after Complainant began using the name. It appears that Dawn Dempsey registered the disputed domain name for the sole purpose of keeping Complainant from using its name as its domain and registered the disputed domain name after Complainant’s registration and use of its trademark.
Respondent is squatting on the domain name with the intention of keeping Complainant from using its mark as its domain name and is a direct competitor of Complainant and is further using the disputed domain name to confuse online traffic in hopes of directing business to Respondent.
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.
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.”).
Complainant has rights in the SANDPOINT STORAGE mark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (Reg. No. 4,249,736, filed April 3, 2012 and registered Nov. 27, 2012). A complainant’s registration of a mark is sufficient to confer rights in the mark under Policy ¶ 4(a)(i), dating back to the filing date of the trademark registration on April 3, 2012. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). UDRP precedent has established that a complainant does not need to own a trademark registration in the country of a respondent in order to establish rights in its mark under Policy ¶ 4(a)(i). Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Further, past panels have found trademark registration to be unnecessary to establish rights in a mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Although Complainant does not assert common law rights, it appears that Complainant began using the SANDPOINT STORAGE mark as a business name on September 26, 2007. In addition, Complainant’s trademark registration claims a first use in commerce date of September 26, 2007. In the absence of a Response, Complainant’s allegations on this issue are assumed to be true. It appears that Complainant’s use of the mark was sufficiently exclusive and continuous so as to establish secondary meaning in the mark, and, accordingly, the Panel concludes that Complainant has proven common law rights in the SANDPOINT STORAGE mark according to Policy ¶ 4(a)(i) dating back to September 26, 2007.
Respondent’s <sandpointstorage.com> domain name is identical to Complainant’s SANDPOINT STORAGE mark for the purposes of Policy ¶ 4(a)(i). The Panel notes that the disputed domain name replicates Complainant’s mark in its entirety, with only the deletion of a space and the addition of the generic top-level domain “.com.” Because UDRP precedent has found spaces and gTLDs to be irrelevant to a Policy ¶ 4(a)(i) analysis, the <sandpointstorage.com> domain name is identical to Complainant’s SANDPOINT STORAGE mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (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”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent appears to be, actually, Dawn Dempsey, a local rival who owns a storage business under a different company name. The current WHOIS information for the disputed domain name shows the registrant to be “Virtual Assistant / Abbey Danielle.” The WHOIS evidence from December 26, 2012, lists the registrant as “D Dempsey” and “Dustin Dempsey.” Complainant contends that this is Dawn Dempsey’s son, and that Ms. Dempsey has been moving the disputed domain name around to different registrants and locations. Past panels have found WHOIS information, in the absence of other evidence, to provide strong support that a Respondent is not commonly known by a disputed domain name for the purposes of Policy ¶ 4(c)(ii) if it bears no nominal association to the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore Respondent is not commonly known by the <sandpointstorage.com> domain name and has not established rights or legitimate interests under Policy ¶ 4(c)(ii).
Further, it appears that Respondent uses the disputed domain name to direct Internet traffic to her competing facility instead of Complainant’s. The Panel notes that using a disputed domain name for that purpose has not been found to be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The Panel finds that Respondent uses the disputed domain name to attract Internet users and then direct business to its own competing storage facility for its own profit and holds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
It clearly appears that Respondent registered the disputed domain name for the purpose of keeping the Complainant from using its business name as a domain name. Past panels have found Policy ¶ 4(b) to be non-exclusive. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Therefore, under the totality of the circumstances, the Panel finds that Respondent’s intentional effort to prevent Complainant from using its business name in a corresponding domain name reflects registration and use in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sandpointstorage.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 14, 2013
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