Justin Alexander, Inc. v. Alexander Lending
Claim Number: FA1304001493361
Complainant is Justin Alexander, Inc. (“Complainant”), represented by Peter S. Sloane of Leason Ellis LLP, New York, USA. Respondent is Alexander Lending (“Respondent”), represented by David Chen of DWC Law Firm, P.S., Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <justinalexander.com>, registered with DOMAIN.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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2013; the National Arbitration Forum received payment on April 5, 2013.
On April 5, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <justinalexander.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.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 April 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@justinalexander.com. Also on April 8, 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.
A timely Response was received and determined to be complete on April 29, 2013.
Complainant filed its timely “Reply …” on May 3, 2013; Respondent filed its timely “Surreply” on May 8, 2011; both, together with attached exhibits, have been considered by the Panel.
On May 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that it has rights in the JUSTIN ALEXANDER mark dating back to 2001. Complainant is a high profile bridal designer known for couture wedding dresses that blend contemporary style with vintage inspiration under the JUSTIN ALEXANDER brand. The gowns are sold at stores across the United States as well as in Australia, Russia, Switzerland, the United Kingdom, and the United Arab Emirates. Complainant additionally promotes its products at trunk shows, runway shows, and through the website at <justinalexanderbridal.com>. Complainant has received a substantial amount of unsolicited press since the company’s inception. In addition to traditional bridal publications and websites such as Martha Stewart Weddings, Brides, and The Knot, Complainant’s dresses have also been discussed in national and regional newspapers including The New York Times, Miami Herald, Chicago Sun Times, Indianapolis Star, and Pittsburgh Post-Gazette. See Complainant’s Exhibit A. Complainant has also been the recipient of numerous coveted bridal industry awards. Further, over 40,000 people “like” Complainant’s Facebook page and over 2,000 people follow Complainant’s Twitter feed. See Complainant’s Exhibit D. Complainant has spent a substantial amount of time and resources commercializing its name and mark, which enjoys substantial goodwill among relevant consumers. The JUSTIN ALEXANDER mark has acquired substantial distinctiveness.
In the course of protecting the JUSTIN ALEXANDER mark, Complainant obtained a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the JUSTIN ALEXANDER mark (Reg. No. 4,018,784 filed Jan. 17, 2011; registered Aug. 30, 2011). See Complainant’s Exhibit C.
Complainant asserts that Respondent’s <justinalexander.com> domain name is identical to Complainant’s mark. Respondent incorporates the entire JUSTIN ALEXANDER mark and merely adds the generic top-level domain (“gTLD”) “.com.” However, it is well-settled that the presence of a gTLD is irrelevant to whether a domain name is identical to a mark.
Respondent has no rights or legitimate interests in the <justinalexander.com> domain name.
Complainant has not authorized Respondent to use the domain name and there is no evidence that Respondent, Alexander Lending, has been commonly known by the domain name “Justin Alexander.” The online records of the Better Business Bureau demonstrate that Respondent is out of business. See Complainant’s Exhibit F. Additionally, the WHOIS record history for the <justinalexander.com> domain name indicates that it was registered by an entity named “RV Travel Buddy” as late as 2009. See Complainant’s Exhibit G. Complainant argues that Respondent does not have rights where Complainant owns earlier trademark rights and cites past panels that said that even where a domain name was created prior to the complainant obtaining a trademark registration for the mark at issue, the panel found that the respondent did not have rights based on this because it had only acquired the domain name after the complainant obtained rights in the mark. See Complaint page 7 lines 15-24; see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007).
As of December 28, 2009, the <justinalexander.com> domain name was used as the home page for <kennewickrental.com>, a website dedicated to real estate and wholly unrelated to the wedding dress business of Complainant. Such unrelated use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The <justinalexander.com> domain name is presently inactive. Attempting to reach the <justinalexander.com> domain name leads Internet users to an error page stating, “Server not found.” See Complainant’s Exhibit I. Such non-use of a domain name is similarly not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s registration and use of the <justinalexander.com> domain name were done in bad faith. Respondent’s failure to make an active use of the domain name is evidence of bad faith. Internet users looking for Complainant might believe that Complainant is no longer in business since the domain name is inactive.
B. Respondent
Respondent admits that the <justinalexander.com> domain name incorporates Complainant’s mark.
Respondent is actually Gary Alexander, father of Justin Alexander, who originally registered the <justinalexander.com> domain name for his son, who was a minor at the time, about two years prior to Complainant’s alleged acquisition of trademark rights. Respondent has been in control of the domain name since its creation. Any other listed registrants were merely the actions of independent contractors maintaining the domain name for Respondent. While Alexander Lending, Inc. is no longer an active corporation, Respondent was the sole shareholder and registered the <justinalexander.com> domain name for his son. The short period of time where the domain name’s registrant listing was changed to “RV Travel Buddy” was without the authority of Respondent.
The <justinalexander.com> domain name has never used the disputed domain name in bad faith. Respondent’s non-use of the <justinalexander.com> domain name is irrelevant because Respondent’s registration of the <justinalexander.com> domain name far predates Complainant’s acquisition of rights in the JUSTIN ALEXANDER mark.
C. Additional Submissions
Complainant’s Additional Submissions
Respondent’s admission that the JUSTIN ALEXANDER mark is included in the disputed domain name should prompt the Panel to find that Policy ¶ 4(a) (i) has been satisfied.
Despite Respondent’s claim that it had constant control over the disputed domain name, the Response makes clear that Respondent contracted control of the domain name out to third parties and did not know who owned the <justinalexander.com> domain name or how it was used for several years. Respondent in fact did not have control over the domain name.
Respondent is not commonly known by the <justinalexander.com> domain name because the WHOIS record lists “Alexander Lending,” a company that no longer exists, as the domain name registrant. Further, Respondent provides no authority for his attempt to claim a right, personally as Gary Alexander, to the disputed domain name. Respondent’s attempt to rely upon the concept of “beneficial ownership” is misplaced, as it has been held that the undisclosed beneficial owner cannot acquire any rights in a domain name.
Respondent’s nonuse of the <justinalexander.com> domain name has no credible basis. If, as Respondent argues, the disputed domain name is for his son, then the domain name rationally should be developed because Respondent’s son is graduating from Washington State University with a degree in entrepreneurship this year. Complainant states that it “defies credibility that someone studying entrepreneurship in college would not make use of a website associated with his name.”
Even if Respondent was, in fact, the initial registrant of the <justinalexander.com> domain name and did so in good faith, the subsequent transfers to third parties and corporations and the use of the domain name constitutes bad faith registration and use.
Respondent’s Additional Submissions
Complainant fails to note that the UDRP arbitration it cites all involve either a) a respondent that registered the domain name after the complainant's acquisition of trademark rights, and hence, non-use can be inferred as bad faith use (e.g., squatting and waiting for an offer to purchase), or b) use of the domain name by respondent in a manner that independently establishes bad faith use.
Complainant had full reason to know of the beneficial owner's, Gary Alexander's, registration of the dispute domain name in 1999, before Complainant adopted its trademark.
Complainant does not establish predating trademark rights or reference a to a single instance of an independent basis of bad faith use by Respondent or the beneficial owner.
Complainant’s argument, that somehow Gary Alexander's intention to transfer the domain name to his son one day is not credible, is speculative, conclusory and nonsensical. It aligns with common sense that a student would not invest money to build a website while he’s still in school. Furthermore, Complainant does not offer any supporting law, policy, or cases establishing that registration of a domain name for the name of one's child is not a legitimate interest.
Complainant attempts to place substantial weight of its case on the fact that the domain name was at one time pointed to <kennewickrental.com>. However, as set forth in detail in Respondent's Response, <kennewickrental.com> was at one time used to advertise for a company owned by Gary Alexander and his wife, which goes even further to establish the continuous beneficial ownership of Gary Alexander.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant holds a registered mark. It, and the disputed domain name, are identical. As to whether Complainant’s rights date back as early as 2001, Complainant has offered some evidence of common law rights for the period prior to registration. However, the mark was registered before that date.
Nevertheless, as a matter of fact, the registered mark and domain name are identical.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
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 contends that Respondent has no rights or legitimate interests in the <justinalexander.com> domain name. Complainant asserts that it has not authorized Respondent to use the domain name and there is no evidence that Respondent, Alexander Lending, has been commonly known by the domain name “Justin Alexander.” Complainant notes that the online records of the Better Business Bureau demonstrate that Respondent is out of business. See Complainant’s Exhibit F. Additionally, Complainant states that the WHOIS record history for the <justinalexander.com> domain name indicates that it was registered by an entity named “RV Travel Buddy” as late as 2009. See Complainant’s Exhibit G. Complainant argues that Respondent does not have rights where Complainant owns earlier trademark rights and cites past panels that said that even where a domain name was created prior to the complainant obtaining rights in the mark at issue, the panel found that the respondent did not have rights based on this because it had only acquired the domain name after the complainant obtained rights in the mark. See Complaint page 7 lines 15-24; see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007). In its Additional Submission, Complainant alleges that Respondent is not commonly known by the <justinalexander.com> domain name because the WHOIS record lists “Alexander Lending,” a company that no longer exists, as the domain name registrant. Further, Complainant argues that Respondent provides no authority for his attempt to claim a right, personally as Gary Alexander, to the disputed domain name. According to Complainant, Respondent’s attempt to rely upon the concept of “beneficial ownership” is misplaced, as an undisclosed beneficial owner cannot acquire any rights in a domain name. Panels have found that both an unsupportive WHOIS record with a lack of authorization to use a mark in a domain name as well as a WHOIS record which may suggest that a respondent is known by a domain name but which is contradicted by all other evidence fails to confer rights or legitimate interests to the domain name in the respondent. 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); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Accordingly, this Respondent is not commonly known by the <justinalexander.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that, as of December 28, 2009, the <justinalexander.com> domain name was used as the home page for <kennewickrental.com>, a website dedicated to real estate and wholly unrelated to the wedding dress business of Complainant. Complainant argues that such unrelated use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. In Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), the panel held that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant. Respondent’s prior use of the <justinalexander.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that the <justinalexander.com> domain name is presently inactive. According to Complainant, attempting to reach the <justinalexander.com> domain name leads Internet users to an error page stating, “Server not found.” See Complainant’s Exhibit I. Complainant similarly argues that such non-use of a domain name is similarly not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel may note that past panels have refused to find rights or legitimate interests where a disputed domain name remained inactive. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Respondent’s current nonuse of the <justinalexander.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Given these allegations and the evidence attached to the Complaint, Complainant has clearly made a prima facie case.
Respondent does attempt to rebut. Respondent asserts that the name was registered for the benefit of his then young son, Justin Alexander. Justin is now the proud holder of a business degree in “Entrepreneurship” and might well use the domain name. However, the long and tortured history shows control or use by various entities, not the son of the Respondent, Justin Alexander. It also shows lack of use leading to inactivity.
Ordinarily, the Panel would find that a human being has a right to the use of his own name; that is not the case here. Justin Alexander has never used the name; even if he is the beneficial owner, the lack of use, use by another, and all of the other facts does not justify a finding of “rights in the name.”
Therefore, Respondent has failed to rebut the second element, “rights in the name.”
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant has established a prima facie claim that Respondent’s registration and use of the <justinalexander.com> domain name is a product of bad faith. Policy ¶ 4(b) sets out factors relating to bad faith, but these are merely a list of what is often considered when determining bad faith and not meant to be an exclusive list. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel may consider the totality of the circumstances in its bad faith analysis.
Complainant contends that Respondent’s failure to make an active use of the domain name is evidence of bad faith. Complainant asserts that Internet users looking for Complainant might believe that Complainant is no longer in business since the domain name is inactive. In its Additional Submission Complainant argues that Respondent’s nonuse of the <justinalexander.com> domain name has no credible basis. Complainant states that, if, as Respondent argues, the disputed domain name is for his son, then the domain name rationally should be developed because Respondent’s son is graduating from Washington State University with a degree in entrepreneurship this year. Complainant states that it “defies credibility that someone studying entrepreneurship in college would not make use of a website associated with his name.” In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel concluded that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy. Respondent’s current nonuse of the <justinalexander.com> domain name is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant argues in its Additional Submission that, despite Respondent’s claim that it had constant control over the disputed domain name, the Response makes clear that Respondent contracted control of the domain name out to third parties and did not know who owned the <justinalexander.com> domain name or how it was used for several years. Complainant contends that Respondent in fact did not have control over the domain name. Respondent was also not the original registrant. Complainant goes on to state that, even if Respondent was, in fact, the initial registrant of the <justinalexander.com> domain name and did so in good faith, the subsequent transfers to third parties and corporations and the use and lack of use of the domain name constitutes bad faith registration and use.
Respondent was not the original registrant of the domain name, did not retain control over the <justinalexander.com> domain name, and Respondent’s potential bad faith should be judged by or based upon on its most recent registration of the disputed domain name.
A presumption of good faith registration from before a complainant had rights may be undone by the renewal of the registration in bad faith. See Dockeast LLC v. Jurmark, FA 149147 (Nat. Arb. Forum Apr. 24, 2003) (holding that the respondent’s renewal of the domain name registration, which changed the ownership of the domain name registration from its employer to itself, was effected in bad faith). Therefore, the Respondent’s registration and use of the <justinalexander.com> domain name are illustrative of bad faith under Policy ¶ 4(a)(iii).
Given the tortured ownership history, use and then lack of use, followed by revival after the registration of a mark, where no use of the name has ever been shown by the human being Justin Alexander, and summing up the unrebutted allegations of the Complainant, the Panel finds ample evidence of bad faith.
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.
The domain name and the mark are identical. Complainant obtained a trademark registration with the USPTO for the JUSTIN ALEXANDER mark (Reg. No. 4,018,784 filed Jan. 17, 2011; registered Aug. 30, 2011). See Complainant’s Exhibit C. Panels have held that trademark registration establishes rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
The addition of the gTLD is irrelevant. See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES). Respondent also deletes the space between the terms of Complainant’s mark, but such alteration fails to create a distinction between the mark and the disputed domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). Additionally, in its Additional Submission, Complainant states that Respondent’s admission that the JUSTIN ALEXANDER mark is included in the disputed domain name also prompts the Panel to find that Policy ¶ 4(a)(i) has been satisfied.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifted to Respondent to show it 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 has never authorized Respondent to use the domain name and there is no evidence that Respondent, Alexander Lending, has been commonly known by the domain name “Justin Alexander.” Respondent, according to Plaintiff’s evidence, the online records of the Better Business Bureau, demonstrates that Respondent is out of business. See Complainant’s Exhibit F.
The rest of the tortured history of the domain name is set out above, all of which demonstrates that the Respondent has never used the name and that the son, Jason Alexander, does not own the name and is at most the beneficial owner. In such circumstances, finding rights in the name is impossible. See also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007).
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); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Accordingly, the Panel may find that Respondent is not commonly known by the <justinalexander.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that, as of December 28, 2009, the <justinalexander.com> domain name was used as the home page for <kennewickrental.com>, a website dedicated to real estate and wholly unrelated to the wedding dress business of Complainant. Complainant argues that such unrelated use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. In Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), the panel held that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant. Therefore, the Panel may find that Respondent’s prior use of the <justinalexander.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Also, failure to make active use of the name is an important fact in favor of Complaint. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel may find that Respondent’s current nonuse of the <justinalexander.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent made no contentions with regards to Policy ¶ 4(a)(ii).
Policy ¶ 4(b) sets out factors relating to bad faith; these are merely a list of what is often considered when determining bad faith and not meant to be an exclusive list. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). The Panel may certainly consider the totality of the circumstances in its bad faith analysis.
Failure to make use of the name is also critical in this analysis. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), where the panel concluded that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy. Therefore, the Panel may find that Respondent’s current nonuse of the <justinalexander.com> domain name is evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent contracted control of the domain name out to third parties and did not know who owned the <justinalexander.com> domain name or how it was used for several years. Respondent in fact did not have control over the domain name.
Although the initial registrant of the <justinalexander.com> domain name and did so in good faith, the subsequent transfers to third parties and corporations and the use of the domain name constitutes bad faith registration and use.
Respondent’s bad faith can be judged based on its most recent registration of the disputed domain name. The Panel may note that other panels have held that a presumption of good faith registration from before a complainant had rights may be undone by the renewal of the registration in bad faith. See Dockeast LLC v. Jurmark, FA 149147 (Nat. Arb. Forum Apr. 24, 2003) (holding that the respondent’s renewal of the domain name registration, which changed the ownership of the domain name registration from its employer to itself, was effected in bad faith). Therefore, the Panel may find that Respondent’s registration and use of the <justinalexander.com> domain name are illustrative of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <justinalexander.com> domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: May 31, 2013
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