Shawn Michael Currier v. Emma Smith
Claim Number: FA1304001496524
Complainant is Shawn Michael Currier (“Complainant”), New Jersey, USA. Respondent is Emma Smith (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cellular-freedom.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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 April 25, 2013; the National Arbitration Forum received payment on April 25, 2013.
On April 26, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <cellular-freedom.com> domain name is registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 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@cellular-freedom.com. Also on April 30, 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 June 3, 2013, 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 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.
i. Respondent’s illegitimate use of the domain name would divert consumers from finding the establishment on the Internet.
i. Respondent has the single intent of selling the domain name back to Complainant for personal profit.
Respondent sent an email stating, “You have been given the wrong information – I have no interest in this domain, and never had. I have never heard of cellular freedom.”
1. Respondent’s <cellular-freedom.com> domain name is confusingly similar to Complainant’s CELLULAR FREEDON mark.
2. Respondent does not have any rights or legitimate interests in the <cellular-freedom.com> domain name.
3. Respondent registered or used the <cellular-freedom.com> domain name in 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.
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, Shawn Michael Currier, argues that it began the business Cellular Freedom, LLC in 2006. Complainant contends that as of December 4, 2012, Complainant’s business name is Cellular Freedom, Inc. Complainant argues that its business has had a robust online presence through the domain name <cellular-freedom.com>, by which it grew through the online presence. The Panel notes that although Complainant has not registered its CELLULAR FREEDOM mark with a trademark agency, the Panel finds that Policy ¶ 4(a)(i) does not require the registration of a trademark to demonstrate rights in a mark if Complainant can establish common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant contends that it purchased the <cellular-freedom.com> domain name until 2015. Complainant argues that its email address is info@cellular-freedom.com. The Panel notes that Complainant also filed its articles of incorporation with New Hampshire’s Secretary of State. See Complainant’s Annex. The Panel finds that Complainant’s registration of the domain name and filing of its articles of incorporation sufficiently establish secondary meaning in the CELLULAR FREEDOM mark, and holds that Complainant has common law rights in the CELLULAR FREEDOM mark under Policy ¶ 4(a)(i). See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).
Complainant asserts that Respondent’s domain name is identical to Complainant’s business logos, which are located on store signs, road signs, employee uniforms, and more. Complainant claims that the incorporated name of its business is “Cellular Freedom, Inc.,” which differs from the disputed domain name by only a hyphen. Although not explicitly alleged by Complainant, the Panel infers that Complainant means to contend that the <cellular-freedom.com> domain name is identical to the CELLULAR FREEDOM mark in which Complainant claims rights. The Panel notes that the domain name adds the generic top-level domain (“gTLD”) “.com” to Complainant’s CELLULAR FREEDOM mark. The Panel finds that the addition of a hyphen and a gTLD to the domain name does not negate identity. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel finds that Respondent’s <cellular-freedom.com> domain name is identical to Complainant’s CELLULAR FREEDOM 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 the WHOIS information identifies “Emma Smith” as the registrant of the disputed domain name. The Panel also notes that Respondent does not provide evidence that it is known by the domain name. Thus, the Panel holds 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 it once held the domain name, but that the domain was transferred without Complainant’s approval or knowledge to Respondent on February 19, 2013. Complainant argues that once the domain name was overtaken, Respondent proceeded to put up a ransom page demanding USD $500, wired to him via an Internet financial transmitter. See Complainant’s Annex. Complainant asserts that Respondent’s illegitimate use of the domain name would divert consumers from finding Complainant’s establishment on the Internet. Complainant alleges that Respondent clearly has no demonstrable preparations to use the domain name in a legitimate fashion, as Respondent’s only purpose for hijacking the disputed domain was to solicit money from Complainant for its return. The Panel therefore finds that Respondent is not using the domain name for a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Complainant argues that Respondent has the singular intent to sell the domain name back to Complainant for personal profit. Complainant contends that the last payments made by Complainant to the original registrar were USD $9.63 per year. Complainant asserts that the request of USD $500 represents approximately 51 years of payments for the domain name. See Complainant’s Annex. The Panel notes that Respondent contacted Complainant after stealing the domain name, stating “I manage your domain name. And I want you to pay me $500 to www.libertyreserve.com account (account number: U1740837) And then I will transfer your domain name management information.” See Complainant’s Annex. The Panel finds that Respondent registered or otherwise obtained the domain name for the purpose of selling it for an amount in excess of out-of-pocket costs, demonstrating bad faith use under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant asserts that Respondent’s <cellular-freedom.com> was stolen/hacked and stopped working on February 19th, 2013. The Panel notes that Respondent contacted Complainant after stealing the domain name, stating “I manage your domain name. And I want you to pay me $500 to www.libertyreserve.com account (account number: U1740837) And then I will transfer your domain name management information.” See Complainant’s Annex. The Panel finds that Complainant’s previous holding of a disputed domain name that Respondent now holds proves Respondent’s bad faith use under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”).
Complainant argues that Respondent has not made any demonstrable preparations to use the domain name in a legitimate fashion (such as a business, service, personal site, etc). Complainant contends that Respondent is not looking to make a fair use of the domain name, as it hosts no content that would imply Respondent’s intent to make legitimate use of the domain name. See Complainant’s Annex. The Panel finds that Respondent’s non-use of the domain name shows bad faith use and registration pursuant to Policy ¶4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cellular-freedom.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 14, 2013
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