Evan Nierman c/o Red Banyan Group, LLC v. Caledon Virtual, LLC
Claim Number: FA1305001501478
Complainant is Evan Nierman c/o Red Banyan Group, LLC (“Complainant”), represented by Cathy Jackson Lerman, Florida, USA. Respondent is Caledon Virtual, LLC (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redbanyan.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2013; the National Arbitration Forum received payment on May 23, 2013.
On May 27, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <redbanyan.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 May 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@redbanyan.com. Also on May 31, 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 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Forum received and email dated June 17, 2013, from J. Michael Roach, with an email address of <caledonvirtual.com>, stating “While we do not accept any responsibility for any wrongdoing or admit any fault, we are not interested in defending our right(s) to the domain name referenced in the complaint.”
Complainant, Evan Nierman c/o Red Banyan Group, LLC, is the owner of a registration for the RED BANYAN GROUP mark with the United States Patent and Trademark Office (“USPTO”) (see Reg. No. 4,178,739 registered July 24, 2012). Complainant began using the mark in commerce on July 12, 2010 and filed for the trademark with the USPTO on November 22, 2011. Complainant uses the mark in connection with advertising and promotion services.
Respondent, Caledon Virtual, LLC, registered the <redbanyan.com> domain name on February 21, 2012. The disputed domain name is inactive.
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 owns a registration for the RED BANYAN GROUP mark with the USPTO (see Reg. No. 4,178,739 registered July 24, 2012). Complainant’s registration indicates that Complainant began using the mark in commerce on July 12, 2010 and filed for the trademark with the USPTO on November 22, 2011. Respondent registered the disputed domain name on February 21, 2012, which is prior to Complainant’s trademark registration date. However, a complainant’s rights in a trademark may date back to the filing date of the trademark application. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that the Complainant has rights in the RED BANYAN GROUP mark pursuant to Policy ¶ 4(a)(i) effective November 22, 2011.
Complainant next alleges that the disputed domain name is confusingly similar and nearly identical to Complainant’s RED BANYAN GROUP mark. The <redbanyan.com> domain name uses much of Complainant’s mark while leaving off the term “GROUP.” The disputed domain name adds the generic top-level domain (“gTLD”) “.com,” while the space between “RED” and “BANYAN” has been deleted in the disputed domain name. The addition of a gTLD and the deletion of a space between words do not distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The deletion of the term “GROUP” from Complainant’s mark fails to distinguish the disputed domain name from Complainant’s mark. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Therefore, the Panel finds that Respondent’s <redbanyan.com> domain name is confusingly similar to Complainant’s RED BANYAN GROUP mark pursuant to 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).
Complainant contends that Respondent does not own any rights or have any legitimate interests in the <redbanyan.com> domain name. Complainant asserts that there is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “Caledon Virtual, LLC” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <redbanyan.com> domain name. Complainant asserts that Respondent is a competitor of Complainant’s, and the disputed domain name resolves to a one-page website that displays Respondent’s business name and gives the false impression that Respondent owns the RED BANYAN GROUP trademark. Further, Complainant states that the resolving website does not appear to offer and goods or services of any kind. In Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007), the panel found the respondent lacked rights or legitimate interests in a confusingly similar domain name because it has not made demonstrable preparations for use since its registration of the domain name seven months prior to the complaint being filed. Here, Respondent has failed to make an active use of the disputed domain for any legitimate purpose since registering the <redbanyan.com> domain name sixteen months ago. Therefore, the Panel finds that Respondent has not used the <redbanyan.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).
Complainant alleges that the disputed domain name is inactive. Complainant asserts that the resolving website is a one-page site without links or any indication of an offering of goods or services. In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel found bad faith registration and use because the respondent failed to make an active use of the disputed domain name in the three months after registering the domain name. In this case, the Panel finds that Respondent’s failure to make an active use of the <redbanyan.com> domain name foe sixteen months constitutes bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <redbanyan.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 9, 2013
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