Keith J. Miklas d/b/a The OVerus Organization v. Domain Sales - www.COMDots.com c/o Dynadot Privacy
Claim Number: FA1306001503003
Complainant is Keith J. Miklas d/b/a The OVerus Organization (“Complainant”), represented by Keith J. Miklas, New Jersey, USA. Respondent is Domain Sales - www.COMDots.com c/o Dynadot Privacy (“Respondent”), represented by Stewart Buckingham, Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <overus.com>, registered with DYNADOT, 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.
Bruce E. O'Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2013; the National Arbitration Forum received payment on June 3, 2013.
On June 7, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <overus.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On June 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@overus.com. Also on June 13, 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 June 18, 2013.
On June 20, 2013 an Additional Submission by Complainant was received by the National Arbitration Forum and determined to be timely.
On June 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist.
On June 24, 2013, an Additional Submission by Respondent was received by the National Arbitration Forum and determined to be timely.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Respondent is "www.COMDots.com, Domain Sales - selldoms@gmail.com", operating through the alias "Domain Sales - www.COMDots.com c/o Dynadot Privacy."
Complainant is the owner of the trademark OVERUS (the "Mark"), registered as a certification mark for coffee under U.S. Registration No. 3,579.308 on February 24, 2009. The Mark was first used on June 27, 2006.
The disputed domain name is confusingly similar to the Mark.
Respondent is not using the disputed domain name in conjunction with a bona fide offering of goods and services, but rather is offering the disputed domain name for sale. Respondent sometimes directs Internet users visiting the website using the disputed domain name to <usdots.dom> where that domain name is for sale. Complainant contacted Respondent regarding purchase of the disputed domain name. Complainant acknowledged that Respondent's asking price of $5,000 for the disputed domain name was too much, and told Respondent he would contact Respondent later when he had the money. Complainant later sent a cease and desist letter to Respondent demanding transfer of the domain name, to which Respondent did not reply.
Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant or to a competitor of Complainant.
Respondent's registration of the disputed domain name effectively prevents Complainant from reflecting the Mark in a corresponding domain name.
B. Respondent
Respondent accepts Complainant's contention that the disputed domain name is confusingly similar to the Mark.
"Over Us" is a combination of two generic words which has a multitude of meanings, other than its meaning as the Mark for coffee. The combination is important to Respondent who is a domain name reseller. Respondent's registration and use of the disputed domain name is not an infringement of Complainant's rights in the Mark for coffee.
Respondent, living in the Philippines, had no knowledge of the Mark until he received a cease and desist letter from Complainant, and has never used the disputed domain name for coffee. There is nothing even remotely similar between Complainant's website at <overuse.org> and Respondent's website at <overus.com>. Respondent's use of the disputed domain name is entirely consistent and a bona fide use as a domain name reseller.
Respondent has neither registered nor used the disputed domain name in bad faith.
Complainant, through its cease and desist letter and this proceeding, is engaged in reverse domain name hijacking of the disputed domain name.
C. Additional Submissions
1. Complainant
Complainant submits evidence as to its proper business registration in the US, as well as its compliance with State, Federal, and tax law.
Complainant refers to that evidence and its U.S. Trademark Registration as establishing that Complainant is not engaged in reverse domain name hijacking.
2. Respondent
Complainant has made unsubstantiated and false cybersquatting and trademark infringement claims, and is guilty of reverse domain name hijacking.
Complainant has established rights in the Mark through its U.S. Trademark Registration.
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 parties agree that the disputed domain name and the Mark are confusingly similar.
Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent can have a Policy ¶ 4(c)(i) bona fide offering in the sale of the <overus.com> domain name as a domain name reseller. Respondent stresses that the domain name <overus.com> embodies two generic terms: “over” and “us.” Respondent contends that there is nothing about these terms that is unique or distinct to the OVERUS mark or the “OVerus” business run by Complainant. The Panel agrees that a domain name such as <overus.com> contains generic terms that Respondent may have Policy ¶ 4(a)(ii) rights and legitimate interests in, despite Complainant’s use of the Mark in providing coffee. See Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating “Complainant’s rights in the QWEST mark are limited to its application to the telecommunications industry,” where a variety of other businesses used the mark in unrelated fields).
Complainant has failed to carry its burden of proof under paragraph 4(a)(ii) of the Policy.
In view of the Panel's finding that Complainant has failed to satisfy the second element of the Policy, the Panel will not address the parties' contention as to the third element. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
The Panel finds that Complainant has not engaged in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Complainant not having established all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <overus.com> domain name REMAIN WITH Respondent.
Bruce E. O'Connor, Panelist
Dated: July 5, 2013
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