Speedotrans S.A. (BVI) v. Dave Behar
Claim Number: FA0303000150404
PARTIES
Complainant
is Speedotrans S.A. (BVI), Wickhams
Cay, Tortola, BRITISH VIRGIN ISLANDS (“Complainant”) represented by John L. Wollman, of Mundell Odlum & Haws, LLP.
Respondent is Dave Behar
ionDigital, San Pedro, CA, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <idig.us>,
registered with Register.Com.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 17, 2003; the Forum received a hard copy of the
Complaint on March 17, 2003.
On
March 17, 2003, Register.Com confirmed by e-mail to the Forum that the domain
name <idig.us> is registered
with Register.Com and that Respondent is the current registrant of the
name. Register.Com has verified that
Respondent is bound by the Register.Com registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On
March 24, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 14,
2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
A
timely Response was received and determined to be complete on April 14, 2003.
On April 18, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed John J. Upchurch
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name <idig.us> be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The domain name in dispute, <idig.us>, is identical or
confusingly similar to a mark in which Complainant has rights.
2.
Respondent has no rights or legitimate interests in the mark.
3.
Respondent registered the disputed domain name in bad faith.
B.
Respondent
1.
The mark is not identical or confusingly similar under the circumstances
presented.
2.
Respondent has rights in and to the disputed mark.
3.
The disputed domain name was not registered in bad faith.
FINDINGS
The panel finds for the Complainant, and
determines that the domain name should be transferred.
DISCUSSION
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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant,
Speedotrans S.A. (BVI), holds numerous U.S. Patent and Trademark Office
(“USPTO”) registrations for the IDIG mark. More specifically, Complainant holds
USPTO Reg. Nos. 2,077,253 and 2,687,493 for the IDIG mark registered on July 8,
1997 and February 11, 2003, respectively. Complainant alleges that its IDIG
mark has been in use since August 18, 1984. Additionally, Complainant charges
that its 2,077,253 registration has been used continuously for five years after
its registration and has achieved incontestable status under 15 U.S.C. § 1065,
which is entitled “Incontestability of right to use
mark under certain conditions.” See The Men’s Wearhouse, Inc. v.
Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning”); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate “exclusive rights,” but only that
Complainant has a bona fide basis for making the Complaint in the first place).
Respondent’s
<idig.us> domain name is identical to its IDIG mark because, for
the purposes of determining identicality under the Policy, the addition of a
top-level domain is irrelevant. See Tropar Mfg. Co. v. TSB, FA 127701
(Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the
country-code “.us” fails to add any distinguishing characteristic to the domain
name, the <tropar.us> domain name is identical to Complainant’s TROPAR
mark); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition
of the country code top level domain (ccTLD) designation <.tv> does not
serve to distinguish [the disputed domain] names from Complainant’s marks since
‘.tv’ is a common Internet address identifier that is not specifically
associated with Respondent”).
Even though Respondent registered the <idig.us>
domain name on April 24, 2002, it has yet to articulate a credible use for
the domain name. Respondent’s passive holding of the domain name suggests
Respondent lacks rights in <idig.us> pursuant to Policy ¶ 4(c)(ii)
and (iv). See Vestel Elektronik Sanayi
ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that
“merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see
also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding where a Complainant has asserted that Respondent has no rights or
legitimate interests in respect of the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, Respondent had not used the domain names in
connection with any type of bona fide offering of goods and services); see
also Boeing Co. v. Bressi,
D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests
where Respondent has advanced no basis on which the Panel could conclude that
it has a right or legitimate interest in the domain names, and no use of the
domain names has been established).
Complainant
presented unrebutted proof that Respondent “had already assigned away all of
his rights, interest, and goodwill in the ‘idig’ mark for $35,000.” The Panel
finds that these circumstances indicate that Respondent had knowledge of
Complainant’s rights in the mark prior to registering the subject domain name.
Therefore, the Panel finds Respondent registered the domain name in bad faith
under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Complainant
argues that Respondent registered the <idig.us> domain name in
order to prevent Complainant from reflecting its IDIG mark in a corresponding
domain name. Complainant argues that Respondent’s actions constitute bad faith
pursuant to Policy ¶ 4(b)(ii). Respondent’s registration of <idig.us> and
<idig.com> satisfies the threshold requirements of the Policy. See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the Policy ¶
4(b)(ii)); see also Armstrong
Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
(finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple
domain names that infringe upon others’ famous and registered trademarks); see
also YAHOO! Inc. v. Syrynx, Inc.,
D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy
¶ 4(b)(ii) in Respondent's registration of two domain names incorporating
Complainant's YAHOO! mark).
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <idig.us>
domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch , Panelist
Dated: May 12, 2003
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