Alacrita LLP v. Alex Blass
Claim Number: FA1309001517471
Complainant is Alacrita LLP (“Complainant”), represented by Anthony I. Walker of Alacrita LLC, Massachusetts, USA. Respondent is Alex Blass (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alacrita.com>, registered with WILD WEST DOMAINS, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 2, 2013; the National Arbitration Forum received payment September 2, 2013.
On September 3, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <alacrita.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name. WILD WEST DOMAINS, LLC verified that Respondent is bound by the WILD WEST DOMAINS, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@alacrita.com. Also on September 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel ( The "Panel") finds that the National Arbitration Forum 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 has not been known by the name ALACRITA at any time.
ii. Respondent does not offer goods or services connected with the name ALACRITA and does not have ties with Complainant in any capacity.
iii. Respondent has not made use of and has passively held the domain since registration in 2001.
i. Respondent holds the domain <alacrita.com> primarily for the purpose of selling it to Complainant or a competitor of Complainant’s.
ii. Respondent has not made use of the domain since registration in 2001.
Complainant established that it has legal and common law rights in the mark contained in its entirety within the identical disputed domain name.
Respondent has shown registration of the domain name but no rights to or legitimate interests in the domain name otherwise. Respondent passively held the name from 2001 onward.
The disputed domain name is identical to Complainant’s legal and common law protected mark.
Respondent registered and passively held the disputed 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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant, Alacrita LLP, claims to provide consulting services. Complainant claims rights in the ALACRITA mark covering goods and services such as business and market research, business analysis, business planning, business management and business strategy. To support its claim of rights, Complainant provides evidence of its registration of the ALACRITA mark with the USPTO (Reg. No. 4,256,669, filed March 1, 2012; registered December 11, 2012) as well as its registration with OHIM (Reg. No. 10,266,427 registered February 20, 2012). Previous panels have found rights in marks registered with the USTPO and OHIM. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Argenta Spaarbank NV v. Argenta, Mailadmin Ltd., D2009-0249 (WIPO June 8, 2009) (finding that Complainant had provided evidence of a trademark registration with the OHIM and had thus established rights in the mark). The Panel finds that Complainant’s registrations of the ALACRITA mark establish Complainant’s rights in the mark under Policy ¶ 4(a)(i).
The Panel notes that Complainant’s rights in the ALACRITA mark via its trademark registrations appear to be predated by Respondent’s November 4, 2001, registration of the <alacrita.com> domain name. The Panel also notes, however, that past panels have found that a complainant can establish rights in a mark independent of any trademark registration. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel observes that Complainant provided little evidence of its use of the ALACRITA mark, let alone evidence that Complainant’s use of the mark predates Respondent’s registration of the disputed domain name. The Panel nevertheless finds that Complainant established common law rights in the ALACRITA mark under Policy ¶ 4(a)(i), and that those rights predate Respondent’s rights in the <alacrita.com> domain name based on the totality of evidence in the record. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant asserts that the <alacrita.com> domain name is identical to Complainant’s ALACRITA trademark. The Panel notes that the disputed domain name merely appends the generic top-level domain (“gTLD”) “.com” to the ALACRITA mark. Previous panels have agreed that gTLDs do not affect the Policy ¶ 4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel finds that Respondent’s <alacrita.com> domain name is identical to Complainant’s ALACRITA mark within the meaning of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 finds that Complainant has done so here but that Respondent has made no effort to come forward with the required proof.
Complainant alleges that Respondent has not been known by the name ALACRITA at any time. Complainant notes that Respondent does not offer goods or services connected with the name ALACRITA and is not connected with Complainant in any way. The Panel notes as well that Respondent is identified as “Alex Blass” in the WHOIS information. The Panel further observes that Respondent failed to produce a Response to the instant proceeding. In light of the evidence in the record, the Panel finds that Respondent is not commonly known by the <alacrita.com> domain name for purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent does not offer goods or services at the <alacrita.com> domain name, as Respondent has not made use of the domain since registration in 2001. The panel in Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), concluded that a respondent’s non-use of a domain name that is identical to a 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 pursuant to Policy ¶ 4(c)(iii). This Panel finds that Respondent has not made demonstrable preparations to use the <alacrita.com> domain name; and, therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims that Respondent registered and is using the <alacrita.com> domain name in bad faith. First, Complainant alleges that Respondent holds the domain <alacrita.com> primarily for the purpose of selling it to Complainant or to a competitor of Complainant’s. Complainant says that it approached Respondent in November 2010, asking if Respondent would be prepared to sell the disputed domain name. Complainant claims that after further communication, Respondent eventually offered to sell the disputed domain to Complainant for £20,000 on November 9, 2010. Complainant believes that Respondent’s demand of £20,000 is abusive, and suggests that Respondent holds the domain primarily for the purpose of selling it to Complainant or a competitor of Complainant. The Panel notes that Respondent’s offer to sell the domain name came over nine years after Respondent’s registration of the <alacrita.com> domain name November 4, 2001. The Panel further notes that Complainant initiated a discussion about acquiring the domain from Respondent. However, the Panel notes that it is well established that whichever party initiates the discussion about purchase, a Respondent’s offer to sell the domain and an amount in excess of filing and reasonable development fees to a Complainant is evidence that supports findings of bad faith registration and use under a Policy ¶ 4(b)(i) analysis. See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).
Complainant also argues that Respondent’s bad faith is further illustrated by Respondent’s failure to use the disputed domain name since registration in 2001. The Panel notes that Complainant failed to provide a screen shot or any other accompanying evidence of Respondent’s use of the <alacrita.com> domain name. The record suggests that Respondent has not made an active use of the website connected to the disputed domain name, and in such circumstance the Panel finds that a Respondent’s non-use, or passive holding, also suggests registration and use in bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere [failure to make an active use] of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”).
Moreover, Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds the evidence sufficient to find that Respondent registered and passively held the identical domain name in bad faith; Complainant satisfied the elements of ICANN 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 <alacrita.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 22, 2013.
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