Internet Initiative Partners LLC v. Darrel Bernard
Claim Number: FA0808001218907
Complainant is Internet Initiative Partners LLC (“Complainant”), represented by Clarke
D Walton, of Walton Law Firm P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bookofmatches.org>, registered with GoDaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 4, 2008.
On August 6, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bookofmatches.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 9, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bookofmatches.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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." 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 makes the following assertions:
1. Respondent’s <bookofmatches.org> domain name is confusingly similar to Complainant’s BOOKOFMATCHES.COM mark.
2. Respondent does not have any rights or legitimate interests in the <bookofmatches.org> domain name.
3. Respondent registered and used the <bookofmatches.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Internet Initiative Partners LLC, operates an online dating service under its BOOKOFMATCHES.COM mark. Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) on September 18, 2007 (Reg. No. 3,293,699).
Respondent registered the disputed domain name on July 10, 2008. Respondent’s disputed domain name does not currently resolve to an active website. Prior to Complainant sending Respondent a cease-and-desist letter, Respondent’s disputed domain name offered dating services that competed with Complainant’s business.
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."
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.”).
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.
Complainant has provided evidence it registered its
BOOKOFMATCHES.COM mark with the USPTO.
The Panel finds this sufficiently establishes Complainant’s rights in
its mark pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under
Respondent’s disputed domain name fully incorporates Complainant’s mark with the mere exchange of the generic top-level domain “.org” for the generic top-level domain “.com.” The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove otherwise. The Panel finds Complainant has presented an adequate prima facie case to support its allegations, and Respondent has failed to respond to these proceedings. Therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends Respondent is not commonly known by the disputed domain name. The WHOIS information lists Respondent as “Darrel Bernard,” and the record does not reflect that Complainant authorized Respondent to use its BOOKOFMATCHES.COM mark in any manner. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant contends Respondent’s disputed domain name previously resolved to a website that offered online dating services that competed with Complainant’s business. The Panel finds Respondent’s former use of the disputed domain name was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
After Complainant sent Respondent a cease-and-desist letter, Respondent has removed the former content from its disputed domain name. Currently, Respondent has failed to make an active use of the disputed domain name. The Panel finds Respondent’s failure to make an active use of the disputed domain name is evidence Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent failed to make an active use of the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name previously resolved to a
website that directly competed with Complainant’s online dating business. The Panel finds this use was evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also
Respondent presumably profited from its competing use of the confusingly similar disputed domain name. Respondent was attempting to profit by creating a likelihood of confusion among Internet users as to Complainant’s affiliation with the disputed domain name. The Panel finds Respondent’s previous use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
After receiving a cease-and-desist letter from Complainant,
Respondent removed the content from its disputed domain name. Thus, Respondent is currently not making an
active use of the disputed domain name.
The Panel finds Respondent’s failure to make an active use of the
disputed domain name is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).
See DCI
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bookofmatches.org> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 1, 2008
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