Claim Number: FA1006001332468
PARTIES
Complainant is North Country Business Products, Inc. (“Complainant”), represented
by Dean Crotty, of North Country Business Products, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ncbp.com>,
registered with GoDaddy.com, Inc.
PANEL
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.
Jonas Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 29, 2010.
On June 29, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <ncbp.com>
domain name is registered with GoDaddy.com, Inc. and that the 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 July 2, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of July 22,
2010 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 topostmaster@ncbp.com by e-mail. Also on July 2, 2010, the Written Notice of
the Complaint, notifying Respondent of the email 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 July
14, 2010.
On July 22, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant has been in business since 1948. The company is the
registered holder of the
The Respondent is a former employee of the Complainant. The Respondent
is currently redirecting the disputed domain name to the Complainant’s
competitor, rdspos.com, Retail Data Systems. Customers searching for the
Complainant are thus misdirected.
The Respondent’s actions to register the Complainant’s service mark as a
domain name and to redirect customers and prospects to the Complainant’s
competitor are purposeful and malicious. The Respondent has previously tried to
sell the disputed domain name to the Complainant.
The Respondent has without authorization purchased the disputed domain
name. When he stopped working for the Complainant, he tried to sell the
disputed domain name for a substantially higher amount than he paid for it.
When the Complainant refused to agree, the disputed domain name was redirected
to the Complainant’s competitor.
B. Respondent
The Respondent registered the disputed domain name in 1996, while
working for the Complainant. The reason behind the purchase was to get an email
address for personal or business use, which was not provided by the Complainant
at the time. The Respondent chose the disputed domain name because it was short
and connected to him making it easy to tell people. Once the domain was
registered, the Respondent used it as an exclusive email address. The
Office/Branch Manager also received an email address in 1996 connected to the
disputed domain name.
The Respondent never planned to use the domain name in dispute. Today
it is no longer the Respondent’s primary email address, although some of his
family members use that email address to contact him.
The service mark of the Complainant was registered in 2006, 10 years
later. The disputed domain name could also be considered identical or
confusingly similar with another company’s trade- or service mark. The acronym
ncbp is probably registered somewhere else in the world too. Moreover, neither
the Complainant nor its representatives have been known by the domain name in
dispute.
The Respondent resigned from the Complainant in 2000. At that time the
Complainant did not have any company web presence. The current domain name of the Complainant
was registered two months after the resignation of the Respondent. When the
Respondent resigned the Complainant requested that the Respondent should give
the Complainant the disputed domain name. That was the first time the
Complainant expressed any interest in the domain name.
The Respondent has never offered to sell the domain name in dispute to
the Complainant although he has listed the domain as for sale on the Internet.
Several other companies sharing the acronym have expressed an interest in
purchasing the domain name in dispute.
It is the Respondent’s belief that the Complainant has engaged in
reverse domain name hijacking through instigating this case because the
Respondent did not give the disputed domain name to the Complainant ten years
ago. This is substantiated by the fact that the domain was registered many
years before the Complainant registered its service mark.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 and is being
used in bad faith.
The Complainant has submitted evidence
of the registration of its service mark NCPB through the United States Patent
and Trademark Office (USPTO). Previous Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive, see
e.g. Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) or, Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under
The Panel finds that the disputed domain name
is identical to the service mark registration of the Complainant. The first
element of the Policy is thus fulfilled.
The Panel wishes to remind the parties that
it is first for the Complainant to establish a prima facie case
that the Respondent lacks any rights or legitimate interests in the disputed
domain name for the burden of proof to shift to the Respondent, 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).
The Complainant asserts that the registration
of the disputed domain name was unauthorized. The Complainant further contends
that the Respondent is redirecting the domain name to a competitor’s website,
hindering existing and potential customers from finding the Complainant.
By pointing out these facts, the Complainant
has met its initial burden, see Hanna-Barbera Prods., Inc. v. Entm’t Commentaries above and Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat’l Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark) or Guerlain S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2000) (“[I]n
the absence of any license or permission from the Complainant to use any of its
Trademark or to apply for or use any Domain Name incorporating those Trademark,
it is clear that no actual or contemplated bona fide or legitimate use of the
Domain Name could be claimed by Respondent.”).
Moreover, by the Respondent’s own
submissions, the registration and use has been exclusively for setting up an
email account. Under the Policy, this cannot be defined as a right or
legitimate interest. No other evidence of right or legitimate interest in
connection with a bona fide offering has been presented.
This Panel therefore finds that the Respondent
is not commonly known by the disputed domain name or that there is any other
indication of rights or legitimate interest under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name);
see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark).
The Complainant carries the burden of proof that the domain name has
both been registered and is being used in bad faith. It is for the Complainant
to fulfill this burden of proof by coming forward with facts, showing that the
Respondent has acted in bad faith at these instances.
The Complainant has not shown an existing registered trademark right at
the time of registration of the domain name, or any earlier common law right in
the trademark NCBP. The Complainant contends in this respect only that North
Country Business Products has been in business since 1948. The trademark
registration of the Complainant was registered ten years after the registration
of the domain name. See Interep
Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO
May 26, 2000) (finding no bad faith where the respondent registered the domain
prior to the complainant’s use of the mark).
The Complainant alleges that the Respondent
has tried to sell the domain to the Complainant in the past. This has not been
supported by any further evidence. The Respondent has denied having tried to
sell the domain name to the Complainant.
The web address of www.ncbp.com is redirected to the Complainants
competitor. While the Panel finds that this fact may contribute in showing that
the domain name is being used in bad faith, it does not show that the
Respondent registered the disputed domain name in bad faith. Respondent
claims that it registered and began using the domain name in order to have a work e-mail
address. Respondent argues that Randy
Melle, a former co-worker, later also created an e-mail address based on the
disputed domain name. According to
Respondent, Respondent eventually had the disputed domain name resolve to a
competitor of Complainant because Randy Melle started working there. Respondent argues that it did not register or
use the disputed domain name in bad faith under Policy ¶ 4(a)(iii).See MatchMaker Int'l Dev.
Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003)
(Panelist David Sorkin, dissenting) (“If Respondent registered the domain name
for legitimate purposes, or if it reasonably believed at the time of
registration that those purposes were legitimate, then the registration was not
in bad faith.”).
The Complainant has provided little
information. Assertions of the Respondent’s actions for the purpose of showing
bad faith, are described in terms of “purposeful,
malicious, ill-willed and unprofessional”. These assertions are not facts on
which the Panel can base a decision. See Starwood Hotels
& Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb.
Forum Mar. 9, 2005) (finding that the complainant failed to establish that
respondent registered and used the disputed domain name in bad faith because
mere assertions of bad faith are insufficient for a complainant to establish
UDRP ¶ 4(a)(iii)).
Reverse
Domain Name Hijacking
The Respondent has requested for a ruling of reverse domain name hijacking.
It is for the Respondent to show knowledge on the part of the Complainant of the Respondent’s rights or legitimate interest in the domain name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge (see Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002).
This Panel finds the fact that the Complainant’s service mark was registered many years after the registration of the disputed domain name as well as the fact that the Complainant has been aware of the Respondent’s registration for well over 10 years without acting upon it, as evidence of the bad faith of the Complainant. Under the circumstances presented in this case, it is quite clear that the Complainant knew or should have known that it was unable to prove that that the Respondent registered the domain name <ncbp.com> domain name in bad faith. The Panel therefore finds there is sufficient evidence to find that reverse domain name hijacking has occurred, see Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Jonas Gulliksson Panelist
Dated: August 4, 2010
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