Michael Aiduss LLC v. UDRP Compliance / UDRP Pending Renewal
Claim Number: FA1403001549535
Complainant is Michael Aiduss LLC (“Complainant”), represented by Michael J. Zinna of Ward & Zinna, LLC, New Jersey, USA. Respondent is UDRP Compliance / UDRP Pending Renewal (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michaelaiduss.com>, registered with eNom, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2014; the National Arbitration Forum received payment on March 20, 2014.
On March 19, 2014 the National Arbitration Forum sought registrar verification from eNom Inc of the registrant’s contact information for the disputed domain name.
On March 20, 2014, eNom Inc. replied, stating inter alia that the Registrant of the domain name was Pingable Inc.
On March 20, 2014, the registration of the domain name expired.
On March 21, 2014 the National Arbitration Forum replied to eNom Inc., stating that a WHOIS search revealed that the expiration date of the registration was March 20, 2014.
On March 22, 2014 eNom Inc. replied that the registration of the domain name had expired, that it was then in the registry renewal grace period and that a domain name in such a case was temporarily renewed as it had been in the instant case to prevent automatic deletion.
On April 9, 2014, eNom Inc. notified the Complainant and Pingable that the registration of the domain name had been renewed at the request of Complainant and that it had been placed on registrar hold and would remain locked until the dispute has been concluded.
On April 10, 2014, Complainant amended its Complaint so as to delete Pingable as Respondent and substitute as Respondent, eNom’s designation, namely UDRP COMPLIANCE / UDRP PENDING RENEWAL.
On April 9, 2014, Minneapolis time, the National Arbitration Forum sought registrar verification from eNom Inc. of the registrant’s contact information for the disputed domain name.
On April 10, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that:
(I) the <michaelaiduss.com> domain name is registered with eNom, Inc.;
(II) that at March 19, 2014 the registrant of the domain name had been Pingable Inc., the registration had expired on March 20, 2014, the registration had been renewed by Complainant in the name of the Respondent and Respondent was the current registrant ;
(III) pursuant to ICANN’s registration agreement with Respondent, Pingable’s information had been removed from the WHOIS record and replaced with a notation that the domain was under dispute; and
(IV) the domain has been placed under lock and hold status.
eNom, Inc. has also verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2014 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@michaelaiduss.com. Also on April 10, 2014, 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 May 5, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" 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.
A. Complainant
Complainant made the following contentions.
i. Complainant, Michael Aiduss LLC, has been using the mark MICHAEL AIDUSS in connection with interior design and architectural services, specializing in high-end residential design.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AIDUSS mark (Reg. No. 4,449,320, filed June 25, 2013, registered December 10, 2013).
iii. Complainant has obtained common law rights in the MICHAEL AIDUSS mark. Complainant was the first to register and use the disputed domain name.
iv. The <michaelaiduss.com> domain name incorporates the MICHAEL AIDUSS mark in its entirety, with the deletion of some spacing.
i. On or about March 20, 2009, the disputed domain name was registered by and in the name of Michael Aiduss, the founder and owner of Complainant.
ii. In October 2009, Michael Aiduss founded Complainant as a company and commenced business under that name.
iii. After the Complainant was incorporated, it engaged Pingable Inc. as an independent contractor and thus as Complainant’s agent, to provide technical support services for Complainant’s website, web mail and computer and telephone devices. To enable Pingable Inc. to perform its services as agent of Complainant and only for that purpose, Complainant gave Pingable Inc. access to the disputed domain name. However, Complainant did not give Pingable Inc. any ownership interest in the domain name or any other right or permission to change the registration or the ownership of the domain name or to exclude Complainant from the effective control of the domain name. Pingable Inc.’s sole authority was to provide services to and for Complainant and to act solely in the interests of Complainant.
iv. Pingable Inc. at all times held its access to the domain name solely on trust and in a fiduciary capacity to act at all times in the interests of Complainant.
v. Despite this, in breach of Pingable Inc.’s obligations as the agent of Complainant and in breach of its trust and fiduciary obligation to act in the interests of Complainant, between March and June 2011 Pingable Inc. changed the registrant of the domain name to itself, in the name Pingable Hostmaster/ PIngable Inc. (“Pingable”), effectively transferred the domain name to itself and has retained registration of the domain name since that time.
vi. Around the beginning of the year 2012, Pingable ceased to provide its services for Complainant and has failed and refused to transfer the domain name back to Complainant. Pingable has also failed and refused to communicate with Complainant and has denied Complainant access to the domain name so that Complainant has been prevented from using the domain name in its business. Pingable has never and does not now use the domain name for any legitimate purpose but, in effect, it holds the domain name hostage.
vii. By reason of the matters aforesaid, Pingable did not acquire or hold at any time and does not now hold any right or legitimate interest in the disputed domain name either by virtue of any provision in Policy ¶ 4(c) or on any other basis.
viii. In view of the matters aforesaid, Complainant filed a Complaint under the Policy against Pingable on March 19, 2014. However, the registration of the domain name expired on March 20, 2014. Pingable did not renew the registration on or before March 20, 2014 or at all.
ix. By virtue of ICANN’s Expired Domain Deletion Policy paragraph 3.3.7.5.7, Complainant is entitled to renew the registration of the domain name pending the outcome of the present proceeding .This has been done, the domain name is now registered in the name of the Respondent as so described, and has been placed in Registrar HOLD and Registrar LOCK status and the WHOIS contact information for Pingable has been removed.
x. By reason of the foregoing, Pingable has not and has never had any right or legitimate interest in the disputed domain name and the Respondent has no right or legitimate interest in the <michaelaiduss.com> domain name.
xi. Pingable is not commonly known by the disputed domain name.
xii. Pingable’s <michaelaiduss.com> domain name does not point and never pointed to any operable website.
i. The <michaelaiduss.com> domain name was registered and is being used in bad faith.
ii. Pingable Inc. registered the disputed domain name in breach of its duty as agent of Complainant and in breach of its trust and fiduciary obligation to act at all times in the interests of Complainant.
iii. Pingable Inc.’s registration and use of the domain name effectively prevents Complainant from reflecting its MICHAEL AIDUSS trademark in a corresponding domain name.
iv. Pingable’s <michaelaiduss.com> domain name does not point to any operational website.
v. Pingable Inc. has used the domain name in bad faith as it hijacked the domain name, has since held it hostage and has failed and refused to transfer it to Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Michael Aiduss LLC, uses and has been using the mark MICHAEL AIDUSS in connection with interior design and architectural services, specializing in high-end residential design.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AIDUSS mark (Reg. No. 4,449,320, filed June 25, 2013, registered December 10, 2013).
3. Complainant has obtained common law rights in the MICHAEL AIDUSS mark. Complainant was the first to register and use the disputed domain name.
4. Pingable Inc. registered the <michaelaiduss.com> domain name on March 20, 2009.
5. Pingable’s registration of the disputed domain name expired on March 20, 2014.
6. The <michaelaiduss.com> domain name does not point and never pointed to any operable website.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it has been using the mark MICHAEL AIDUSS in connection with interior design and architectural services, specializing in high-end residential design. Complainant adduces evidence that it is the owner of trademark registrations with the USPTO for the AIDUSS mark (Reg. No. 4,449,320, filed June 25, 2013, registered December 10, 2013) and the Panel accepts this evidence. See Complainant’s Exhibit E. The Panel also finds that Complainant’s rights in the registered AIDUSS mark go back to the June 25, 2013 filing date of the USPTO registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
It will also be noted that the disputed domain name was registered prior to June 25, 2013, namely on March 20, 2009 and that Pingable transferred the domain name to itself in the period between March and June 2011. However, Complainant also alleges that it has obtained common law rights in the MICHAEL AIDUSS mark and that it acquired those common law rights prior to the time when Pingable acquired the domain name. Complainant contends that for almost five years, it has extensively and continuously advertised, promoted, marketed, offered, and sold its interior design and architectural services under the MICHAEL AIDUSS mark. Complainant claims that as a result of these efforts, Complainant has established substantial consumer recognition of the MICHAEL AIDUSS mark and goodwill. Complainant notes that until about March 2, 2011, Complainant was the registered owner of the <michaelaiduss.com> domain name and that Complainant used the domain name in its business. See Compl., at Attached Ex. D. In Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel held that “Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” Therefore, the Panel finds that Respondent’s use of the MICHAEL AIDUSS mark to advertise and market its interior design and architectural services and as the source of its goods and services demonstrates common law rights in the mark pursuant to Policy ¶ 4(a)(i). The Panel also finds that Complainant acquired common law rights in the MICHAEL AIDUSS mark well prior to the time between March and April 2011 when Pingable transferred the disputed domain name to itself.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MICHAEL AIDUSS mark. Complainant argues that Respondent’s <michaelaiduss.com> domain name incorporates the MICHAEL AIDUSS mark in its entirety, with the deletion of some spacing. The Panel notes that Respondent also adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s deletion of spaces and inclusion of a gTLD does nothing to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Consequently, the Panel concludes that Respondent’s <michaelaiduss.com> domain name is confusingly similar to Complainant’s MICHAEL AIDUSS mark under Policy ¶ 4(a)(i).
It is now well established that Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 made out a prima facie case that arises from the following considerations:
(a) Complainant alleges that Pingable is not commonly known by the <michaelaiduss.com> domain name. The Panel notes that the WHOIS information for the disputed domain name does not reveal any evidence showing that Pingable is or was commonly known by the disputed domain name. Thus, the Panel finds that, based on the WHOIS record and other information in the record, Pingable is not and never has been commonly known under the <michaelaiduss.com> domain name under 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).
(b) Complainant argues that the <michaelaiduss.com> domain name does not point and never pointed to any operable website. The Panel observes that the disputed domain name resolves to a homepage that states “Oops! Internet Explorer could not find www.michaelaiduss.com.” See Complainant’s Exhibit M. Complainant asserts that Pingable has never operated a legitimate website under the disputed domain name, but that it has merely been holding the domain name hostage from Complainant and the Panel finds that this is the only conclusion that may be reached on the facts as they are known. In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), “The Panel finds that the [failure to make an active use] of a domain name that is identical to 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 of the domain name pursuant to Policy ¶ 4(c)(iii).” Accordingly, the Panel holds that Pingable’s failure to make an active use of the <michaelaiduss.com> domain name demonstrates that it has not and is not now using the disputed domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
(c) Complainant submits that Pingable was hired by Complainant to provide technical and computer support. Complainant gave Pingable access to the disputed domain name for the purpose of performing the aforementioned services. Pingable changed the domain name to have its own information in the domain name’s registrant name. It has also subsequently not responded to any of Complainant’s correspondence or telephone messages. The Panel notes that there is correspondence in the record from October 2009, showing that Complainant was in discussions with the Pingable.See Compl., Attached Ex. I. Having regard to all the facts, the Panel finds that Pingable’s conduct undermines any Policy ¶ 4(a)(ii) rights and legitimate interests in the domain name and the Panel therefore finds that there is a prima facie case that Pingable has and had no rights or legitimate interests in the disputed domain name. See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark).
All of these matters go to make out the prima facie case against Pingable. As Pingable has not sought in any way to show it has any right or legitimate interest in the domain name and as it has not sought to renew the registration of the domain name or responded to Complainant’s communications, the Panel finds that Pingable had and has has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, as noted above, Complainant is entitled to rely on circumstances other than those set out in Policy ¶ 4(b). In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel determined that “[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” Therefore, the Panel may consider other bad faith factors in determining whether Respondent has acted in bad faith under Policy ¶ 4(a)(iii).In that regard, Complainant contends that the <michaelaiduss.com> domain name does not point to any operational website. The Panel notes that the disputed domain name resolves to a website stating “Oops! Internet Explorer could not find www.michaelaiduss.com.” See Complainant’s Exhibit M. Prior UDRP panels have found that a respondent’s failure to use the disputed domain name demonstrates bad faith use and registration under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Thus, the Panel determines that Pingable Inc. has registered and used the <michaelaiduss.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel also finds that Pingable registered the disputed domain name in breach of its duty as agent of Complainant and in breach of its trust and fiduciary obligation to act at all times in the interests of Complainant and that its actions in transferring registration of the domain name to itself, refusing Complainant access to it and refusing to transfer the domain name back to Complainant all constitute bad faith registration and use.
Moreover, Pingable Inc. has used the domain name in bad faith as it hijacked the domain name, has since held it hostage and has failed and refused to transfer it to Complainant.
Having regard to the totality of the evidence, the Panel finds that, in view of the registration of the disputed domain name using the MICHAEL AIDUSS mark, the nature of that registration and the lack of use of it for any legitimate purpose, the domain name was registered and used in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
CONCLUSION
As has been noted above, Pingable was the registrant of the disputed domain name, was initially the Respondent in the proceeding and would have remained Respondent, had it not been for the fact that the registration of the domain name expired during the dispute. Complainant was faced with that fact during the proceeding and also with the possibility that at some time during the proceeding Pingable might not have renewed the registration, would no longer have been the domain name holder and hence could no longer be a Respondent in the proceeding against whom an order for transfer could be made. Accordingly, Complainant, on the advice of eNom, Inc., the registrar, renewed the registration of the domain name. This was done pursuant to paragraph 3.7.5.7 of ICANN’s Registrar Accreditation Agreement, to which eNom Inc was a party and which applies with respect to the disputed domain name in the present proceeding. That provision, apparently because of its origin, is known as the Expired Domains Deletion Policy. The clause in question provides as follows:
“In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar HOLD and Registrar LOCK status, the WHOIS contact information for the registrant will be removed, and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is terminated, or the UDRP dispute finds against the complainant, the name will be deleted within 45 days. The registrant retains the right under the existing redemption grace period provisions to recover the name at any time during the Redemption Grace Period, and retains the right to renew the name before it is deleted.”
The registrar’s advice and the renewal of the domain name by Complainant, in effect in the name of the registrar seem to have been on the assumption that a registrant in the position of Pingable was no longer the registrant, would no longer be the Respondent and that a nominal registrant should be found for the balance of the proceeding and should occupy the position of Respondent. That view seems to be verified by the fact that the former registrant’s contact information is to be removed from the WHOIS, as the subsequent proceeding will not require contact with it and also by the fact that the registration is to be in registrar hold.
The Panel’s view is that this was a correct assumption and that ICANN’s intention was that the former registrant should no longer be a party to the proceeding.
That being so, the only practical way of the Complainant establishing its case is to look at the conduct of the former registrant and to decide whether that conduct would have made out a case for transfer.
In the present case, the Panel’s view is that case has clearly been made out and that transfer of the disputed domain name should be ordered.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michaelaiduss.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 6, 2014
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