HisOpal LLC v. Michael Davidson d/b/a Slayer Technologies Inc.
Claim Number: FA1404001553007
Complainant is HisOpal LLC (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Michael Davidson d/b/a Slayer Technologies Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hisopal.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2014; the National Arbitration Forum received payment on April 7, 2014.
On April 8, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hisopal.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has 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 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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@hisopal.com. Also on April 11, 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 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. Complainant, HisOpal LLC, sells swimwear under the HISOPAL mark through Etsy.
ii. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the HISOPAL mark (Reg. No. 4,504,664, registered April 1, 2014).
iii. Complainant has common law rights in the HISOPAL mark.
iv. Respondent’s <hisopal.com> domain name is identical to Complainant’s HISOPAL mark.
v. Respondent has no rights or legitimate interests with respect to the disputed domain name.
vi. Respondent is not commonly known by the disputed domain name.
vii. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
viii. Respondent has registered and is using the disputed domain name in bad faith.
ix. Respondent is using the disputed domain name primarily to disrupt the business of Complainant.
x. Respondent was a former personal friend of Complainant’s registered agent. Complainant’s agent expressed to Respondent that she was interested in Internet domain names, especially if such a domain name could be acquired to promote the HISOPAL brand. Respondent unilaterally registered the domain name and claimed he was helping out Complainant. After the relationship between these two ended, Respondent retained control of the <hisopal.com> domain name.
xi. Respondent registered the <hisopal.com> domain name on September 29, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark and common law rights for the HISOPAL mark. Respondent’s domain name is confusingly similar to Complainant’s HISOPAL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hisopal.com> domain name, and that Respondent registered and uses the 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 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.”).
Complainant argues sells swimwear under the HISOPAL mark through Etsy. Complainant owns a trademark registration with the USPTO for the HISOPAL mark (Reg. No. 4,504,664, registered April 1, 2014). Complainant’s registration of the HISOPAL mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant alleges that it has common law rights in the HISOPAL mark. The record reflects the following. Complainant began selling its goods on or about January 22, 2011. As of December 1, 2011, Complainant began marketing its goods on its Facebook page. In view of Respondent’s failure to contest Complainant’s allegations, the record minimally supports Complainant’s contention that it has established secondary meaning in the HISOPAL mark, showing common law rights in the mark under Policy ¶ 4(a)(i). See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Complainant alleges that Respondent’s <hisopal.com> domain name is identical to Complainant’s HISOPAL mark. Respondent merely adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. In 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 <hisopal.com> domain name is identical to Complainant’s HISOPAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the <hisopal.com> domain name. The registrant of the disputed domain name is identified as “Michael Davidson d/b/a Slayer Technologies Inc.” in the WHOIS record. Respondent does not submit any evidence showing that it is known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known as the <hisopal.com> domain name pursuant to Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant argues that Respondent is not using the <hisopal.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Complainant was previously involved in a relationship with Respondent, wherein Respondent claimed that he wanted to assist Complainant in registering the disputed domain name. Complainant alleges that the personal relationship between Complainant and Respondent ended and Respondent now refuses to transfer the disputed domain name to Complainant. Respondent’s disputed domain name resolves to a webpage purporting to be endorsed by Complainant. Respondent’s use of the disputed domain name may be considered an attempt to pass himself off as Complainant and under such circumstances the Panel finds Respondent is not using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the <hisopal.com> domain name primarily to disrupt the business of Complainant. Complainant argues that a personal relationship existed between the parties wherein Respondent claimed that he wanted to assist Complainant in registering the <hisopal.com> domain name. Complainant claims that the personal relationship between Complainant and Respondent has ended and Respondent now refuses to transfer the disputed domain name to Complainant. Respondent’s <hisopal.com> domain name leads to a website that purports to be endorsed by Complainant and hosts a message claiming to be from “The Staff at hisOpal.” Because the record indicates that that under the circumstances of this case, Respondent is arguably a competitor of Complainant, the Panel holds that Respondent has registered and is using the <hisopal.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel finds Complainant has satisfied 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 <hisopal.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 19, 2014
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