C-Byte Computer Systems LLC (Colorado) v. Trevor Biscope
Claim Number: FA1405001562032
Complainant is C-Byte Computer Systems LLC (Colorado) (“Complainant”), represented by Wanda Brink of C-Byte Computer Systems LLC (Colorado) USA, Colorado. Respondent is Trevor Biscope (“Respondent”), Nevada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <c-byte.company>, <c-byte.management>, <c-byte.solutions>, <c-byte.support>, and <c-byte.systems>, registered with Gandi SAS.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2014; the National Arbitration Forum received payment on May 29, 2014.
On June 3, 2014, Gandi SAS confirmed by e-mail to the National Arbitration Forum that the <c-byte.company>, <c-byte.management>, <c-byte.solutions>, <c-byte.support>, and <c-byte.systems> domain names are registered with Gandi SAS and that Respondent is the current registrant of the names. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 June 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@c-byte.company, postmaster@c-byte.management, postmaster@c-byte.solutions, postmaster@c-byte.support, and postmaster@c-byte.systems. Also on June 5, 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 July 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G> Lyons 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 a formal response from Respondent.
Panel notes informal communication with the Forum by Respondent (and a retort by Complainant) which it has disregarded as being largely irrelevant to the key issues to be determined.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in C-BYTE and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complaint creates hardware/software for use by hotels, motels, lodges and casinos which it sells promotes and sells by reference to the trademark C-BYTE;
2. The disputed domain names were registered in on April 26, 2014;
3. The domain names resolve to an online gambling website;
4. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
5. The parties have been involved in earlier UDRP proceedings involving the same trademark (C-byte Computer Systems LLC v. Trevor Biscope/C-Byte, Inc., FA Number 1523522 (Nat. Arb. Forum November 21, 2013)).
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.
Procedural Issue: Concurrent Court Proceedings
Complaint references other active legal proceedings between the parties, namely, a complaint with the Federal Bureau Cyber Crime unit; a complaint with the Federal Trade Commission; a complaint with Homeland Security and the Post Office; and a personal protection order filed by Complainant with the County of Alamosa Colorado.
Panel finds that none of those matters has a direct bearing on the disputed domain name or will result in a determination which adjudicates on the disposition of the domain name. Panel accordingly proceeds to apply the Policy in the usual manner (see eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. There is no evidence that Complainant has a relevant trademark registration. Instead it relies on an allegation of common law rights and rests it claim wholly on a prior determination of that point by another panel in earlier UDRP proceedings between the parties.
In the case of C-byte Computer Systems LLC v. Trevor Biscope/C-Byte, Inc., FA 1523522, the panel ordered transfer of <c-byte.com>, <c-byte.net>, and
<c-bytecomputersystems.com> from Respondent to Complainant. The panelist found that Complainant had shown trademark rights in C-BYTE under paragraph 4(a)(i). This Panel is not able to appraise the evidence of use of the trademark upon which that finding of common law rights was based but in the absence of a Response and any contest by Respondent has no reason to question whether or not those rights exist. Panel accepts that Complainant has trademark rights in C-BYTE.
Panel is also satisfied that the disputed domain names are legally identical to Complainant’s trademark since in each case the domain name takes the trademark and merely adds one or other gTLD extension (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).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information lists Respondent as “Trevor Biscope” providing no prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain name resolves to an online gambling website. The parties have already been involved in UDRP proceedings concerned with domain names linked to the same trademark. Respondent is therefore aware of Complainant and its business and has chosen to connect the disputed domain names to a site having no bearing on Complainant’s business and likely to tarnish Complainant’s business.
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, those cases are not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(ii) above. Respect has already engaged in the same conduct (see C-byte Computer Systems LLC v. Trevor Biscope/C-Byte, Inc., FA 1523522). Respondent then took advantage of new gTLD extensions to register the disputed domain names in the knowledge that it was quite likely Complainant may desire those names (see Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) holding prior UDRP proceedings sufficient evidence of a pattern of bad faith registrations; Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(ii).”).
Panel finds registration and use in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <c-byte.company>, <c-byte.management>, <c-byte.solutions>, <c-byte.support>, and <c-byte.systems> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 11, 2014
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