Decimator Design Pty Ltd v. Shimon Hirschhorn
Claim Number: FA1503001609262
Complainant is Decimator Design Pty Ltd (“Complainant”), represented by Jon M. Gibbs of Lowndes, Drosdick, Doster, Kantor & Reed, P.A., Florida, USA. Respondent is Shimon Hirschhorn (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <decimator2.com>, <decimator3.com>, <mdducc.com>, <md-ducc.com> and <md-quad.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on March 12, 2015; the Forum received payment on March 13, 2015.
On March 13, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <decimator2.com>, <decimator3.com>, <mdducc.com>, <md-ducc.com> and <md-quad.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2015 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@decimator2.com, postmaster@decimator3.com, postmaster@mdducc.com, postmaster@md-ducc.com, and postmaster@md-quad.com. Also on March 17, 2015, 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.
A timely Response was received and determined to be complete on March 29, 2015.
A timely Additional Submission was received from Complainant on April 3, 2015.
A timely Additional Submission was received from Respondent on April 8, 2015.
On April 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that the disputed domain names are either identical or confusingly similar to trademarks in which it has rights, namely, DECIMATOR, MD-DUCC and MD-QUAD (hereinafter, “the trademarks”).
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
Response does not address the Policy in any sort of systematic way. Respondent makes no submission in respect of the claim to trademark rights. Respondent alleges that it is a distributor of Complainant’s goods which bear the trademarks, stating that Complainant granted Respondent permission to use the disputed domain names in 2011.
Respondent states that it offered to transfer the disputed domain names to Complainant but has, in any event, ceased to use any of the disputed domain names in respect of Complainant’s goods.
C. Additional Submissions
As indicated, both parties made Additional Submissions. For its part, Complainant submits that it did not agree to Respondent’s registration or use of the domain names. Further, that Respondent’s offer to transfer the disputed domain names was not unconditional.
Respondent counters with the claim that since February 2010 it has been a re-seller of Complainant’s products. It asserts that it did not compete with Complainant in any way and that Complainant helped Respondent maintain and improve Respondent’s websites.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademarks in connection with video broadcast solution;
2. The trademarks are registered with the United States Patent and Trademark Office (“USPTO”) as Reg. Nos. 3,681,334, registered September 8, 2009 (DECIMATOR), 4,121,379, registered April 3, 2012 (MD-DUCC) and 4,647,745, registered December 2, 2014 (MD-QUAD);
3. Respondent appeared to sell Complainant’s products from websites to which the disputed domain names resolve; and
4. After receiving notification of this dispute, Respondent used some of the domain names to promote third party products.
Preliminary Issue: Consent to Transfer
Respondent indicates in its Response that it is prepared to transfer the <mdducc.com>, <md-ducc.com> and <md-quad.com> domain names to Complainant if it is reimbursed for its hosting and registration expenses. It does not agree to transfer the <decimator2.com> and <decimator3.com> domain names.
This is simply a conditional offer to negotiate transfer of some of the disputed domain names. It is not a bilateral request for transfer as in, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004). Accordingly, it is proper for the Panel to apply the Policy.
Preliminary Issue: Dispute outside Scope of Policy
Numerous UDRP decisions have held that the Policy was implemented primarily to combat cases of obvious abusive domain name registration. It is not a suitable mechanism for resolving more general business or contractual disputes which might incidentally involve the use of contested domain names.
Panel gave considerable time to the question of whether or not the dispute between these parties was outside the scope of the Policy. The parties were well known to each other before the Complaint was filed. From the course of those prior dealings Respondent could have reasonably inferred the basis of Complainant’s grievances before the Complaint was made. Much of the evidence goes towards the issue of supply of goods to Respondent for resale and the attendant terms and conditions. The dealings between the parties were informal in the extreme, lacking any obvious regulation by written contract or by commonly understood terms and conditions and frequently involving a third party purportedly acting with Complainant’s authority.
Nevertheless, what emerges from the evidence as a whole is that there is no indication whatsoever that Complainant gave Respondent permission to use the trademarks or to register any domain name incorporating the trademarks. Further, Respondent’s claim that it was appointed as an authorized reseller of Complainant’s goods lacks a convincing evidentiary basis and so for these reasons Panel finds that it has a proper mandate to determine the proceedings by reference to the Policy.
Primary Issues: the Policy
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.
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.
Complainant asserts registered rights in the trademarks. A trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006)). Since Complainant has provided evidence of its Federal registrations for the trademarks with the USPTO Panel finds that Complainant has rights in the trademarks.
For the purposes of comparing the disputed domain names to the trademarks, the non-distinctive gTLD, “.com”, can be disregarded (see Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007)). The comparisons reduce to: decimator2 and decimator3 with the trademark, DECIMATOR; mdducc.com and md-ducc with the trademark, MD-DUCC, and md-quad with the trademark, MD-QUAD. The differences are trivial, being either matters of punctuation or the addition of single numbers. The disputed domain names are either legally identical to the respective trademarks or confusingly similar thereto (see Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark".).
Complainant has therefore established the first element of the Policy with respect to all of the disputed domain names.
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); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information identifies Respondent as “Shimon Hirschhorn” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to register any domain name incorporating the trademarks.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names.
The argument which can be teased from Respondent’s submissions is that it has made a bona fide offering of goods by reference to the domain names because it is an authorized distributor of Complainant’s products.
Panel does not find any evidence that Respondent was permitted to register domain names incorporating the trademarks. Panel does not find compelling evidence that Respondent was an authorized distributor of Complainant’s products. Panel is therefore unable to find that Respondent has any rights or interests in the disputed domain names since its use of the domain names has not been in good faith (see Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903)
Complainant has satisfied the second limb of the Policy with respect to all of the disputed domain names.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith. Panel notes here that bad faith is not as a rule cured by last minute remedial efforts by a respondent after notification of a dispute, as Respondent in this case would seem to believe.
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.’
Complainant argues that Respondent uses the disputed domain names to disrupt Complainant’s business and so its actions fall squarely under paragraph 4(b)(iii) of the Policy.
Panel need not consider the applicability of the scenarios outlined by paragraph 4(b) above since it is clear to Panel that the domain names were registered in bad faith and used in bad faith for the following reasons.
There is no doubt that Respondent was aware of the trademarks at the time of registration of the domain names. By its own admission, Respondent registered the domain names to resell Complainant’s goods bearing the trademarks. Those registrations were made without Complainant’s knowledge and without its authority or permission (see G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)). Complainant’s dissatisfaction with registration of the domain names was later made known to Respondent. Respondent ignored that matter for some time and afterwards made transfer of several of the domain names to Complainant conditional on financial compensation. In respect of the remainder of the disputed domain names, it removed content from the resolving websites relevant to Complainant’s products and added promotional literature relative to a third party’s goods. All of these actions manifest bad faith.
Panel finds that Complainant has established the third and final limb of the Policy with respect to all of the domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <decimator2.com>, <decimator3.com>, <mdducc.com>, <md-ducc.com> and <md-quad.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 1, 2015
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