Southern Ink & Thread, LLC v. Jim Wilhelm / JAMES WILHELM
Claim Number: FA1504001614982
Complainant is Southern Ink & Thread, LLC (“Complainant”), represented by Ann I Dennen of Lanier Ford Shaver & Payne, PC, Alabama, USA. Respondent is Jim Wilhelm / JAMES WILHELM (“Respondent”), represented by Hollaway Law Office, Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <southerninkandthreadllc.com>, registered with Godaddy.Com, LLC, and <southerninkandthread.com>, registered with Fastdomain Inc..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2015; the Forum received payment on April 16, 2015.
On April 17, 2015, Godaddy.Com, LLC, confirmed by e-mail to the Forum that the <southerninkandthreadllc.com> domain name is registered with Godaddy.Com, LLC, and that Respondent is the current registrant of the name. Godaddy.Com, LLC, has verified that Respondent is bound by the Godaddy.Com 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 17, 2015, Fastdomain Inc. confirmed by email to the Forum that the <southerninkandthread.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with The Policy.
On April 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@southerninkandthreadllc.com, postmaster@southerninkandthread.com. Also on April 22, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has common law rights in the marks SOUTHERN INK & THREAD and SOUTHERN INK & THREAD, LLC.
Complainant employs the marks in the operation and marketing of its screen printing business.
Respondent registered the domain names <southerninkandthreadllc.com> and <southerninkandthread.com> on February 19, 2015.
The domain names are substantively identical to Complainant’s SOUTHERN INK & THREAD and SOUTHERN INK & THREAD, LLC marks.
Both Complainant and a company owned by Respondent offer screen-printing services.
Complainant and Respondent’s company have similar sales outlets and customer bases, in that both Complainant and Respondent sell to customers desiring custom shirts in the state of Alabama.
Respondent uses the disputed domain names to attract Internet users to its resolving websites for its commercial gain.
Respondent has no rights to or legitimate interests in the domain names.
Respondent’s registration of multiple domain names constitutes a pattern of bad faith registration.
Respondent registered the disputed domain names for the purpose of disrupting Complainant’s business.
Respondent registered and uses the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 asserts that it has rights in the marks SOUTHERN INK & THREAD and SOUTHERN INK & THREAD, LLC under the common law. Respondent does not dispute this assertion. For this reason , and because the Policy does not require that a UDRP complainant have registered its mark with a trademark authority in order to assert rights in the mark under Policy ¶ 4(a)(i), we conclude that Complainant has rights in the asserted marks for purposes of Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's trademark be registered by a government authority for such rights to exist).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the domain names <southerninkandthreadllc.com> and <southerninkandthread.com> are identical to Complainant’s SOUTHERN INK & THREAD, LLC and SOUTHERN INK & THREAD marks. The domain names include the marks in their entirety, the only differences between them being the substitution of the symbol “&” for the word “and,” and the inclusion of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the marks, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008):
the domain name at issue is identical to complainant’s … mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”
See also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name was identical to a UDRP complainant’s WRIGHT & LATO mark because the ampersand symbol (&) is not reproducible in a domain name).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that there is nothing in the record to suggest that Respondent has been commonly known by the disputed <southerninkandthreadllc.com> and <southerninkandthread.com> domain names, or either of them. Moreover, the pertinent WHOIS information identifies the registrant of both domain names only as “Jim Wilhelm,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in them within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (concluding that the fact that “nothing in [respondent’s] WHOIS information implies that [respondent] is ‘commonly known by’ the disputed domain name” was a factor in determining that the record in that proceeding did not support a finding that that respondent had rights to or legitimate interests in a contested domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain names <southerninkandthreadllc.com> and <southerninkandthread.com> to resolve to a website that supports a business it operates for profit in competition with the business of Complainant. This employment of the domain names is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a UDRP complainant’s mark in a domain name used to redirect Internet users to that respondent’s own website for commercial gain did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <southerninkandthreadllc.com> and <southerninkandthread.com> domain names as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as evidence of Respondent’s bad faith in the registration and use of the domain names. See 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).
We are also convinced by the evidence that Respondent employs the disputed <southerninkandthreadllc.com> and <southerninkandthread.com> domain names domain names, which are substantively identical to Complainant’s SOUTHERN INK & THREAD, LLC and SOUTHERN INK & THREAD marks, to profit from confusion caused among Internet users as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this too is evidence of Respondent’s bad faith in the registration and use of the domain names. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding, under Policy ¶ 4(b)(iv), that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to the mark of a UDRP complainant by using it to profit by redirecting Internet users to a website that offered services similar to those marketed by that complainant).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <southerninkandthreadllc.com>, and <southerninkandthread.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 27, 2015
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