BONA AB v. BN.
Claim Number: FA1505001618833
Complainant is BONA AB (“Complainant”), represented by William P. O'Meara of Klaas Law, Colorado, USA. Respondent is BN. (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bona.us>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2015; the Forum received payment on May 11, 2015.
On May 12, 2015, ENOM, INC. confirmed by e-mail to the Forum that the <bona.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@bona.us. Also on May 15, 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 June 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the BONA mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,018,883, registered November 26, 1996).
b. Respondent’s <bona.us> domain name is identical to Complainant’s BONA mark because it is differentiated by only the country-code top-level domain (“ccTLD”) “.us.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists “BN” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the domain name.
b. Respondent does not own a mark identical to the disputed domain name.
c. Respondent fails to provide a bona fide offering of goods or services because it has made no demonstrable preparations to use the domain name.
3. Policy ¶ 4(a)(iii)
a. Respondent registered the domain name for the purpose of selling it to Complainant for profit.
b. Respondent had actual knowledge of Complainant’s rights at the time of registration.
c. Respondent maintains the disputed domain name in an inactive holding with no content.
B. Respondent
1. Respondent did not submit a timely Response.
2. The Panel notes that the <bona.us> domain name was created on January 6, 2003.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 alleges it has rights in the BONA mark through registration with the USPTO (Reg. No. 2,018,883, registered November 26, 1996). Past panels have found registration with the USPTO sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds Complainant has rights in the BONA mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <bona.us> domain name is identical to Complainant’s BONA mark because it is differentiated by only the ccTLD “.us.” Past panels have found that when the only difference between a mark and a domain name are the addition of “.us,” the mark and domain name are identical under Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). Therefore, the Panel finds that Respondent’s <bona.us> domain name is identical to Complainant’s BONA mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that 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.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “BN” as Registrant and that Respondent has not submitted any further evidence to indicate being commonly known by the domain name. Past panels have found that a respondent was not commonly known by a domain name under Policy ¶ 4(c)(iii) where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
Complainant alleges that Respondent does not own a mark identical to the disputed domain name. The Panel notes that Respondent has failed to submit evidence to suggest such ownership. Therefore, the Panel finds that Respondent does not own any marks identical to the <bona.us> domain name under Policy ¶ 4(c)(i).
Complainant alleges that Respondent fails to provide a bona fide offering of goods or services because it has made no demonstrable preparations to use the domain name. Complainant contends that it has attempted to find a record of Respondent’s use of the <bona.us> domain name to offer commercial services and has found nothing. Complainant also contends that Respondent, as a business operation, has been dissolved as of September 6, 2010, Complainant has provided information from the Georgia Secretary of State in Exhibit 1.3 to support this finding. Past panels have found such a protracted period of non-development to indicate a failure to provide a bona fide offering of goods and services or legitimate noncommercial and fair use pursuant to Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv), and therefore a lack of rights or interests under Policy ¶ 4(a)(ii). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Beat the Bookstore, LLC v. May Enter., FA 589501 (Nat. Arb. Forum Dec. 19, 2005) (finding that the respondent’s “protracted period of inaction” in its development of the disputed domain name for over two years indicated that the respondent had no rights or legitimate interests in the disputed domain name). As the Panel notes that Respondent has failed to use the <bona.us> domain name, it finds that Respondent does not provide a bona fide offering of goods and services or legitimate noncommercial and fair use pursuant to Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv).
Complainant alleges that Respondent registered the domain name for the purpose of selling it to Complainant for profit. Complainant argues that because it had a longstanding registered mark, as well as a nearly a century of use of that mark in commerce at the time of Respondent’s registration, the only conceivable reason for Respondent to register the domain would be to sell it to Complainant for profit. Complainant further alleges that Respondent maintains the disputed domain name in an inactive holding with no content. Complainant has provided Exhibit 1 to demonstrate Respondent’s non-use of the domain name.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i)Complainant’s BONA trademark has a strong reputation and is widely known, as evidenced by the fact that Complainant had a longstanding registered mark, as well as a nearly a century of use of that mark in commerce at the time of Respondent’s registration, and ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith. Therefore, the Panel determines that Respondent registered and is using the disputed domain name in bad faith.
Complainant alleges that Respondent had actual knowledge of Complainant’s rights at the time of registration. Complainant bases this knowledge on its own history of commercial use of the BONA mark. Complainant contends that it has a famous mark, and that it would be inconceivable for Respondent to have created the <bona.us> domain name without actual knowledge of Complainant’s rights. Past panels have found that actual knowledge of a Complainant’s rights can constitute bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel infers due to the notoriety of the Complainant’s mark that Respondent had actual knowledge of Complainant’s rights at the time of its registration of the disputed domain name, and thus it finds Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the olicy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bona.us> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 19, 2015
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