ClearVoIP, Inc. v. Luis Angel De La Rosa
Claim Number: FA1505001621554
Complainant is ClearVoIP, Inc. (“Complainant”), represented by Kevin Kuzas of Kuzas Neu, Attorneys at Law, Pennsylvania, USA. Respondent is Luis Angel De La Rosa (“Respondent”), represented by Bruce W. Minsky of Law Offices of Bruce W. Minsky, P.C., New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inmatefone.com>, registered with Register.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Paul DeCicco, David Einhorn and John Upchurch as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 28, 2015; the Forum received payment on May 28, 2015.
On May 29, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the <inmatefone.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 June 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@inmatefone.com. Also on June 3, 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 June 18, 2015.
Complainant submitted a timely Additional Submission, which was received on June 23, 2015.
Respondent submitted a timely Additional Submission which was received on June 30, 2015.
On June 24, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Paul DeCicco, David Einhorn and John Upchurch as Panelists.
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’s Contentions
1. Complainant asserts unregistered common law rights in the INMATEFONE mark dating back to 2009. Registration with a governmental authority or entity is not necessary to obtain rights in a trademark. The mark is used on or in connection with the provision of telephone numbers to friends and families of persons that have been incarcerated in U.S. federal and state prisons. The <inmatefone.com> domain name is identical to the INMATEFONE mark.
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Respondent is using the domain name to operate a website unrelated to Complainant’s mark.
3. Respondent has acted in bad faith. Respondent is a former employee of Complainant, and therefore had actual knowledge of Complainant’s trademark rights. After years of use of the domain name by Complainant, Respondent redirected the domain name away from Complainant’s business use.
B. Respondent’s Contentions
1. Complainant does not have registered or common law rights in the INMATEFONE mark because Complainant has failed to provide any evidence of the mark’s use.
2. Respondent has rights or legitimate interests because the domain name was registered for a legitimate noncommercial use.
3. Respondent has not acted in bad faith. Complainant has failed to present evidence that can substantiate a bad faith argument.
C. Complainant’s Additional Submission
1. Respondent registered the disputed domain name and listed Complainant’s corporate entity name as the registrant from 2011 until May 23, 2015.
2. This defeats Respondent’s claim that he registered the disputed domain name for his own personal use.
D. Respondent’s Additional Submission
1. Respondent reacquired an interest in Complainant in January, 2015.
2. The domain name was owned by Respondent.
3. Respondent has acted in good faith.
1. Respondent’s <inmatefone.com> domain name is confusingly similar to Complainant’s INMATEFONE mark;
2. Respondent does not have any rights or legitimate interests in the <inmatefone.com> domain name; and
3. Respondent registered or used the <inmatefone.com> 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.
Complainant asserts, and the record supports, its broad commercial use and resultant common law rights in the INMATEFONE mark dating back to at least 2009. Registration with a governmental authority or entity is not necessary to obtain rights in a trademark. The mark is used on or in connection with the provision of telephone numbers to friends and families of persons that have been incarcerated in U.S. federal and state prisons. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant also asserts that the INMATEFONE mark has acquired secondary meaning. Complainant has submitted evidence showing use of the INMATEFONE mark. The Panel notes that relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). The Panel finds that Respondent has submitted sufficient evidence to establish secondary meaning, and finds that Complainant has common law rights in the INMATEFONE mark pursuant to Policy ¶ 4(a)(i).
Complainant also asserts that the <inmatefone.com> domain name is identical to the INMATEFONE mark. The Panel notes that the only difference between the disputed domain name and Complainant’s alleged trademark is the addition of the gTLD, “.com.” As a general rule, a gTLD can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <inmatefone.com> domain name is identical to Complainant’s alleged INMATEFONE mark according to 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 asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the INMATEFONE mark in domain names. The Panel notes that “Luis Angel De La Rosa” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent used to be one of Complainant’s employees, and that the domain name was registered while Respondent was acting as agent for Complainant. Complainant further asserts that while the disputed domain name used to resolve to a website featuring Complainant’s business, the domain name now resolves to an unrelated website. The Panel notes that the domain name resolves to a noncommercial website featuring information about meditation. The record further reflects that Respondent changed the Registrant from Complainant Corporation to himself personally in May, 2015, following his sale of all of his stock in Complainant Corporation. Respondent then redirected the subject domain name to an unrelated website. Prior panels have found that use of a confusingly similar domain name to resolve to an unrelated website cannot consist of a bona fide offering or a legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds the fact that Respondent covets the domain name and apparently has no use for the particular domain name outside of its use as a weapon against Complainant shows that Respondent believes the domain name has significant trademark value. Respondent thus impliedly admits that Complainant has trademark rights in the domain name.
Respondent’s claim that the domain name was not part of Complainant’s corporate assets, and that Respondent owns any legal or equitable interest therein is rejected. Certainly Complainant would not desire for its business critical domain name to be owned and controlled by Respondent, who was at best a minority shareholder, even if one accepts at face value that Respondent reacquired his shares, as claimed in his Additional Submission.
Respondent was a former employee of Complainant. Respondent facilitated the registration of the subject domain name for the benefit of Complainant, not for its own account.
Complainant was the owner and Registrant of the disputed domain name from 2011 until May, 2015. Respondent’s subsequent act in listing himself personally as the registrant is clear evidence of bad faith. Registration by a respondent of a domain name that was formerly owned by the Complainant shows evidence of bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”). The Panel finds that Complainant used to own the disputed domain name, and was the Registrant thereof. Respondent’s devious act of changing the Registrant from Complainant to himself constitutes bad faith under Policy ¶ 4(a)(iii). This is exacerbated by Respondent’s establishment of a competing business with a similar name, and threat to redirect the subject domain to that competitor’s website should Complainant not pay unwarranted claims for compensation. This amounts to extortion and clearly constitutes bad faith.
Finally, Respondent registered the <inmatefone.com> domain name knowing that Complainant had trademark rights in the INMATEFONE mark. Respondent’s prior knowledge is the INMATEFONE mark is admitted by Respondent. Given the forgoing, it is clear that Respondent registered and used the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <inmatefone.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inmatefone.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul DeCicco, Panelist
David Einhorn, Panelist
John J. Upchurch, Panelist
By:
John J. Upchurch, Chairman
Dated: July 7, 2015
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