Mr Andrew Cox v. David Williams
Claim Number: FA1510001642173
Complainant is Mr Andrew Cox (“Complainant”), represented by Andrew Cox, Great Britain. Respondent is David Williams (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <playerindex.com>, <player-index.com>, <playerindexgambling.com>, <playerindexgaming.com>, and <playerindexbetting.com>, registered with Webfusion Ltd.
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 October 13, 2015; the Forum received payment on October 15, 2015.
On October 14, 2015, Webfusion Ltd. confirmed by e-mail to the Forum that the <playerindex.com>, <player-index.com>, <playerindexgambling.com>, <playerindexgaming.com>, and <playerindexbetting.com> domain names are registered with Webfusion Ltd. and that Respondent is the current registrant of the names. Webfusion Ltd. has verified that Respondent is bound by the Webfusion Ltd. 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 October 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@playerindex.com, postmaster@player-index.com, postmaster@playerindexgambling.com, postmaster@playerindexgaming.com, and postmaster@playerindexbetting.com. Also on October 16, 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 November 12, 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 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
i) Complainant claims to have rights in the PLAYERINDEX mark through registration with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00003118529, registered October 30, 2015). Complainant claims that Respondent’s domains are the same or similar to Complainant’s PLAYERINDEX mark.
ii) Respondent has no rights in the disputed domain name because Respondent was retained by Complainant to buy the domain <playerindex.com> and develop a logo for Complainant’s business. Respondent’s refusal to transfer the <playerindex.com> domain and to register different domains incorporating the PLAYERINDEX mark does not confer rights or legitimate interests.
iii) Respondent has registered and is using the disputed domain name in bad faith. Respondent’s offer of the domains for sale at the price of £50,000.00 demonstrates bad faith. Further, as Respondent registered the original disputed domain name at Complainant’s request it is clear that Respondent had knowledge of Complainant’s rights in the PLAYERINDEX mark at the time of registration.
B. Respondent
Respondent has not submitted a formal Response in this proceeding. The Panel notes that the disputed domain names were registered on the following dates:
<playerindex.com>.............................................. May 31, 2005;
<player-index.com>................................. September 23, 2014;
<playerindexgambling.com>....................... August 18, 2015;
<playerindexgaming.com>.................. August 18, 2015; and
<playerindexbetting.com>........................... August 18, 2015.
The Panel sees that Respondent has sent an email, in which it asked for a proof of purchase of the disputed domain names from Complainant, otherwise Respondent feels as if he is being robbed.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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.
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. 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 claims to have rights in the PLAYERINDEX mark through registration with the UKIPO (Reg. No. UK00003118529, registered October 30, 2015). Panels have held where a valid governmental trademark registration exists, such a registration is sufficient in according rights to a complainant under Policy ¶ 4(a)(i). See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Nat. Arb. Forum July 11, 2015) (holding, “Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, this Panel sees that Complainant has demonstrated rights in the PLAYERINDEX mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant claims that Respondent’s domains are the same or similar to Complainant’s PLAYERINDEX mark. The Panel notes that the domains at issue incorporate the PLAYERINDEX mark fully and make the following additions to it: hyphenation, “gambling,” “gaming,” or “betting.” Additionally, each disputed domain name incorporates the generic top-level domain “.com.” Past panels have seen such additions insufficient in overcoming a finding of confusing similarity per Policy ¶ 4(a)(i). See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Therefore, the Panel agrees that Respondent’s <playerindex.com>, <player-index.com>, <playerindexgambling.com>, <playerindexgaming.com>, and <playerindexbetting.com> domain names are confusingly similar to the PLAYERINDEX 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.”).
Although Complainant does not make the argument it may be found that Respondent is not commonly known by the disputed domain names. WHOIS information associated with the disputed domain names lists the registrant as “David Williams,” which does not resemble the domains. Panels have not hesitated to find that a respondent is not commonly known by a disputed domain name based on WHOIS information. 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). Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain name.
Complainant contends that Respondent has no rights in the disputed domain because Respondent was hired by Complainant to acquire the original <playerindex.com> and develop a logo for Complainant’s business. Complainant believes that Respondent’s refusal to transfer the <playerindex.com> domain and to register different domains incorporating the PLAYERINDEX mark does not confer rights or legitimate interests. In emails between Complainant and Respondent there appears to be a disagreement as to the amount of money owed for services related to the registration of the <playerindex.com> domain and because of this disagreement Respondent has refused to give over the domains. Similarly, in correspondence between Forum and Respondent, Respondent contends that he has not been paid for the domains and should therefore not have to transfer them. Prior panels have held that a former employee of a complainant does not develop rights and legitimate interests in a domain name that is identical to a former employers trademark. See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark); Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark). The Panel concludes that Respondent has no rights or legitimate interests in the disputed 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 <playerindex.com>, <player-index.com>, <playerindexgambling.com>, <playerindexgaming.com>, and <playerindexbetting.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 26, 2015
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