Clario, Inc. v. Clario / Clario Limited
Claim Number: FA1512001651711
Complainant is Clario, Inc. (“Complainant”), represented by Eran Kahana of Maslon, LLP, Minnesota, USA. Respondent is Clario / Clario Limited (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clario.com> and <clario.net>, registered with Melbourne IT 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2015; the Forum received payment on December 9, 2015.
On December 11, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <clario.com> and <clario.net> domain names are registered with Melbourne IT Ltd and that Respondent is the current registrant of the names. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT 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 December 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2016 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@clario.com, postmaster@clario.net. Also on December 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 January 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant owns a trademark registration for the CLARIO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,463,638, filed May 22, 2007, first use in commerce Oct. 2007, registered July 8, 2008). The mark is used in connection with the sale and provision of non-downloadable software for data mining, data query, and data analysis. The <clario.com> and <clario.net> domain names are identical or confusingly similar to the CLARIO trademark because the domain names each contain the entire mark, making only the minor alteration of affixing a generic top-level domain (“gTLD”) to the end of the mark.
Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Furthermore, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use because Respondent is not actively using the domain name.
Respondent has engaged in bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Clario, Inc. of Eden Prarie, MN, USA. Complainant is the owner of domestic and international registrations for the mark CLARIO, which it has continuously used since at least as early as 2007 in connection with the provision of sales and marketing services.
Respondent is Clario/Clario Limited of London, United Kingdom. Respondent’s registrar’s address is listed as Melbourne, Australia. The Panel notes that <clario.com> was registered on or about March 15, 1999 and <clario.net> was registered on or about July 2, 2001.
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(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 owns a trademark registration for the CLARIO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,463,638, filed May 22, 2007, first use in commerce Oct. 2007, registered July 8, 2008). The mark is used in connection with the sale and provision of non-downloadable software for data mining, data query, and data analysis. The Panel finds that registration with the USPTO is sufficient to establish rights in the trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <clario.com> and <clario.net> domain names are identical or confusingly similar to the CLARIO trademark. Complainant notes that the domain names each contain the entire mark, making only the minor alteration of affixing a gTLD to the end of the mark. As a general rule, both “.com” and “.net” are incapable of distinguishing a domain name from the trademark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The Panel here finds that the disputed domain names are identical to Complainant’s mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has NOT met this burden.
The Panel notes that the registration dates of both of the disputed domain names predate the earliest date on which Complainant secured rights in the CLARIO trademark. Complainant claims a date of first use in 2007 on a registration issued in 2008. The Panel notes that <clario.com> was registered on or about March 15, 1999 and <clario.net> was registered on or about July 2, 2001. Complainant appears to argue that because Respondent purchased the domain names from its then employer, Clario Limited, sometime in 2011, that Respondent lacks legitimate rights or interests in the disputed domains. Complainant provides no express support for that argument. Even if that is not what Complainant seeks to imply, Complainant fails to address the fact that the domain names predate Complainant’s adoption of its mark.
While registration of a domain name before a Complainant acquires trademark rights is not specifically identified in the UDRP Policy as an automatic defense to a claim, the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant’s rights in the disputed domain name are junior to the rights of the Respondent. The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii));
The Complainant has NOT proven this element.
Because the Panel concludes that Respondent has rights or legitimate interests in the <clario.com> and <clario.net> domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Complainant has NOT proven this element.
As the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <clario.com> and <clario.net> domain names REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: January 22, 2016
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