Ace Bayou Corp. v. John NYoung
Claim Number: FA1608001690933
Complainant is Ace Bayou Corp. (“Complainant”), represented by Michael A. Bondi of Moss & Barnett, Minnesota, United States. Respondent is John NYoung (“Respondent”), Colorado, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xrockergamingchairhq.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 25, 2016; the Forum received payment on August 25, 2016.
On August 25, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <xrockergamingchairhq.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, LLC 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 August 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@xrockergamingchairhq.com. Also on August 25, 2016, 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 September 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant has registered its X ROCKER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,069,961, registered Mar. 21, 2006), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. 1. Respondent’s domain is confusingly similar to Complainant’s mark as it wholly incorporates the X ROCKER mark.
Respondent has no rights or legitimate interests in the disputed domain. Respondent’s resolving website contains the full X ROCKER mark and is likely to cause Complainant’s customers to associate the domain and website with Complainant. See Compl., at Attached Ex. 5.
Respondent registered and is using the domain in bad faith. First, because of Complainant’s existing trademark, Respondent had constructive notice of Complainant’s rights in the X ROCKER mark. Second, Respondent used false WHOIS information; there is no city in Colorado with the name Andell, and there is no city associated with the zip code 10000. See Compl., at Attached Ex. 4.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant registered the X ROCKER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,069,961, registered Mar. 21, 2006), which demonstrates Complainant’s rights in its mark.
2. Respondent registered the disputed domain name on September 27, 2014.
3. The disputed domain name resolves to a website that contains the full X ROCKER mark and is likely to cause Complainant’s customers to associate the domain name and the website with Complainant.
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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has registered the X ROCKER mark with the USPTO (Reg. No. 3,069,961, registered Mar. 21, 2006), which Complainant submits demonstrates its rights in the mark. See Compl., at Attached Ex. 1. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <xrockergamingchairhq> domain name is identical or confusingly similar to Complainant’s X ROCKER mark. Complainant argues that Respondent’s domain name is confusingly similar to Complainant’s mark as it wholly incorporates the X ROCKER mark. The Panel notes that the domain name also includes the terms “gaming,” “chair,” and “hq,” removes the spaces between the words of Complainant’s mark, and affixes the generic top-level domain “.com.” Panels have held that these changes do not serve to distinguish a respondent’s domain name adequately from a complainant’s mark per Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s X ROCKER mark and to use it in its domain name and has added the terms “gaming”, “chair” and “hq,” which do not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the goods and services of Complainant;
(b) Respondent registered the disputed domain name on September 27, 2014;
(c) The domain name resolves to a website that contains the full X ROCKER mark and which is likely to cause Complainant’s customers to associate the domain name and the website with Complainant;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain. Complainant asserts that Respondent is not commonly known by the domain name and that Respondent is not licensed, permitted, or authorized to use the X ROCKER mark. The Panel notes that the WHOIS information lists “John NYoung” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel notes Attached Exhibit 4 for additional WHOIS information. Based on the information contained in the WHOIS record and a lack of evidence to the contrary, the Panel finds that Respondent is not commonly known by the domain pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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);
(e) Complainant submits that Respondent’s resolving website contains the full X ROCKER mark and is likely to cause Complainant’s customers to associate the domain and website with Complainant. See Compl., at Attached Ex. 5. Complainant’s case is that Respondent, through the use of the X ROCKER mark on its resolving website, is using the domain name to pass itself off as Complainant. Compare Compl., at Attached Ex. 3, with Compl., at Attached Ex. 5. Panels have decided that a respondent’s use of a domain name to pass itself off as a complainant is evidence that the respondent lacks rights and legitimate interests in the domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). As the Panel agrees, it finds that Respondent lacks rights and legitimate interests in the disputed domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary submissions and considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Secondly, Complainant argues that because of its existing trademark, Respondent had constructive notice of Complainant’s rights in the X ROCKER mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Thirdly, Complainant contends that Respondent used false WHOIS information because there is no city in Colorado with the name Andell, and there is no city associated with the zip code 10000. See Compl., at Attached Ex. 4. Panels have concluded that a respondent’s use of false information in connection with the registration of a domain name is evidence of bad faith. See Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (determining that use of false registration information constitutes bad faith). As such, the Panel finds that Respondent has engaged in bad faith.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <xrockergamingchairhq.com> domain name using the X ROCKER mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xrockergamingchairhq.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 26, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page