Denny Cherry & Associates Consulting, LLC v. Azeras LLC
Claim Number: FA1702001718995
Complainant is Denny Cherry & Associates Consulting, LLC (“Complainant”), represented by Seth H. Salinger, Massachusetts, USA. Respondent is Azeras LLC (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dcac.com>, registered with Fabulous.com Pty 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2017; the Forum received payment on February 24, 2017.
On March 2, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <dcac.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 March 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2017 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 email@example.com. Also on March 7, 2017, 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 April 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a formal Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights in DCAC. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent acted in bad faith by attempting to hold Complainant “to ransom” for payment of USD 6,100.00 in return for the domain name.
Respondent failed to submit a formal Response in this proceeding. However, on April 13, 2017 Respondent wrote to the Forum as follows:
“Though we did not file a formal response, I've attached a full screenshot of the conversation between the domain broker and the Complainant, showing that the Complainant originally inquired about the domain name on Sept. 23, 2011 and that Complainant advised us on Jan. 31, 2017 of their Trademark registration dated Sept. 6, 2016.
Also, Complainant mentions that they've operated a website at dcac.co, "From on or about September 14, 2011". The statement is misleading at best. According to the .CO registry the correct registration date of the domain 'dcac.co' is September 24, 2011, the day after the Complainant first inquired.
I hope you will consider this information in your decision.”
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the DCAC mark in connection with the provision of IT consulting and training services;
2. Complainant owns United States Patent and Trademark Office Reg. No. 5,036,316, filed February 1, 2016 and registered September 6, 2016, for the trademark DCAC (“the USPTO Registration”);
3. the USPTO Registration is in respect of “IT consulting services” and claims a date of first use in commerce of January 1, 2013.
4. the disputed domain name was created on October 7, 1998;
5. the domain name resolves to a website carrying miscellaneous third party advertising and showing the domain name to be “listed [for sale] in the marketplace at domainnamesales.com”;
6. Complainant attempted to purchase the disputed domain name via domainnamesales.com; and
7. when the purchase price for the domain name was set at USD 6,100.00 Complainant sent a demand letter requiring transfer of the domain name to Complainant upon threat of legal proceedings.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national trademark authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of the USPTO Registration for the trademark.
The Panel finds the domain name to be identical to the trademark for the purposes of this aspect of the Policy. In making the comparison, it is generally agreed that the gTLD, “.com”, may be disregarded (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000); F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015)).
Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WhoIs information lists “Azeras LLC” as the domain name registrant and there is nothing to suggest that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. The disputed domain name resolves to a webpage with miscellaneous advertising. The domain name is for sale. A prima facie case has been made (see, for example, Meyerson v. Speedy Web, FA 960409 (Forum May 25, 2007) finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); see also, Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) where the panel held that “Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”; University of Rochester v. Park HyungJin, FA1410001587458 (Forum December 9, 2014) where it was held that “Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”).
The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Respondent’s informal submission is not clearly related to the matters addressed under paragraph 4(a) of the Policy although they do suggest that Complainant’s trademark rights postdate registration of the domain name.
The Panel need not consider the matter of whether or not to exercise its discretion so as to take into account Respondent’s informal submission for the reason that, as presented, the Complaint does not establish that the disputed domain name was registered in bad faith.
The domain name was created in 1998. The USPTO Registration for the trademark was filed and registered in 2016. According to the USPTO Registration, the first claim to use of the trademark in commerce is in 2013. There is no claim to earlier common law rights other than a bald assertion that the trademark was used in respect of IT consulting services since 2011. On the evidence, that was the year in which Complainant was incorporated and so a claim to common law use by Complainant could not have been earlier than 2011. The creation of the domain name predates formation of Complainant by more than a decade.
Registration in bad faith is not possible on the facts as presented and so the Panel finds that Complainant has failed to satisfy the third element of the Policy.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dcac.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 16, 2017
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