DECISION

 

RichardsonClement P.C. v. Morrow Ibrahim / Ibrahim-Morrow

Claim Number: FA2009001911443

 

PARTIES

Complainant is RichardsonClement P.C. (“Complainant”), represented by David E. Malick, Alabama, USA.  Respondent is Morrow Ibrahim / Ibrahim-Morrow (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <richardsonclement.com> (“Domain Name”), registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 8, 2020; the Forum received payment on September 8, 2020.

 

On September 9, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <richardsonclement.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 September 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2020 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@richardsonclement.com.  Also on September 10, 2020, 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 October 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant RichardsonClement P.C. is a law firm.  Complainant asserts rights in the RICHARDSONCLEMENT PC mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,161,137, registered June 19, 2012).  Respondent’s <richardsonclement.com> domain name is confusingly similar to Complainant’s mark, as it incorporates the RICHARDSONCLEMENT portion of the RICHARDSONCLEMENT PC mark in its entirety, merely adding the “.com’ generic top-level domain (“gTLD”).

 

Respondent lacks rights or legitimate interests in the <richardsonclement.com> domain name.  Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent’s use of the RICHARDSONCLEMENT PC mark.  Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Rather, Respondent uses the website accessed from the Domain Name (“Respondent’s Website”) to resolve to an image, but no substantive content.

 

Respondent registered and uses the <richardsonclement.com> domain name in bad faith.  Respondent appears to have registered the Domain Name to sell the Domain Name, to prevent Complainant from using the RICHARDSONCLEMENT PC mark and Domain Name, and/or to disrupt Complainant’s legitimate business.  Respondent registered and obtained the Domain Name with actual and constructive knowledge of Complainant's mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the RICHARDSONCLEMENT PC mark.  The Domain Name is confusingly similar to Complainant’s RICHARDSONCLEMENT PC mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant has rights in the RICHARDSONCLEMENT PC mark based on registration with the USPTO (e.g. Reg. No. 4,161,137, registered June 19, 2012).  Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).  See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).

 

The Panel finds that the <richardsonclement.com> domain name is confusingly similar to Complainant’s RICHARDSONCLEMENT PC mark as it incorporates the distinctive RICHARDSONCLEMENT element of the RICHARDSONCLEMENT PC mark (“PC” indicates that Complainant is a professional corporation) and adds the “.com” gTLD.  The addition of a gTLD is irrelevant in saving a domain name from a finding of confusing similarity to a corresponding trademark.  See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain NameIn order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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 holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the RICHARDSONCLEMENT PC mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).  The WHOIS lists “Morrow Ibrahim / Ibrahim-Morrow” as registrant of record.  Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name resolves to a website that contains the heading “sample page” and contains content in Indonesian relating to poker games.  Absent any alternative explanation, the Panel finds that the Respondent’s Website is a dummy/sample page website that does not amount to a use of the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”)

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Domain Name was registered by the Complainant in 2007 and its registration lapsed in 2019.  Respondent purchased the Domain Name through an auction process following its lapsing for what is purported to be $999 (though Complainant queries the actual sum).  At the time of purchase, Respondent would have known that the Domain Name had formerly been registered since 2007 to an entity that is clearly identifiable following a simple Google search, and there is no obvious reason (and the Respondent has not provided one) for an entity to register a domain name for $999 and use it for essentially a parking page, other than to sell it at a higher price, most likely to the previous registrant that may have omitted to renew its domain name.  The Panel finds, on the balance of probabilities, that Respondent was aware of Complainant at the time it registered the Domain Name.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

With respect to use in bad faith, the facts in this case correspond closely with the facts in Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC D2011-2137 (WIPO Feb. 6, 2012).  In that case the panel noted that (“Respondent registered the Domain Name virtually immediately after Complainant’s registration lapsed, while any trademark or Internet based search would have easily disclosed Complainant’s trademark rights and long-established use of the Lifetime Assistance term.  Moreover, Respondent used the Domain Name in connection with a parked website, while demanding USD 30,000 for sale of the Domain Name to Complainant and rejecting Complainant’s offer of USD 3,000. In view of this showing, and taking into account that Respondent has not disputed Complainant’s allegations and has been found to have violated the Policy in previous cases, the Panel finds in favor of the Complainant.”)

 

In the present case, the Respondent has not offered the Domain Name for sale for a sum similar to the amount sought in the Lifetime Assistance case, however the e-mails between the parties indicate that Respondent is seeking to sell the Domain Name and is seeking a significant offer from Complainant.  I am satisfied that given the circumstances of acquisition of the Domain Name, the “use” of the Domain Name for a parking page, and the evidenced intention to sell the Domain Name for a sum greater than out of pocket costs, the Respondent has used the Domain Name in bad faith under Policy ¶ 4(b)(i).  See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale.  The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <richardsonclement.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Nicholas J.T. Smith, Panelist

Dated:  October 7, 2020

 

 

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