Citigroup Global Markets, Inc. d/b/a
Smith Barney v. Superior Electrical Contractors c/o David Davidson
Claim
Number: FA0412000387130
Complainant is Citigroup Global Markets, Inc. d/b/a Smith Barney (“Complainant”), represented by Paul D. McGrady Jr., of Greenberg Traurig LLP, 77 West Wacker Drive, Suite 2500,
Chicago, IL 60601. Respondent is Superior Electrical Contractors c/o David Davidson (“Respondent”), 1024 Brooks Street, Ontario, CA
91762.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <smithbarney.net>, registered with Register.com.
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
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
22, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 27, 2004.
On
December 28, 2004, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <smithbarney.net> is registered with Register.com
and that Respondent is the current registrant of the name. Register.com has
verified that Respondent is bound by the Register.com registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
December 30, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 19, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@smithbarney.net by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 24, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <smithbarney.net>
domain name is identical to Complainant’s SMITH BARNEY mark.
2. Respondent does not have any rights or
legitimate interests in the <smithbarney.net> domain name.
3. Respondent registered and used the <smithbarney.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Smith Barney, is a global, full-service financial firm, which has provided
brokerage, investment banking and asset management services to corporations,
governments and individuals around the world since 1960. Complainant has registered the SMITH BARNEY
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,986,596 issued July 16, 1996).
Respondent
registered the <smithbarney.net> domain name on August 27,
2002. Respondent’s domain name does not
resolve to an active website.
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."
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.
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.
Complainant has
established rights in the SMITH BARNEY mark through registration with the USPTO
as well as through continuous use of the mark in commerce since 1960. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <smithbarney.net>
domain name is identical to Complainant’s SMITH BARNEY mark because the domain
name merely adds the generic top-level domain “.net” and omits the space
between the names “smith” and “barney” in Complainant’s mark. Such minor alterations are not enough to
distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy
¶ 4(a)(i). See Kabushiki Kaisha Toshiba v. Shan Computers,
D2000-0325 (WIPO June 27, 2000) (finding that the domain name
<toshiba.net> is identical to Complainant’s trademark TOSHIBA); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel accepts all reasonable allegations set forth by
Complainant as true and accurate. See
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.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the <smithbarney.net>
domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Furthermore,
there is no indication that Respondent is commonly known by the disputed domain
name or that Respondent is licensed to register domain names featuring
the SMITH BARNEY mark pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Respondent has
made no use of the <smithbarney.net> domain name; as such, it
cannot be said to be making a bona fide offering of goods or services, nor can
it be said to be making a legitimate noncommercial or fair use of the domain
name. In these circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to
Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,
D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy.”); see also Pharmacia & Upjohn AB v.
Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where Respondent failed to submit a Response to the Complaint and had
made no use of the domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name over two years ago and it does not resolve to an
active website. Such passive holding
constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See
Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding
bad faith under Policy ¶ 4(a)(iii) even though Respondent has not used the
domain name because “It makes no sense whatever to wait until it actually
‘uses’ the name, when inevitably, when there is such use, it will create the
confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane
S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith
where Respondent made no use of the domain name in question and there are no
other indications that Respondent could have registered and used the domain
name in question for any non-infringing purpose).
Furthermore,
the Panel infers that Respondent registered the <smithbarney.net>
domain name with actual or constructive knowledge of Complainant’s rights in
the mark due to the international renown of Complainant’s SMITH BARNEY mark as
well as Complainant’s registration of the mark with the USPTO. Registration of a domain name identical to
another’s mark, despite knowledge of the mark holder’s rights is tantamount to
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <smithbarney.net> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
February 7, 2005
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