national arbitration forum

DECISION

Bill Clark v. HiNet, Inc.

Claim Number: FA0501000405057

PARTIES

Complainant is Bill Clark (“Complainant”), 416 O’Keefe St., Menlo Park, CA 94025. Respondent is HiNet, Inc. (“Respondent”), 51 Crisostomou Smirnis Street, Piraeus, Athens 18547, Greece.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <delphic.com>, registered with Network Solutions.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 18, 2005.

On January 21, 2005, Network Solutions confirmed by e-mail to the National Arbitration Forum that the domain name <delphic.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 January 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 15, 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@delphic.com 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 February 21, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <delphic.com> domain name is identical to Complainant’s DELPHIC.COM mark.

2. Respondent does not have any rights or legitimate interests in the <delphic.com> domain name.

3. Respondent registered and used the <delphic.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has created and marketed model cutaways, including aviation cutaways, under the DELPHIC.COM mark since 1997. Complainant had possession of the <delphic.com> domain name from 1997 until 2004 and had used it continuously in connection with Complainant’s model cutaway business. Complainant’s business is a small, family-owned business that relied on its website to sell model cutaways. Complainant has promoted its DELPHIC.COM mark on its business cards and on its websites. Complainant most recently renewed its domain name registration for a three-year period on February 25, 2004.

On January 4, 2005, Complainant discovered that its email account through the <delphic.com> domain name had become mysteriously inaccessible. After contacting Network Solutions, Complainant learned that somehow its password had been discovered in October 2004 and that Respondent, a third party unknown to Complainant, had falsely changed the registrant information and administrative contact for the disputed domain name registration. Respondent had subsequently redirected the domain name to a different website. Complainant’s business has been effectively halted because of Respondent’s misappropriation of the domain name.

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.”

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.

Procedural Matter

Complainant alleges that it previously owned the <delphic.com> domain name registration and that the domain name registration was fraudulently transferred to another registrant. Although a fraudulent transfer raises potential contract or tort issues that are outside the scope of the Policy, the Panel may still decide to transfer the disputed domain name if it finds that Complainant has established that all requirements of the Policy, aside from the fraudulent transfer issue, are met. In this case, the Panel chooses to decide whether Respondent’s conduct constitutes “cybersquatting” as defined by the Policy and expresses no opinion about any other issues raised by the facts in the record. See Booz Allen Hamilton Inc. v. Human Works Inc., D2002-0656 (WIPO Sept. 23, 2002) (transferring a domain name registration that the respondent acquired through an administrative error when the complainant was able to show registration and use in bad faith and the requirements of the Policy were otherwise satisfied); see also Compelling Content Creators v. Ushakov, FA 346763 (Nat. Arb. Forum Dec. 17, 2004) (transferring a domain name registration that the respondent acquired through a fraudulent transfer when the complainant demonstrated that the three elements of the Policy were present).

Identical and/or Confusingly Similar

Respondent has failed to respond to the Complaint. Thus, the Panel may accept all allegations set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); 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).

Complainant can establish rights in the DELPHIC.COM mark under the Policy despite the fact that the mark is not registered with any government authority. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Complainant has established common law rights in the DELPHIC.COM mark. Complainant’s mark has acquired secondary meaning as a result of Complainant’s continuous use of the mark in commerce in connection with its model cutaway business since 1997. Complainant has promoted its mark on the Internet and on its business cards. Complainant’s use of the <delphic.com> domain name from 1997 to 2004 in connection with its model cutaway business also evidences Complainant’s rights in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that Complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (“[T]he fact that Complainant previously held registrations for the [disputed] domain names attests . . . that it has rights in its marks.”); see also Suburban Ostomy Supply Corp. v. Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s continuous use in commerce and its prior registration of the domain name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY mark.”).

Respondent’s <delphic.com> domain name is identical to Complainant’s DELPHIC.COM mark because the domain name is comprised of Complainant’s entire mark. See Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in stating that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing similarity is to be resolved “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”).

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

Rights or Legitimate Interests

Respondent did not submit a response in this proceeding. Therefore, Complainant’s submission has gone unopposed and its arguments unrefuted. In the absence of a response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Complainant has asserted that Respondent has no rights or legitimate interests in the disputed domain name. Because Respondent has failed to submit a response, it has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the <delphic.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, Respondent failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true).

Additionally, the Panel considers the allegations that Complainant previously held the domain name and that Respondent opportunistically registered the domain name as evidence that Respondent lacks rights and legitimate interests in the <delphic.com> domain name pursuant to Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interests in the domain name); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”).

Furthermore, nothing in the record indicates that Respondent is either commonly known by the disputed domain name or is authorized to register domain names featuring Complainant’s mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).

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

Registration and Use in Bad Faith

While each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of the domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

The Panel finds that the evidence in the record establishes that Respondent knew that Complainant had rights in the DELPHIC.COM mark and that the disputed domain name had value to Complainant at the time that Respondent misappropriated the <delphic.com> domain name. The Panel finds that the situation in this case is analogous to cases where respondents immediately register domain names whose registrations website operators inadvertently fail to renew. Registering Complainant’s active domain name for its own purposes is strong evidence that Respondent registered and used the disputed domain name in bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name).

Moreover, Respondent’s scheme to infiltrate and acquire the <delphic.com> domain name indicates Respondent was on notice of Complainant’s rights in the DELPHIC.COM mark. Respondent’s registration and use of the disputed domain name despite actual or constructive knowledge of Complainant’s rights demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Cf. Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (inferring that Respondent had knowledge that the <tercent.com> domain name, which previously belonged to Complainant, when Respondent registered said domain name the very same day Complainant’s registration lapsed); cf. Savage Sys., Inc. v. Kang, FA 102480 (Nat. Arb. Forum Dec. 31, 2001) (inferring that Respondent had knowledge that the <savagearchery.com> domain name previously belonged to Complainant when Respondent registered said domain name the very same day Complainant’s registration lapsed).

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated: March 4, 2005