Paul Owens v. LaPorte Holdings Inc.
Claim
Number: FA0501000406994
Complainant is Paul Owens (“Complainant”), 5655 Lori
Lane, Beaumont, TX 77713. Respondent is LaPorte
Holdings Inc. (“Respondent”), ATTN: testpreview.com, c/o Nameking, Inc.,
2202 S. Figueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <testpreview.com>, registered with NameKing,
Inc.
The
undersigned certifies that he or has acted independently and impartially and to
the best of his or knowledge has no known conflict in serving as Panelist in
this proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 27, 2005.
On
January 28, 2005, NameKing, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <testpreview.com> is
registered with NameKing, Inc. and that Respondent is the current registrant of
the name. NameKing, Inc. has verified that Respondent is bound by the NameKing,
Inc. 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
February 2, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 22, 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@testpreview.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
March 1, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <testpreview.com>
domain name is confusingly similar to Complainant’s TESTPREPREVIEW.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <testpreview.com> domain name.
3. Respondent registered and used the <testpreview.com>
domain name in bad faith.
B. Respondent failed to submit a response in
this proceeding.
Since July 2003,
Complainant has used the <testprepreview.com> domain name to host a
website that offers free information and practice tests for various exams.
Complainant alleges that it has spent much time and money promoting its website
and its TESTPREPREVIEW.COM mark to universities, libraries, and other
organizations. Some of the organizations that Complainant contacted posted
links on their websites that mistakenly directed Internet users to the
then-unregistered <testpreview.com> domain name rather than to
Complainant’s website. However, the disputed domain name was no longer
available when Complainant subsequently attempted to register it.
Respondent
registered the <testpreview.com> domain name on July 10, 2004. The
domain name resolves to a website without any content. Complainant asserts that
Respondent chose and registered the disputed domain name by engaging in a new
form of cybersquatting known as “pagerank hijacking,” which alludes to a search
engine algorithm that assesses the importance of a web page by counting the
number of links that point to the page. Complainant alleges that Respondent
uses this technology to locate unregistered domain names to which mistyped
links point. Respondent proceeds to register those domain names that are
targeted by the largest number of mistyped links.
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.
Registration of
a mark with a governmental authority is unnecessary for a complainant to
establish rights in a mark if a common law mark has been established. See
McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002)
(The ICANN dispute resolution policy is “broad in scope” in that “the reference
to a trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
complaint under the Policy); see also
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (finding that the Policy does not require “that a trademark be registered
by a governmental authority for such rights to exist”).
Complainant
established by extrinsic proof in this proceeding that it has rights in the TESTPREPREVIEW.COM mark through
ownership of a common law mark. A common law mark is established when a
complainant’s mark becomes distinctive and acquires secondary meaning.
Complainant established that through Complainant’s continuous and exclusive use
of the TESTPREPREVIEW.COM mark in commerce since July 2003 and through
Complainant’s expenditure of time and money in promotion of the mark,
Complainant’s mark has acquired secondary meaning and has become distinctive.
Thus, Complainant has established secondary meaning in the TESTPREPREVIEW.COM
mark through its continuous and exclusive use. The Panel finds, therefore, that
Complainant has established common law rights in the TEXTPREPREVIEW.COM mark pursuant
to Policy ¶ 4(a)(i). 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 S.A. Bendheim Co., Inc. v. Hollander
Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (finding that the
complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Nat’l
Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (finding that the 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).
The domain name
that Respondent registered, <testpreview.com>, is confusingly
similar to Complainant’s TESTPREPREVIEW.COM mark because the domain name merely
removes the letters “pre,” creating a domain name that is visually and
phonetically similar to the mark. The removal of letters from a mark to create
a domain name that is easily confused with the mark does not distinguish the
disputed domain name. Thus, the Panel finds that the domain name is confusingly
similar to the TESTPREPREVIEW.COM mark. See VeriSign, Inc. v. VeneSign
C.A., D2000-0303 (WIPO
June 28, 2000) (finding that the pronunciation and spelling between the
<venesign.com> domain name and the complainant’s mark, VERISIGN, were so
close that confusion could arise in the mind of the consumer); see also Am.
Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding
the words “quest” and “crest” to be similar in sound and, thus, finding that
the <mapcrest.com> domain name was confusingly similar to the
complainant’s MAP QUEST mark); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum
Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was
confusingly similar to Complainant’s AOL mark).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iii).
Such a showing shifts Complainant’s burden to Respondent, who must come forward
with evidence rebutting Complainant’s allegations in order to prevail on this
element. In this case, Complainant has made a prima facie showing that
Respondent does not have any rights or legitimate interests in the disputed
domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no
rights or legitimate interests in respect of the Domain Name requires the
Complainant to prove a negative. . . . [I]t is sufficient for the Complainant
to show a prima facie case and the burden of proof is then shifted [to the]
Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002) (holding that where a complainant has asserted that a
respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”).
Because
Respondent has failed to submit a response in this proceeding, the Panel may
accept as true all reasonable allegations submitted by Complainant in the
Complaint. Furthermore, since Complainant has made a prima facie showing that
Respondent does not have any rights or legitimate interests in the disputed
domain name, the burden is shifted to Respondent to demonstrate that it has
rights or legitimate interests in the domain name. In this proceeding,
Respondent has not submitted a response. Thus, Respondent has failed to present
any circumstances under which it could substantiate rights or legitimate
interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because it never submitted a response or provided the panel with
evidence to suggest otherwise); see also Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that
in the absence of a response the panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do).
Respondent
is not using the disputed domain name for any purpose. Therefore, 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 the respondent failed to submit a response to the Complaint and
made no use of the domain name in question); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that a respondent has not established
any rights or legitimate interests in the disputed domain name).
No
evidence before the Panel suggests Respondent is commonly known by the <testpreview.com>
domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information
indicates that the registrant of the disputed domain name is known as “LaPorte
Holdings, Inc.” and is not known by the confusingly similar second-level domain
that infringes on Complainant’s TESTPREPREVIEW.COM mark. Moreover, Respondent
is not authorized or licensed to use Complainant’s mark for any purpose. Thus,
the Panel finds that Respondent has no rights or legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). See Tercent Inc. v. Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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”); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have
rights or legitimate interests in a domain name when the respondent is not
known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
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.”).
Respondent has
not used the <testpreview.com> domain name, which is confusingly
similar to Complainant’s TESTPREPREVIEW.COM mark, since Respondent registered
the domain name almost eight months ago. Such passive holding of a domain name
that is confusingly similar to Complainant’s mark evidences 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 the respondent had not used the domain name because “[i]t
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 the respondent made no
use of the domain name in question, and there were no other indications that
the respondent could have registered and used the domain name in question for
any non-infringing purpose); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that Respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <testpreview.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
March 15, 2005
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