Dancing Ferret Concerts, Inc. v. Janet
and Charlie Bray
Claim
Number: FA0503000435070
Complainant is Dancing Ferret Concerts, Inc. (“Complainant”),
526 S. 5th St., Philadelphia, PA 19147. Respondent is Janet and
Charlie Bray (“Respondent”), 612 S 13th Street, Nederland, TX
77627.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dancingferret.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically March 7,
2005; the National Arbitration Forum received a hard copy of the Complaint March
9, 2005.
On
March 7, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the National Arbitration Forum that the domain name <dancingferret.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com verified that Respondent
is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
March 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 29, 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@dancingferret.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
April 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <dancingferret.com>, is identical to our DANCING
FERRET family of marks, which includes DANCING FERRET CONCERTS and DANCING
FERRET DISCS.
2. Respondent has no rights to or legitimate
interests in the <dancingferret.com> domain name.
3. Respondent registered and used the <dancingferret.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
registered the DANCING FERRET CONCERTS service mark (Reg. No. 2,439,969) with
the United States Patent and Trademark Office (“PTO”) on April 3, 2001, for use
in connection with “concerts (entertainment, namely live music).” Complainant also registered the DANCING
FERRET DISCS trademark (Reg. No. 2,742,044) with the PTO on July 29, 2003, for
use in connection with “sound recordings featuring music.”
Respondent
registered the <dancingferret.com> domain name June 18, 2004. The domain name currently resolves to a
placeholder site, and states, “dancingferret.com is under construction.” In addition, Complainant asserted that when
Internet users type in the URL, www.dancingferret.com, it “attempts to install
a virus, specifically the Trojan horse ‘TR/StartPage.ES.’”
Complainant sent
a letter to Respondent February 14, 2005, in which Complainant offered to
reimburse Respondent for the cost of the disputed domain name
registration. In turn, Respondent
responded with its own letter, which Complainant has submitted, which requested
payment in the amount of $5,000 for the disputed domain name registration.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
As the result of
Complainant’s registration of its DANCING FERRET CONCERTS and DANCING FERRET
DISCS marks with the United States Patent and Trademark Office, Complainant
established a presumption of valid rights in the marks. Complainant made this showing by extrinsic
proof in this proceeding. In the absence of a response, the registration of a
mark suffices to establish rights in a mark pursuant to Policy Paragraph
4(a)(i). Therefore, since Complainant
showed rights and Respondent failed to respond to the Complaint, the Panel
finds Complainant established rights in the DANCING FERRET CONCERTS and DANCING
FERRET DISCS marks. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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.”).
Panels have held
that a domain name that comprises a third-party mark, but simply omits a word
from the third-party mark, is confusingly similar to the mark under Policy
Paragraph 4(a)(i). For example, in WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001), a panel found the
<westjets.com> domain name confusingly similar to the WEST JET AIR CENTER
mark. Additionally, in Hammond Suddards Edge v. Westwood Guardian
Ltd., D2000-1235 (WIPO Nov. 6, 2000), a panel found the domain name,
<hammondsuddards.net>, to be confusingly similar to the HAMMOND SUDDARDS
EDGE mark, despite omitting the term “edge” from the mark. See also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb.
Forum Jan. 16, 2001) (finding that the domain name
<wellness-international.com> is confusingly similar to Complainant’s
“Wellness International Network”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to Complainant’s ASPREY & GARRARD
and MISS ASPREY marks).
In the instant
case, the <dancingferret.com> domain name contains substantial
portions of Complainant’s DANCING FERRET CONCERTS and DANCING FERRET DISCS
marks. The fact that the domain name
has omitted the terms “concerts” or “discs,” is insignificant under the
holdings of the above cited cases.
Therefore, consistent with prior decisions under the Policy, the Panel
finds that the disputed domain name is confusingly similar to Complainant’s
marks pursuant to Policy Paragraph 4(a)(i).
Therefore,
Complainant established Policy ¶ 4(a)(i).
Complainant
asserted that Respondent lacks rights to and legitimate interests in the <dancingferret.com>
domain name. As the result, the
burden falls on Respondent to advance concrete evidence to rebut Complainant’s
assertion under Policy Paragraph 4(a)(ii) because this information is “uniquely
within the knowledge and control of the respondent.” G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002). Respondent failed to
respond and therefore, Complainant’s assertion is left unchallenged. The Panel construes this omission, as prior
panels have done, as an implicit admission that Respondent lacks rights and
legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond).
Furthermore,
pursuant to UDRP Rule 14(b), in the case of a Respondent failing to respond to
a complaint, a panel may “draw such inferences there from as it considers
appropriate.” This principle has been
developed by panels to mean that reasonable allegations set forth in a
complaint may be accepted as true, unless clearly contradicted by the
evidence. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); 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).
The Panel finds that
Respondent is passively holding the disputed domain name because the domain name resolves to a placeholder
site that merely states, “dancingferret.com is under construction.” Respondent has not asserted any preparations
to use the domain name. Passive holding
of a domain name does not evidence rights or legitimate interests in the domain
name. More specifically, passive
holding is not evidence that Respondent is using the domain name in connection
with a bona fide offering of goods or services, or a legitimate
noncommercial or fair use pursuant to Policy Paragraphs 4(c)(i) and (iii). See Broadcom
Corp. v. Wirth, FA 102713 (Nat. Arb. Forum
Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to
display an “under construction” page did not constitute a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); 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); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept.
18, 2000) (finding that prior to any notice of the dispute, Respondent had not
used the domain names in connection with any type of bona fide offering
of goods and services); see also Am. Online, Inc. v. Kloszewski, FA
204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain
name for over six months is evidence that Respondent lacks rights and
legitimate interests in the domain name.”).
Moreover, nothing in the
WHOIS registration information or in the record indicates that Respondent has
been commonly known by the <dancingferret.com> domain name
pursuant to Policy Paragraph 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Therefore,
Complainant established Policy ¶ 4(a)(ii).
As
stated above, Respondent is passively holding the domain name. Prior panels have found that when the
circumstances indicate that a domain name is identical or confusingly similar
to a third-party mark, when the domain name is being passively held, and when
respondent fails to file a response, a panel may justifiably accept as true a
complainant’s assertions that the respondent registered and used the domain
name in bad faith. Consistent with this
precedent, the Panel finds that Respondent’s passive holding of the disputed
domain name is evidence of bad faith registration and use pursuant to Policy
Paragraph 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); 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).
Bad faith
registration and use may also be established under Policy Paragraph 4(b)(i) if
the circumstances indicate that a respondent registered the domain name
primarily to sell the domain name registration to the complainant, who is the
owner of the trademark or service mark, or to a competitor of the complainant,
for valuable consideration in excess of documented out-of-pocket costs directly
related to the domain name.
The
circumstances in this case include the following facts: 1) Respondent
registered a domain name that is confusingly similar to Complainant’s mark; 2)
Respondent requested payment from Complainant in the amount of $5,000 for the
domain name registration; 3) Respondent has failed to respond to Complainant’s
allegations; 4) Respondent is passively holding the domain name, and 5)
Complainant has asserted that the URL, www.dancingferret.com, “attempts to
install a virus, specifically the Trojan horse ‘TR/StartPage.ES.’” Taken in combination, these facts comprise
circumstances that permit the Panel to accept Complainant’s contention that
Respondent registered and used the disputed domain name in violation of Policy
Paragraph 4(b)(i). See Tech.
Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding
bad faith where Respondent offered the domain names for sale for $2,000); see
also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad
faith when it requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name); see
also Neiman Marcus Group, Inc. v. Achievement Tec,
Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding respondent’s
offer to sell the domain name for $2000 sufficient to find that respondent “acquired the disputed domain name primarily for the purpose of
selling the domain name registration to Complainant for valuable consideration
in excess of Respondent's out-of-pocket costs, which is evidence of bad faith
registration and use under Policy ¶ 4(b)(i)”).
Therefore, Complainant
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dancingferret.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 15, 2005
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