Sturn Wagner Lombardo & Company, LLC
v. Single Point Services
Claim
Number: FA0504000467808
Complainant is Sturn Wagner Lombardo & Company, LLC (“Complainant”),
represented by Andrew Lombardo, 201 Defense Highway, Suite 260,
Annapolis, MD 21401. Respondent is Single Point Services (“Respondent”),
626C Admiral Dr., Suite 306, Annapolis, MD 21401-2948.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <swlco.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 2, 2005.
On
April 27, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <swlco.com> is registered
with Network Solutions, Inc. and that Respondent is the current registrant of
the name. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, 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
May 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 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@swlco.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
June 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 <swlco.com>
domain name is identical to Complainant’s SWLCO mark.
2. Respondent does not have any rights or
legitimate interests in the <swlco.com> domain name.
3. Respondent registered and used the <swlco.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Sturn Wagner Lombardo & Company, LLC., a Maryland Corporation provides many
services including assistance with mergers and acquisitions, e-commerce, estate
gift and retirement planning, financial statements and other business and
financial related services. Complainant
uses the <swlco.com> domain name, which is an acronym representing
the last names of the partners in the firm.
Complainant uses the domain name to advertise services, recruit new
employees and all of Complainant’s e-mail is addressed to <swlco.com>. Complainant has used the domain name since
July 2002. Complainant paid for and
registered the <swlco.com> domain name with Network Solutions,
LLC, in July 2002.
Respondent was
once an employee of Complainant. At
that time Respondent was instructed to host a website for Complainant. Respondent was an authorized technical
contact but not an administrative contact for the <swlco.com> domain
name. In 2003 Complainant severed its
relationship with Respondent and ran a WHOIS search, which indicated that
Respondent was the administrative contact and technical contact for the <swlco.com>
domain name. Respondent is
demanding $2,150 to give Complainant control of the <swlco.com> domain
name.
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.
“In the absence
of a response, it is appropriate to accept as true all allegations of the
Complaint.” Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000); 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).
Complainant has
asserted rights in the SWLCO mark, which is used in commerce to identify and
distinguish Complainant’s services from those offered by others. Complainant’s assertion is entirely
consistent with the evidence in the record.
Therefore, the Panel finds that, in the absence of a response,
Complainant has established common law rights in the SWLCO mark pursuant to
Policy ¶ 4(a)(i). Even though
Complainant has not registered the mark with a governmental authority, panels
have held that trademark rights may exist independently of government
registration of a mark. See McCarthy
on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (stating
that 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 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 Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law”); 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).
Respondent’s <swlco.com>
domain name is identical to Complainant’s SWLCO mark. The mere addition of the
generic top-level domain “.com” is insufficient to negate the confusing
similarity between Respondent’s domain name and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (“the addition of the generic top-level domain
(gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is
required of domain name registrants”); 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).
Complainant has
asserted that Respondent lacks rights and legitimate interests in the disputed
domain name. Respondent has the burden
pursuant to Policy ¶ 4(a)(ii) to advance concrete evidence to rebut
Complainant’s assertion 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 has failed to rebut
Complainant’s assertion. Therefore,
Complainant’s assertion stands and the Panel finds 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).
Former employees
who register domain names identical to a former employer’s trademark generally
do not acquire rights or legitimate interests in those domain names, especially
when operating as an agent of the employer.
See Savino Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2001) (finding that a former employee does not
acquire rights or legitimate interests in a domain name identical to the former
employer's trademark); see also Vinidex
Pty. Ltd. v. Auinger, AF-0402
(eResolution Oct. 18, 2000) (As a
former employee, Respondent knew or should have known Complainant’s mark was in
use as an integral part of the corporate name and as a trademark and that
Respondent understood the legitimate interests and rights of Complainant and,
by contrast, its own lack of interest or right. This is sufficient for Complainant to establish that Respondent
had no rights or interests in the domain name).
Complainant has
asserted that Respondent was a former employee and that Respondent registered
the disputed domain name on Complainant’s behalf while employed. In the absence of a response, the Panel
accepts this assertion as true.
Therefore, consistent with prior cases under the Policy, the Panel finds
that Respondent is not using the disputed domain name in connection with a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
pursuant to Policy ¶¶ 4(c)(i) and (iii).
Moreover, there
is nothing in the record to indicate that Respondent is commonly known by the
disputed domain name pursuant to Policy ¶ 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 whether Policy ¶ 4(c)(ii) applies); 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.
In the instant
case, Respondent was an actual employee of Complainant charged with hosting a
website on Complainant’s behalf.
Respondent was authorized to be Complainant’s technical contact, but
instead, Respondent registered the domain name listing it as the technical
contact and the administrative contact.
Subsequently, Respondent is demanding $2,150 to transfer the disputed
domain name back to Complainant. This
registration and use is evidence of bad faith pursuant to Policy ¶
4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad
faith under Policy paragraph 4(b)(i) where Respondent stated in communication
with Complainant, “if you are interested in buying this domain name, we would
be ready to sell it for $10,000”); see
also Dollar Rent A Car Sys.
Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that
Respondent demonstrated bad faith by registering the domain name with the
intent to transfer it to Complainant for $3,000, an amount in excess of its
out-of-pocket costs).
Moreover, Respondent
registered the disputed domain name with actual knowledge of Complainant’s
trademark rights. The registration of a
domain name that is identical to another’s mark, despite actual knowledge of
the trademark owner’s rights is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when the respondent
reasonably should have been aware of the complainant’s trademarks, actually or
constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse"); see
also Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000)
(finding that because Respondent was hired by Complainant to help design and
register Complainant's websites, Respondent had intimate knowledge of
Complainant's business and use of its TEENFLO mark). Therefore, Respondent's
registration of <teenflo.com> was in bad faith. See also Arab Bank for Inv. & Foreign
Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith
registration and use where Respondent was employed by Complainant's business,
was fully aware of the name of her employer, and made no use of the infringing
domain name).
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 <swlco.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
June 17, 2005
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