Brooks Peterson v. Mr. Batasan ug
Katilingban
Claim
Number: FA0505000476974
Complainant is Brooks Peterson (“Complainant”), 1602
Juno Ave, Saint Paul, MN 55116.
Respondent is Mr. Batasan ug
Katilingban (“Respondent”), Dumaguete City Ecological Park, Candau-ay,
Dumagute City, Negros Oriental, 6200 PH.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <acrosscultures.com>, registered with Easyspace
Ltd.
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 May
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 16, 2005.
On
May 17, 2005, Easyspace Ltd. confirmed by e-mail to the National Arbitration
Forum that the domain name <acrosscultures.com> is registered with
Easyspace Ltd. and that Respondent is the current registrant of the name. Easyspace
Ltd. has verified that Respondent is bound by the Easyspace Ltd. 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 23, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 13, 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@acrosscultures.com by e-mail. Complainant submitted timely supplemental
information showing evidence of correspondence to the Respondent.
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 17, 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 <acrosscultures.com>
domain name is identical to Complainant’s ACROSS CULTURES mark.
2. Respondent does not have any rights or
legitimate interests in the <acrosscultures.com> domain name.
3. Respondent registered and used the <acrosscultures.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Brooks Peterson, registered the ACROSS CULTURES mark to sell educational
services, materials, and workshops in the field of multiculturalism for
individuals and groups engaged in global business and activities. Complainant first used the ACROSS CULTURES
mark in commerce in 1989 and the mark has since gained renown.
Complainant has
registered the ACROSS CULTURES mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,450,733, filing date November 22, 1999, issued May
15, 2001). Complainant also registered the ACROSS CULTURES stylized mark with
the USPTO (Reg. No. 2,249,464, filing date March 26, 1998, issued June 1,
1999).
Respondent
registered the <acrosscultures.com> domain name on July 16, 1997.
Respondent first used the disputed domain name as a personal e-mail address and
then as a billboard page listing their employer’s office address and phone
numbers. Thereafter Respondent began
using the disputed domain name to host a website offering services that compete
with Complainant.
Respondent has
communicated with Complainant regarding the use of the disputed domain name,
attempted to do business with Complainant, and offered to sell the domain name
registration to Complainant.
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
asserts rights in the ACROSS CULTURES mark through registration of the mark
with the United States Patent and Trademark Office (“USPTO”) and common law
rights in the mark through use in commerce since 1989. Due to Respondent’s failure to contest
Complainant’s assertions, the Panel accepts as true Complainant’s assertions
that it has had common law rights in the mark since 1989.
Although
Respondent registered the <acrosscultures.com> domain name prior to
Complainant’s registration of its ACROSS CULTURES mark with the USPTO, for the
purposes of Policy ¶ 4(a)(i), Complainant has established common law rights in
the mark, dating back to 1989. See SeekAm. Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant’s trademark or service mark be registered by a government authority
or agency for such rights to exist);
see also 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 Fishtech v. Rossiter, FA 92976 (Nat.
Arb. Forum Mar. 10, 2000) (finding that the complainant had common law rights
in the mark FISHTECH, which it had used since 1982).
Respondent’s <acrosscultures.com>
domain name is identical to Complainant’s ACROSS CULTURES mark. The mere addition of the generic top-level
domain “.com” is not enough to distinguish the domain name from the mark
pursuant to Policy ¶ 4(a)(i). See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”); see also Kioti Tractor Div. v. O’Bryan Implement
Sales,
FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical
to Complainant's KIOTI mark because adding a top-level domain name is
irrelevant for purposes of Policy ¶ 4(a)(i).”)
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <acrosscultures.com> domain
name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where complainant has
asserted that respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
complainant asserts that respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that, under certain circumstances, the mere assertion by
complainant that respondent has no right or legitimate interest is sufficient
to shift the burden of proof to respondent to demonstrate that such a right or
legitimate interest does exist); see also 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 interest in the domain names).
Respondent is
using the identical <acrosscultures.com> domain name to operate a
website that purports to compete with the services offered by Complainant. Such competing use is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide offering of
goods or services; see also Computerized Sec. Sys., Inc. v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s
appropriation of the complainant’s mark to market products that compete with
the complainant’s goods does not constitute a bona fide offering of goods and
services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb.
Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate
interests in a domain name that used Complainant’s mark to redirect Internet
users to a competitor’s website).
Respondent has
offered no evidence and no proof in the record suggests that Respondent is
commonly known by the <acrosscultures.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the disputed 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 interest 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 Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights
or legitimate interests in domain names because it is not commonly known by
complainant’s marks and respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
Furthermore,
Respondent has offered to sell the domain name registration to Complainant,
which is evidence of no rights or legitimate interests. See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb.
Forum Apr. 8, 2003) (finding evidence that Respondent lacked rights and
legitimate interests in the disputed domain name after it sent several
correspondences offering to sell its rights in the domain name in exchange for
1,500 shares of Complainant’s stock to Complainant); see also Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain name registration to Complainant,
the rightful holder of the RED CROSS mark.”); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name with the
intention of selling its rights).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <acrosscultures.com> domain name, which is identical to
Complainant’s ACROSS CULTURES mark, to operate a website that features
competing services. Such use
constitutes disruption and is evidence that Respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Moreover,
Respondent offered to sell the <acrosscultures.com> domain name
registration to Complainant, which evidences bad faith pursuant to Policy ¶
4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the
domain names for sale); see also Little
Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding Respondent's offer to sell the domain name at issue to Complainant was
evidence of bad faith); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Furthermore, Respondent registered the <acrosscultures.com> domain name with actual or constructive
knowledge of Complainant’s rights in the ACROSS CULTURES mark due to
Complainant’s registration of the mark with the USPTO. Moreover, the Panel infers that Respondent
registered the disputed domain name with actual knowledge of Complainant’s
rights in the mark due to the connection between the content on Respondent’s
website and Complainant’s business. Registration of a domain name featuring
another’s mark despite actual or constructive knowledge of the mark holder’s
rights is evidence of 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) (“[T]he 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.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the complainant’s mark when it
registered the subject 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 <acrosscultures.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
June 30, 2005
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