Greg Close and Westernaerial.com v. Jason Falk
Claim Number: FA0603000669202
Complainants are Greg Close and Westernaerial.com (collectively, “Complainant”), PO Box 13434, Portland, OR 97213. Respondent is Jason Falk (“Respondent”), 127 S 500 E, Salt Lake City, UT 84102.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <westernaerial.com>, registered with Go Daddy Software, 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 J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <westernaerial.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 2006 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@westernaerial.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. 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 <westernaerial.com> domain name is identical to Complainant’s WESTERN AERIAL mark.
2. Respondent does not have any rights or legitimate interests in the <westernaerial.com> domain name.
3. Respondent registered and used the <westernaerial.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants are listed in the Complaint as Greg Close and Westernaerial.com. However, the Complaint appears to have been prepared by a person without any substantial legal background, and the body of the Complaint implies that the Complainants are Greg Close and Western Aerial. Western Aerial is a band based in Portland, Oregon that performs in the western portion of the U.S. The Complainant attached a number of exhibits showing the business activities of the band, including an invoice for Western Aerial in the name of Greg Close, which is sufficient evidence that Greg Close is a representative of the band.
Complainant registered the <westernaerial.com> domain name on November 20, 2002 in connection with promoting the band Western Aerial’s music and business. Complainant’s website under the <westernaerial.com> domain name averaged 700 unique visits per month until Complainant unintentionally lost the registration of the domain name on January 1, 2006. Complainant has used the <westernaerial.com> domain name extensively on the band’s albums and at its shows since 2002. While Complainant has registered several other domain names in connection with the band, such as <westernaerial.net>, <westernaerial.biz>, <westernaerial.us> and <westernaerial.org>, Complainant most frequently uses the <westernaerial.com> domain name in its promotional material.
Respondent currently holds the registration of the <westernaerial.com> domain name. Internet users who access this domain name are taken to a commercial website featuring links to products for sale, which are unrelated 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts that the WESTERN AERIAL mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the mark in connection with its business. Complainant has operated under the WESTERN AERIAL mark since at least 2002 in connection with its concert promotion and album sales, and has maintained an Internet presence using the <westernaerial.com> domain name from 2002 to 2006. Complainant also maintains an internet presence at several other domain names incorporating the WESTERN AERIAL mark. The Panel determines that Complainant has established secondary meaning in the WESTERN AERIAL mark for the purpose of demonstrating common law rights in the mark pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); 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).
Respondent’s <westernaerial.com> domain name is identical to Complainant’s WESTERN AERIAL mark, in that it incorporates the mark in its entirety, and adds the top-level domain “.com.” Because all Internet domain names require top-level domains, the addition of a top-level domain is irrelevant to the analysis of whether the disputed domain name is identical to Complainant’s mark. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <westernaerial.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question”).
Respondent’s <westernaerial.com> domain name is
identical to Complainant’s WESTERN AERIAL mark. Internet users who access this domain name are directed to a
website listing items for sale, which are unrelated to Complainant. The Panel presumes Respondent intends to
profit from the sale of these items.
Respondent’s use of an infringing domain name for its own commercial
gain is not 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
There is no evidence on record that Respondent is commonly known by the <westernaerial.com> domain name or has any association with Complainant. The WHOIS database lists Respondent as “Jason Falk”. Therefore, the Panel infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See 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 Tercent Inc. v. Lee 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <westernaerial.com> domain
name, which is identical to Complainant’s WESTERN AERIAL mark, to present
Internet users with links to products for sale. The Panel presumes that Respondent intends to profit from the
sale of these items. Such use of the
disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services.”); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
Complainant registered the <westernaerial.com> domain name in 2002. Complainant asserts that it lost the registration of the disputed domain name due to an error on the part of its registrar. Respondent has not answered the Complaint with any evidence supporting its legitimate use of the disputed domain name. The Panel finds that Respondent took advantage of Complainant’s inadvertent loss of its domain name, which constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“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 Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
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 <westernaerial.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 15, 2006
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