Badenoch & Clark (IP) Limited v. LaPorte Holdings c/o Admin
Claim Number: FA0603000670278
Complainant is Badenoch & Clark (IP) Limited (“Complainant”), represented by Mark J. Young, of Mark Young P.A., 12086 Fort Caroline Road, Unit 202, Jacksonville, FL 32225. Respondent is LaPorte Holdings c/o Admin (“Respondent”), 5482 Wilshire Blvd #1928, Los Angeles, CA 90036.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <badenochclark.com>, registered with Nameking.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2006.
On March 31, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <badenochclark.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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@badenochclark.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 Judge Ralph Yachnin 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 <badenochclark.com> domain name is confusingly similar to Complainant’s BADENOCH & CLARK mark.
2. Respondent does not have any rights or legitimate interests in the <badenochclark.com> domain name.
3. Respondent registered and used the <badenochclark.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Badenoch & Clark (IP) Limited, has used the BADENOCH & CLARK mark in connection with its business of providing employment, payroll, and related services since 1980. Complainant is incorporated in the United Kingdom and currently employs over 500 people and operates from eighteen offices in locations such as the U.K. and Luxembourg. Complainant has registered the BADENOCH & CLARK mark in the U.K. (Reg. No. 2,287,104 issued December 1, 2001) and has applied for registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 78,613,979 filed April 21, 2005). Complainant also maintains an Internet presence at the <badenochandclark.com> domain name, which it registered on November 8, 1996.
Respondent registered the <badenochclark.com> domain name on October 25, 2004. Internet users who access this domain name are directed to a generic search-engine website featuring links to other websites offering employment services in competition with 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 has established rights in the BADENOCH & CLARK mark, pursuant to Policy ¶ 4(a)(i), through registration of the mark with the United Kingdom trademark authority. Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <badenochclark.com> domain name incorporates the BADENOCH & CLARK mark without the ampersand and the spaces between the terms, and with the addition of the top-level domain “.com.” The removal of spaces and the addition of a top-level domain to Complainant’s mark do not negate the fact that Respondent’s <badenochclark.com> domain name is confusingly similar to Complainant’s BADENOCH & CLARK mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Similarly, because ampersands are not permissible characters in Internet domain names, the removal of the ampersand from Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it has rights or legitimate interests in the <badenochclark.com> domain name once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in it. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the 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 Complainant has presented a prima facie case, and Respondent has failed to respond to the Complaint, the Panel will consider whether the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent uses the <badenochclark.com> domain name, which is confusingly similar to Complainant’s BADENOCH & CLARK mark, to redirect Internet users to a website that features links to other websites that offer employment services in competition with Complainant. Such use of the <badenochclark.com> domain name to market Respondent’s services 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, 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) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The WHOIS database entry for the <badenochclark.com> domain name shows that Respondent registered this domain name under the names “Admin” and “LaPorte Holdings.” Complainant states that it has not licensed or otherwise authorized Respondent to use the BADENOCH & CLARK mark or to register the disputed domain name. Moreover, there is no evidence that Respondent has ever been commonly known by the <badenochclark.com> domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <badenochclark.com> domain
name, which is confusingly similar to Complainant’s BADENOCH & CLARK mark,
to present Internet users with links to websites offering services in
competition with Complainant. The Panel
infers that Respondent receives click-through fees for diverting Internet
traffic to these other websites. Use of
the disputed domain name for this purpose 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 Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably commercially
benefited from the misleading domain name by receiving ‘click-through-fees.’”)
Respondent’s domain name incorporates Complainant’s mark in its entirety, and Respondent’s website contains several links to websites offering services in direct competition with Complainant. Respondent’s use of Complainant’s mark to divert Internet users to Complainant’s competitors amounts to disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
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 <badenochclark.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 15, 2006
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