Ronald D. Casteel v. Domain Administrator
Claim Number: FA0606000736501
Complainant is Ronald D. Casteel (“Complainant”), 4123 Eve Rd, Simi Valley, CA 93063. Respondent is Domain Administrator (“Respondent”), P.O. Box 533 WB, West Bay, KY 000000.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ballerstatus.com>, registered with Parava Networks Inc d/b/a Registrateya.com Naame.com.
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 June 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 21, 2006.
On June 26, 2006, Parava Networks Inc d/b/a Registrateya.com Naame.com confirmed by e-mail to the National Arbitration Forum that the <ballerstatus.com> domain name is registered with Parava Networks Inc d/b/a Registrateya.com Naame.com and that Respondent is the current registrant of the name. Parava Networks Inc d/b/a Registrateya.com Naame.com has verified that Respondent is bound by the Parava Networks Inc d/b/a Registrateya.com Naame.com 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 June 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 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@ballerstatus.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 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 <ballerstatus.com> domain name is identical to Complainant’s BALLERSTATUS mark.
2. Respondent does not have any rights or legitimate interests in the <ballerstatus.com> domain name.
3. Respondent registered and used the <ballerstatus.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ronald D. Casteel, operates a website at the <ballerstatus.net> domain name that acts as a resource for up-to-date information relating to urban industries, hip-hop music, and other related subjects in the urban community. Complainant has used the BALLERSTATUS service mark since June 1, 2002 and has since registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,012,131 registered November 1, 2005; filed January 15, 2004).
Respondent registered the <ballerstatus.com> domain name on April 18, 2003. Respondent’s disputed domain name resolves to a website that features advertisements and links to various websites featuring the same or similar content as to the content featured in Complainant’s website.
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 rights in the BALLERSTATUS mark. While Complainant has registered the BALLERSTATUS mark with the USPTO, the registration was not filed until January 15, 2004, nine months after Respondent’s registration of the <ballerstatus.com> domain name. However, numerous panels have found that it is not necessary to have a government registration when attempting to establish rights in a trademark or service mark for purposes of Policy ¶ 4(a)(i). See SeekAmerica 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 British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant contends through its USPTO service mark registration that it has been using the BALLERSTATUS mark in commerce since June 1, 2002. In light of its ongoing and continuous use of the BALLERSTATUS mark, the Panel finds that it has established sufficient rights in the mark pursuant to Policy ¶ 4(a)(i). See 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 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).
Complainant contends that Respondent’s <ballerstatus.com> domain name is identical to Complainant’s BALLERSTATUS mark. In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found that the <pomellato.com> was identical to the complainant’s POMELLATO mark because the generic top-level domain (gTLD) “.com” was irrelevant to the determination. As a result, this Panel finds that Respondent’s <ballerstatus.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he 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 . . . .").
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 <ballerstatus.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). Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel chooses to analyze the evidence under the 4(c) elements.
Complainant contends that Respondent is using the <ballerstatus.com>
domain name to operate a website that features advertisements and links to
various websites offering the same or similar content in competition with
Complainant from which Respondent presumably receives referral fees. In TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found 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 or a
legitimate non-commercial or fair use.
As such, the Panel finds that Respondent has failed to use the <ballerstatus.com>
domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names).
Complainant further contends that Respondent is not commonly
known by the disputed domain name.
Without evidence showing that Respondent is either licensed to register
domain names featuring Complainant’s marks or commonly known by the <ballerstatus.com>
domain name, evidence that is uniquely within Respondent’s possession, the
Panel finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See 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); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the <ballerstatus.com> domain name amounts to bad faith under Policy ¶ 4(a)(iii). Respondent is using the disputed domain name to generate referral fees by diverting Internet users to various websites offering similar or competing products and services. Respondent’s use, therefore, is disrupting Complainant’s business for its own commercial gain and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually 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).
Furthermore, Respondent’s use of the disputed domain name is likely to cause confusion among Internet users as to Complainant’s sponsorship of or affiliation with the disputed domain name. The Panel finds that Respondent is capitalizing on this confusion for its own commercial gain in violation of Policy ¶ 4(b)(iv) and is evidence of bad faith registration and use. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”).
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 <ballerstatus.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 7, 2006
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