Contempo Ceramic Tile Corp. v. David Murphy d/b/a UtahHost.com
Claim Number: FA0608000786706
Complainant is Contempo Ceramic Tile Corp. (“Complainant”), represented by Andrew J. Thomas, of Contempo Ceramic Tile Corp., 3732 S. 300 W., Salt Lake City, UT 84115. Respondent is David Murphy d/b/a UtahHost.com (“Respondent”), 912 W. Cannon Oaks Pl., Salt Lake City, UT 84104.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <contempotile.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2006.
On August 30, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <contempotile.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 September 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 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@contempotile.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <contempotile.com> domain name is identical to Complainant’s CONTEMPO TILE mark.
2. Respondent does not have any rights or legitimate interests in the <contempotile.com> domain name.
3. Respondent registered and used the <contempotile.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
For over 28 years, Complainant, Contempo Ceramic Tile Corp., has continuously used the CONTEMPO TILE mark in connection with its wholesale tile distribution business. Complainant displays its mark on its business cards and in print advertisements. Complainant is the previous registrant of the <contempotile.com> domain name and maintains its official website at the contested domain name.
Complainant had employed Respondent to register the disputed domain name on Complainant’s behalf in 1999, and Respondent registered the <contempotile.com> domain name with Complainant’s information on March 2, 1999. At some point in time, however, Respondent changed the registration information to list itself as the registrant of the <contempotile.com> domain name. While the disputed domain name still resolves to Complainant’s website, Complainant has no control over the content and encountered difficulties maintaining its website after Respondent failed to renew its hosting agreement. Complainant claims that it has been unable to contact Respondent regarding the change in registration information.
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.
For purposes of establishing rights pursuant to Policy ¶ 4(a)(i), Complainant does not need to own a valid trademark registration for the CONTEMPO TILE mark. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority 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”).
Through continuous use of the CONTEMPO TILE mark for 28 years in association with its wholesale tile distribution business, the Panel finds that Complainant’s CONTEMPO TILE mark has acquired secondary meaning sufficient for it to establish common law rights in the mark under Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); 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).
The <contempotile.com> domain name differs from Complainant’s CONTEMPO TILE mark only in the elimination of the space between terms and the addition of the generic top-level domain “.com.” These alterations do not sufficiently distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel determines that the <contempotile.com> domain name is identical to the mark. See 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); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also 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”).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show 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 failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the respondent’s failure to produce requested
documentation supports a finding for the complainant); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “David Murphy d/b/a UtahHost.com” after
initially registering the <contempotile.com> domain name under
Complainant’s name. Accordingly, the
Panel finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum December 16,
2002) (finding that the respondent was not commonly known by the disputed
domain names where it maintained the domain name registrations on the
complainant’s behalf and then appropriated the disputed domain names for
itself, without permission from the complainant); 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").
Despite changing the registration information to reflect its ownership of the <contempotile.com> domain name, Respondent still displays Complainant’s website. Complainant no longer has any control over the content at the disputed domain name even though Respondent has not altered the website. In Anbex Inc. v. WEB-Common Technologies Grp., FA 780236 (Nat. Arb. Forum Sept. 19, 2006), the panel found that the respondent had no rights or legitimate interests under either Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where the respondent hijacked the complainant’s domain name and merely displayed the complainant’s website. The panel found that the respondent was attempting to pass itself off as the complainant and offer the complainant’s products for sale. Id. In this case, Respondent is also attempting to pass itself off as Complainant by maintaining Complainant’s website at the disputed domain name but changing the registration information. As a result, Respondent is not using the <contempotile.com> domain name in connection with 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). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel holds that, based on the totality of the circumstances, Respondent’s registration and use of the <contempotile.com> domain name is indicative of bad faith registration and use under Policy ¶ 4(a)(iii), even though Respondent’s conduct does not expressly fall within any of the factors listed in Policy ¶ 4(b). See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Because Complainant asked Respondent to register the <contempotile.com> domain name in good faith on Complainant’s behalf and Respondent subsequently changed the registration information to reflect itself as the registrant, the Panel finds that Respondent had actual knowledge of Complainant’s CONTEMPO TILE mark. Respondent took advantage of its business relationship with Complainant by re-registering the disputed domain name on its own behalf and failing to give Complainant notice of this change. Respondent’s actions unmistakably provide evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration and had even contacted the complainant about entering into a business partnership); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Moreover, in 8X Entm’t, Inc. v. EXC Int’l AG, WIPO D2005-1126 (Dec. 28, 2005), the respondent hijacked the complainant’s <8x.com> domain name but continued redirecting Internet users to the complainant’s website. The panel held that the respondent’s acts constituted bad faith registration and use. Id. The panel in Alexey Mezenin v. Baselmans, FA 664060 (Nat. Arb. Forum May 8, 2006), also found bad faith registration and use where the respondent hijacked the complainant’s <musicsonglyrics.com> domain name. The facts in this case are almost indistinguishable from these previous cases. Therefore, the Panel finds that Respondent’s hijacking of Complainant’s <contempotile.com> domain name was in bad faith, especially after Complainant relied on Respondent to register the disputed domain name on Complainant’s behalf and keep it in Complainant’s name.
The Panel finds that Complainant has satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <contempotile.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 20, 2006
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