KW Automotive North America Inc., d/b/a Belltech Sport Trucks v. Globix Corporation
Claim Number: FA0703000937029
Complainant is KW Automotive North America Inc., d/b/a Belltech
Sport Trucks (“Complainant”), represented
by Henry Y. Chiu of the Law Firm of Kimble MacMichael & Upton, 5260 North Palm Avenue,
Suite 221, Fresno, CA 93704.
Respondent is Globix Corporation (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <belltech.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 13, 2007; the National Arbitration Forum received a hard copy of the Complaint March 16, 2007.
On March 14, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <belltech.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 2007, 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@belltech.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <belltech.com>, is identical to Complainant’s BELLTECH mark.
2. Respondent has no rights to or legitimate interests in the <belltech.com> domain name.
3. Respondent registered and used the <belltech.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, KW Automotive North America Inc., uses its BELLTECH mark in connection with land vehicle parts, including, for example, suspension parts, shocks, trailer hitches and front end alignment kits. Complainant began using the BELLTECH mark in November 1996 and filed for registration of the mark with the United States Patent and Trademark Office (“USPTO”) July 1, 1997 (Reg. No. 2,256,391 registered June 29, 1999).
Respondent registered the <belltech.com>
domain name November 24, 1995. The
disputed domain name does not currently resolve to a website with any
content. Instead, the disputed domain
name generates an error message stating that no website exists.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established with extrinsic evidence in this proceeding that it began using the BELLTECH mark in November of 1996 and that it holds a USPTO registration of the mark. The Panel finds that Complainant established rights in the BELLTECH mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).
The disputed domain name that Respondent registered, <belltech.com>, is identical to
Complainant’s mark. The disputed domain
name includes Complainant’s BELLTECH mark in its entirety without alteration or
addition. Inclusion of the generic top-level
domain “.com” in the domain name does not distinguish the disputed domain name
from Complainant’s mark as all domain names require a top-level domain. The Panel finds that the disputed domain name
is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also 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 Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant’s assertion that Respondent lacks such rights or legitimate interests in the <belltech.com> domain name establishes a prima facie case under the Policy. With the creation of a prima facie case the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to avail itself of the opportunity to submit a Response deprives the Panel of evidence or arguments to support any claim by Respondent that Respondent has rights to or legitimate interests in the domain name. Further, Respondent’s failure to file a Response permits the inference by the Panel that, absent other proof, Respondent has no such rights or legitimate interests in the disputed domain name. 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Nonetheless, the Panel examines the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c). The disputed domain name, <belltech.com>, currently does not resolve to any content and no evidence suggests demonstrable preparations for use of the site. In L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002), the panel found that the respondent lacked rights or legitimate interests where no evidence suggested demonstrable preparations for use of the disputed domain name, stating that “a Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.” Similarly, in Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) the panel found no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question.
Thus, the Panel finds that Respondent’s use of the <belltech.com> domain name is not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).
Further, no available evidence suggests that Respondent is commonly known by the <belltech.com> domain name. Respondent’s WHOIS information identifies Respondent as “Globix Corporation.” Complainant asserts that Respondent is not affiliated with Complainant and does not have authorization to reflect Complainant’s BELLTECH mark in a domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name and that Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and holding a domain name that contains Complainant’s protected mark. When determining bad faith, the Panel is not limited to the circumstances described in Policy ¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and use. The Panel looks to the totality of the circumstances and may take into account whether evidence shows any demonstrable preparations by Respondent to use the disputed domain name. In this case, nothing indicates that Respondent is using or planning to use the <belltech.com> domain name.
The Panel finds that Respondent’s
failure to demonstrate preparations to use the <belltech.com> domain name supports a finding of bad
faith holding of the domain name pursuant to Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Hewlett-Packard
Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (“Respondent’s
failure to submit an assertion of good faith intent to use the domain name, in
addition to the passive holding of the domain name, reveal that Respondent
registered and uses the domain name in bad faith.”).
This third prong that the Panel considers; however, is
two-part: Bad faith registration and bad faith use. A showing of both is required. The panel in Trek Bicycle
Corporation v. Image G/Ikonographics, FA 852695 (Nat. Arb. Forum Jan. 9, 2007) provides a detailed explanation
of the Policy’s conjunctive bad faith registration and use requirement:
The plain language of the Policy requires both bad-faith registration and bad-faith use of the Domain Name to meet the third element of the test. See Guildline Instruments Ltd. v. Anderson, D2006-0157 (WIPO Apr. 12, 2006) (explicitly requiring that the Respondent both registered and used the domain name in bad faith); e-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001) (“This case thus presents the relatively novel question of whether bad faith use alone, without bad faith registration, is sufficient to justify transfer . . . . because the Policy requires both bad faith use and bad faith registration, the Panel . . . must deny the Complaint.”).
Complainant claims that Respondent
registered the Domain Name in a bad faith attempt to trade off of the goodwill
of
At least two recent panels have found that if bad faith registration cannot be proven, the panel need not inquire into bad faith use. See The Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (“Both bad faith registration and bad faith use have to be proved or inferred.”); see also Think Serv., Inc. v. Carlos, D2005-1033 (WIPO Nov. 18, 2005) (finding that in order to prove bad faith under Policy ¶ 4(b), the respondent must have at least had the complainant’s mark in mind when registering the disputed domain name and not just ‘someone’s mark’).
Although this Panel has found (1) that Complainant has shown that it has rights to and legitimate interests in the mark contained within the disputed domain name, and (2) that Complainant established rights to and legitimate interests in the mark contained within the disputed domain name, and (3) that Respondent has acted in bad faith in passively holding the domain name that contains Complainant’s protected mark, the Panel is unable to find for Complainant on the second part of this third prong. In this case, the available evidence indicates that Respondent registered the <belltech.com> domain name November 24, 1995, almost a year before Complainant’s stated first use of the BELLTECH mark November 13, 1996. While the Panel notes that the filing documents show that the mark may have been used “in another form on or before April 30, 1988,” Complainant did not favor the Panel with other information about such use or the mark’s “other form” or whether or not the “other form” would have put the Respondent on notice of Complainant’s interests in the mark. Because the available evidence in the case shows that Respondent’s registration of the domain name preceded by one year the date of Complainant’s stated first use in commerce, no available evidence supports an inference of bad faith registration in this claim because the disputed domain name was registered a year before Complainant asserts that its first use of the BELLTECH mark began. The panel in It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb. 15, 2005), stated that "in the absence of any evidence of knowledge on the part of respondent of complainant, its mark or its services at the time respondent acquired the domain name, the panel finds complainant has failed to establish registration in bad faith." Similarly, in TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005), the panel found that because the respondent’s domain name registration predated the complainant’s trademark filing date, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name.” Based on these case precedents, the Panel finds that absent other proof Respondent could not have registered the disputed domain name in bad faith as required for a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant failed to satisfy Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 26, 2007
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