Ultra 2000 Manufacturing International, Inc., a Nevada Corporation v. Shane O'Brart
Claim Number: FA1310001526736
Complainant is Ultra 2000 Manufacturing International, Inc., a Nevada Corporation (“Complainant”), represented by Al Mohajerian of Mohajerian Law, California, USA. Respondent is Shane O'Brart (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <glarefactory.com> and <glareuk.com>, registered with 1&1 Internet AG.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2013; the National Arbitration Forum received payment on October 25, 2013.
On October 29, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <glarefactory.com> and <glareuk.com> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@glarefactory.com, postmaster@glareuk.com. Also on October 31, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Respondent does not have any recognizable trademark rights in the terms GLARE, “glareuk,” “glarefactory,” or “glare factory.”
ii. Respondent has intentionally registered and used the confusingly similar domain names <glarefactory.com> and <glareuk.com> to attract customers seeking out <glare.com> and/or to purchase legitimate products sold under Complainant’s registered trademarks.
iii. Respondent is exploiting its position as a former reseller of Complainant’s goods by using Complainant’s order forms and logos to make unauthorized sales of goods.
i. Respondent’s behavior has prevented Complainant from acquiring these domain names.
ii. The subject domain names are currently being used in bad faith by Respondent in an attempt to divert consumers to Respondent to buy items allegedly manufacturer by Complainant.
B. Respondent
Respondent did not submit a Response in this case.
1. Complainant is a United States company that uses its GLARE mark for surface polish for automobiles, aircraft, and watercraft.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GLARE mark (Reg. No. 2,711,023, registered April 29, 2003).
3. Respondent registered the <glareuk.com> domain name on July 20, 2007 and the <glarefactory.com> domain name on January 7, 2010.
4. The domain names are being used by Respondent to attract customers seeking out <glare.com> and/or to purchase legitimate products sold under Complainant’s registered trademarks.
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."
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it uses its GLARE mark for surface polish for automobiles, aircraft, and watercraft. Complainant asserts that it is the owner of trademark registrations with the USPTO for the GLARE mark (Reg. No. 2,711,023, registered April 29, 2003). See Annex C. The Panel finds that although Respondent appears to reside within the United Kingdom, Policy ¶4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the GLARE mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain names are identical or confusingly similar to any of Complainant’s GLARE trademark. Complainant contends that Respondent’s <glarefactory.com> and <glareuk.com> domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel notes that Respondent adds the generic term “factory” to Complainant’s GLARE mark in its <glarefactory.com> domain name. The Panel holds that Respondent’s inclusion of a generic term does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The Panel observes that Respondent adds the geographic descriptor “uk” to Complainant’s GLARE mark in its <glareuk.com> domain name. The Panel determines that Respondent’s addition of a geographic term is inconsequential to a Policy ¶ 4(a)(i) analysis. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Lastly, the Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to its <glarefactory.com> and <glareuk.com> domain names. The Panel holds that Respondent’s addition of a gTLD is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel concludes that Respondent’s <glarefactory.com> and <glareuk.com> domain names are confusingly similar to Complainant’s GLARE mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen in the case of each of the disputed domain names to take Complainant’s GLARE trademark and to use it in its domain names, making only the addition of the generic phrase “factory” in one case and the geographic indicator “ uk” in the other, thus implying that the domain name in each case is an official domain name of Complainant and that it will lead to an official website of Complainant dealing with the making of Complainant’s goods in a factory in one case and with its United Kingdom operations in the other, neither of which is true;
(b) Respondent has then used the disputed domain names to attract customers seeking out <glare.com> and/or to purchase legitimate products sold under Complainant’s registered trademarks;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent does not have any recognizable trademark rights in the terms GLARE, “glareuk,” “glarefactory,” or “glare factory.” Complainant asserts that it has not granted any permission of any kind for Respondent to use the subject domain name. Complainant further argues that although Respondent formerly had an agreement to sell Complainant’s goods, Complainant contends that said agreement is no longer in force and Respondent retains no right to use the GLARE mark in commerce. The Panel observes that the WHOIS information identifies “Shane O'Brart” as the registrant of the <glarefactory.com> and <glareuk.com> domain names. See Annex A. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. As there is no other information to substantiate Respondent’s identity or business names, the Panel finds that Respondent is not commonly known by the <glarefactory.com> and <glareuk.com> domain names under Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent has intentionally registered and used the confusingly similar domain names <glarefactory.com> and <glareuk.com> to attract customers seeking out <glare.com> and/or to purchase legitimate products sold under Complainant’s registered trademarks. Although there is no direct evidence of this intention, the Panel draws the inference that Respondent is using the <glarefactory.com> and <glareuk.com> domain names to sell counterfeit versions of Complainant’s products, showing that Respondent is not using the disputed domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy,
Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent’s behavior has prevented Complainant from acquiring these domain names. As the Panel finds that Respondent’s registration of the <glarefactory.com> and <glareuk.com> domain names prevents Complainant from registering the domain names, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii) due to the fact that Respondent registered not one, but two domain names that infringe upon the GLARE mark. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Secondly, Complainant asserts that Respondent’s <glarefactory.com> and <glareuk.com> domain names are currently being used in bad faith by Respondent in an attempt to divert consumers to Respondent to buy items allegedly manufacturer by Complainant. Although there is no direct evidence of Respondent’s use of the disputed domain names, the Panel determines Respondent is using the <glarefactory.com> and <glareuk.com> domain names to divert users to Respondent for which Respondent presumably commercially gains. The Panel agrees that Respondent’s use of the disputed domain names to sell counterfeit items of Complainant evidences bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <glarefactory.com> and <glareuk.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 28, 2013
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