Wernher Pramschufer v. Sean McKeon
Claim Number: FA1404001555088
Complainant is Wernher Pramschufer (“Complainant”), Australia. Respondent is Sean McKeon (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wernherpramschufer.net>, registered with Gandi SAS.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2014; the National Arbitration Forum received payment on April 21, 2014.
On April 23, 2014, Gandi SAS confirmed by e-mail to the National Arbitration Forum that the <wernherpramschufer.net> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 April 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2014 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@wernherpramschufer.net. Also on April 24, 2014, 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 May 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <wernherpramschufer.net> domain name, the domain name at issue, is confusingly similar to Complainant’s WERNHER PRAMSCHUFER mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding. Although the Respondent corresponded with the Forum as quoted below, the Panel does not regard this communication to be a Response within the terms of the Policy and, accordingly, the case is decided if it were a default proceeding.
“Thanks for your help [case coordinator name] - unfirtunately there is absolutely no way
I have the time or inclination to go through your response procedure in
order to fend of such a spurious and purile complaint!
In a nutshell, our initial registration and usage of the domain
pre-dates the complainant's trademark application by a number of years.
Thank you again for your attention.
Sean”
C. Additional Submissions by Order of Panel
The Panel ordered the Complainant to submit additional material to clarify his claim of a common law trademark in his personal name and mark. The Panel received and considered such material. Respondent was invited to reply and rebut Complainant’s Additional Submission but did not do so.
Complainant, Wernher Pramschufer, is an internationally recognized music and film producer and composer engaged in the production and composition of music across the world. Complainant owns a trademark for the WERNHER PRAMSCHUFER mark with Australia’s Intellectual Property Office (Reg. No. 1,578,989, registered September 6, 2013) and has common law rights in the WERNER PRAMSCHUFER mark. Respondent’s <wernherpramschufer.net> domain name is identical to Complainant’s WERNHER PRAMSCHUFER mark. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been known by the disputed domain name. Respondent has posted links to a series of malicious and misleading websites using the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Respondent’s use of the disputed domain name disrupts Complainant’s business.
Respondent registered the <wernherpramschufer.net> domain name on June 27, 2013.
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.”).
Complainant has submitted evidence that he is an internationally recognized music and film producer and composer engaged in the production and composition of music across the world. For many years prior to Respondent’s registration of the domain name at issue, Complainant publicly used his mark in commerce in the production and composition of music and achieved such a state of notoriety that it can be said that it had achieved a secondary meaning in the mind of the public. Further, Complainant has an official website, <wernherpramschufer.com>, which has been active for three years. In Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), the panel found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. Accordingly, the Panel finds that Complainant has common law trademark rights in the WERNHER PRAMSCHUFER mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant owns a trademark registration for the WERNHER PRAMSCHUFER mark with Australia’s Intellectual Property Office (Reg. No. 1,578,989, registered September 6, 2013). Even though this registration date is after registration of the domain name at issue, it is further evidence of Complainant’s claim to the mark and that he uses it in commerce. The Panel finds that Complainant has continuously used its WERNER PRAMSCHUFER mark in commerce without disruption, and in a manner so distinct as to give this mark secondary meaning in the eyes of the consuming public and that Complainant has common law rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <wernherpramschufer.net> domain name is identical to Complainant’s WERNHER PRAMSCHUFER mark. Respondent uses the mark in its entirety and only removes the spaces and adds the generic top-level domain (“gTLD”) “.net.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found <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.” Accordingly, the Panel holds that Respondent’s <wernherpramschufer.net> domain name is identical to Complainant’s WERNHER PRAMSCHUFER mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).
It appears to the Panel that Respondent has never been known by the <wernherpramschufer.net> domain name. Complainant argues that his name is unique and extremely rare and does not appear to be found anywhere else. The WHOIS information names “Sean McKeon” as the registrant of the disputed domain name. Respondent’s own e-mail correspondence to the Forum in respect to this proceeding also uses the name “Sean McKeon.” Therefore, the Panel concludes that Respondent is not commonly known by the <wernherpramschufer.net> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent has posted a series of malicious and misleading links on the website resolving at <wernherpramschufer.net> inferring that Complainant is a “con man.” For example, Respondent’s disputed domain name leads to a website entitled “GRATE MUSIC & THE MONKEY BUSINESS” which includes considerable content concerning Complainant and his business practices. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel held “Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Consequently, the Panel finds that Respondent is not using the <wernherpramschufer.net> domain name 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.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the <wernherpramschufer.net> domain name disrupts Complainant’s business. Respondent has posted slanderous text and otherwise uses the domain name to criticize Complainant’s business. The Panel finds that Respondent’s use of the <wernherpramschufer.net> domain name disrupts Complainant’s business, demonstrating bad faith use and registration under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wernherpramschufer.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 27, 2014
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