Michael Evans and Chord Consulting Inc. d/b/a XAG v. Philipp Dreyer
Claim Number: FA1508001633946
Complainant is Michael Evans and Chord Consulting Inc. d/b/a XAG (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is Philipp Dreyer (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xag.com>, registered with Dynadot, LLC.
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 Forum electronically on August 19, 2015; the Forum received payment on August 19, 2015.
On August 19, 2015, Dynadot, LLC confirmed by e-mail to the Forum that the <xag.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 August 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2015 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@xag.com. Also on August 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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:
1. Policy ¶ 4(a)(i) - Complainant has common law rights in the XAG mark through dating back to 2009. Respondent’s <xag.com> is identical to the XAG mark because it contains the entire mark and is altered by only the addition of the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii) - Respondent is not commonly known by the <xag.com> domain name, as the listed Registrant is fictitious. Respondent lacks rights and legitimate interests in the <xag.com> domain name because it obtained the domain name through theft and because the domain name resolves to an inactive website.
3. Policy ¶ 4(a)(iii) - Respondent registered and uses the <xag.com> domain name in bad faith because it obtained the domain name through theft.
B. Respondent:
1. Respondent has failed to submit a formal Response.
1. Respondent’s <xag.com> domain name is confusingly similar to Complainant’s XAG mark.
2. Respondent does not have any rights or legitimate interests in the <xag.com> domain name.
3. Respondent registered or used the <xag.com> domain name in bad faith.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Michael Evans and Chord Consulting Inc. Complainants argue that they should be treated as a single entity because Michael Evans is the principal member of Chord Consulting, Inc.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them all as a single entity in this proceeding. Throughout this decision the Complainants will be collectively referred to as “Complainant.”
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 does not allege to have registered its XAG mark with any registration organization. However, past panels have found that Policy ¶ 4(a)(i) does not require registration if a Complainant can demonstrate having common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
While Complainant does not directly allege that it has common law rights in the XAG mark, Complainant has provided documentation that the Panel considers relevant to decide if Complainant has common law rights in the XAG mark. In order to establish common law rights, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning can include having previously owned a domain name identical to the mark, the degree of advertising and promotion related to the mark, and continuous use. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); see also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)). Complainant has provided evidence of previously owning the domain name in dispute, <xag.com>, in Exhibit A. Complainant has provided evidence of use in business related documents and in obtaining insurance in Exhibits D, E and C. Complainant has also provided evidence of its use of the mark in Exhibits F and G. In addition, Complainant has provided documentation of having a trade name registered in the State of Washington, in Exhibit B. While past panels have held that a trade name does not establish rights, on its own, a combination of a trade name and secondary meaning may suffice to show rights under Policy ¶ 4(a)(i). See Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”); but see Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (finding that the complainant's use of a trade name, without any showing of secondary meaning associated with the name, was an insufficient demonstration that the complainant had rights under the Policy). The Panel finds that Complainant’s evidence is sufficient to establish secondary meaning, and the Panel grants Complainant common law rights in the XAG mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <xag.com> is identical to the XAG mark because it contains the entire mark and is altered by only the addition of the gTLD “.com.” Past panels have found domain names identical to marks under identical circumstances. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel finds that Respondent’s <xag.com> domain name is identical to Complainant’s XAG mark under Policy ¶ 4(a)(i).
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.”).
Complainant alleges that Respondent is not commonly known by the <xag.com> domain name, as the listed Registrant, “Philipp Dreyer,” is allegedly fictitious. Complainant has provided evidence of correspondence with the business located at the address listed in the WHOIS information, in Exhibit J, in which the business denied ownership of the domain name. Further, Complainant asserts that the listed telephone number has too many digits to be a valid Seattle phone number. Past panels have found discrepancies between WHOIS information and domain names sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). As such, the Panel finds that Respondent is not commonly known by the <xag.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent lacks rights or legitimate interests in the <xag.com> domain name under Policy ¶ 4(a)(ii) because it was originally registered by Complainant and Respondent acquired it through theft. Complainant has provided timestamped WHOIS information, in Exhibit I, to show that the domain’s registrant was changed in March, 2015. Complainant asserts that this change came about by Respondent’s having compromised Complainant’s administrative e-mail address in order to authorize a change of registration. Panels have found that in situations exactly as Complainant purports to have occurred, respondents have failed to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(a)(i) and Policy ¶ 4(a)(iii). See John Dilks v. Privacy Administrator, FA1506001623023 (Nat. Arb. Forum July 10, 2015) “Complainant was formerly the registrant and owner of the disputed domain name, but Respondent illegally hijacked the domain name. This clearly is not (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use.”). The Panel is convinced by Complainant’s allegations, and the Panel finds that Respondent lacks rights or legitimate interests in the <xag.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent fails to use the <xag.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive holding. While Complainant has not provided documentation of this use, the Panel notes that the <xag.com> domain name does appear to resolve to an inactive website. Past panels have found that a failure to use a disputed domain name is sufficient to show a failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel finds such use here, and the Panel finds that Respondent fails to use the <xag.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
While Complainant has not made any allegations related to bad faith registration or use which are specifically enumerated under Policy ¶ 4(b), past panels have found that the Policy is illustrative, rather than exhaustive and that it is appropriate to look to the totality of circumstances in evaluating bad faith. 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 Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant alleges that it previously owned the registration for the <xag.com> domain name, and that Respondent only acquired the domain name through theft by compromising Complainant’s administrative e-mail address in order to authorize a registration transfer. While past panels have not seen many instances of similar domain name theft, they have found that there is a likelihood of bad faith when a complainant previously owned a domain name and no longer does, unless there is evidence to suggest a lack of bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”). Therefore, given Respondent’s failure to respond, the Panel finds that Respondent registered and uses the <xag.com> domain name in bad faith pursuant to 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 <xag.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 30, 2015
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