Nous Defions, LLC v. james pechi / Squarespace
Claim Number: FA1603001666199
Complainant is Nous Defions, LLC (“Complainant”), represented by Ryan D. Ricks of SNELL & WILMER L.L.P, Arizona, United States. Respondent is james pechi / Squarespace (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arsenaldemocracy.com>, registered with Tucows Domains Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2016; the Forum received payment on March 17, 2016.
On March 18, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <arsenaldemocracy.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2016 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@arsenaldemocracy.com. Also on March 21, 2016, 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 April 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant uses the ARSENAL DEMOCRACY mark in connection with its business in providing rifles and other firearm-related products. Complainant registered the ARSENAL DEMOCRACY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,698,186, first use January 4, 2013, filed December 17, 2013, registered March 10, 2015), which establishes rights in the mark.
Complainant has common law rights in the ARSENAL DEMOCRACY mark due to the secondary meaning that has been established. Respondent’s <arsenaldemocracy.com> domain name is identical to the ARSENAL DEMOCRACY mark as it incorporates the mark in its entirety while eliminating the spacing between words and adding the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <arsenaldemocracy.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <arsenaldemocracy.com> domain name because the domain completely incorporates Complainant’s mark, and because Respondent does not operate a business which would support a finding of rights.
Respondent is using the <arsenaldemocracy.com> domain name in bad faith. Respondent has engaged in a fraudulent scheme to take customers’ paid orders and abscond with the money without fulfilling the orders. This fraud is under investigation by the office of the Florida Attorney General. Further, Respondent had actual or constructive notice of the ARSENAL DEMOCRACY mark and Complainant’s rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the <arsenaldemocracy.com> mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name in anticipation of Complainant acquiring rights in the ARSENAL DEMOCRACY mark.
Respondent used the domain name to pose as Complainant so that it might defraud numerous internet customers by taking orders and payments for goods which Respondent never intended to deliver.
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(f), 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 at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the ARSENAL DEMOCRACY mark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant’s rights under the Policy exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s domain name contains Complainant entire trademark less its space, followed by the top-level domain name “.com.” The trivial differences between the <arsenaldemocracy.com> domain name and Complainant’s ARSENAL DEMOCRACY trademark are immaterial for the purposes of the Policy. Therefore, the Panel finds that Respondent’s at-issue domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for <arsenaldemocracy.com> lists “james pechi/Squarespace” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <arsenaldemocracy.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See 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).
Respondent used the domain name to pose as Complainant so that it might defraud numerous internet customers by taking orders and payments for goods which Respondent knew it would never deliver. Simply impersonating Complainant would be sufficient to discount Respondent’s use of the domain name as either a bona fide offering of goods, or a legitimate non-commercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). A fortiori, using the domain name to egregiously bilk Internet users, as did Respondent, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at-issue domain name was registered and used in bad faith. As discussed below, multiple Policy ¶ 4(b) bad faith circumstances as well as non-Policy ¶ 4(b) circumstances are present from which the Panel may conclude, pursuant to Policy ¶ 4(a)(iii), that Respondent acted in bad faith regarding the at-issue domain name.
As a threshold consideration regarding Policy ¶ 4(a)(iii) bad faith, the Panel notes that the at-issue domain name was registered prior to Complainant’s registration of the ARSENAL DEMOCRACY mark. Demonstrating bad faith under the Policy almost universally requires first finding that the complainant had trademark rights in its mark prior to the at-issue domain name’s registration. This “rule” recognizes that if such were not the case, the registrant/respondent could not have contemplated the complainant's non-existent rights at the time it registered its domain name and thus could not have acted in bad faith.
Complainant suggests that it acquired common-law trademark rights in ARSENAL DEMOCRACY. But the record is devoid of evidence of how and when such common-law rights might have sprung forth. Complainant’s first use of the ARSENAL DEMOCRACY mark in commerce (per the mark’s USPTO registration) predates the at-issue domain name’s registration by a number of years, but does not establish when the mark may have acquired secondary meaning. However, as discussed below, the exact timing of the genesis of Complainant’s trademark rights is not critical to the Panel’s bad faith analysis.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions expresses an applicable noted exception to the prior rights doctrine.
In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark.
http://www.wipo.int/amc/en/domains/search/overview2.0/ (October 25, 2012) (emphasis added)
In the instant case, “it is clear [to the Panel] that the aim of the registration was to take advantage of the confusion between the domain name and any potential Complainant rights.” That Respondent’s domain name is identical to Complainant’s allusive mark, and that Respondent used the trademark identical domain name as a vehicle of fraud, urges a finding that Respondent registered <arsenaldemocracy.com> to exploit the mark’s anticipated goodwill. Respondent’s belief that Complainant possessed valuable rights in ARSENAL DEMOCRACY clearly motivated the domain name’s registration. Given the foregoing, the fact that the <arsenaldemocracy.com> domain name may have been registered before Complainant had actual trademark rights in ARSENAL DEMOCRACY does not preclude the Panel finding bad faith under Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests Respondent, via a website addressed by the at-issue domain name, took numerous paid orders for firearms and related goods from the consuming public, but never fulfilled an order. Respondent simply absconded with the customers’ funds. Indeed, Respondent’s purported conduct is under investigation with the office of the Florida Attorney General. Such use of the at-issue domain name demonstrates bad faith pursuant to Policy ¶¶ 4(b)(iv) and 4(a)(iii). See, e.g., Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Additionally, Respondent registered the <arsenaldemocracy.com> domain name believing that Complainant had trademark rights in the ARSENAL DEMOCRACY mark. Respondent’s prior knowledge is evident from Respondent’s registration of a domain name that is identical to Complainant’s trademark and from Respondent’s scheme to employ the domain name to pass itself off as Complainant in furtherance of fraud. It is thus clear that Respondent registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <arsenaldemocracy.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arsenaldemocracy.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 17, 2016
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