Timepieces International Inc. v. Juan C. Ubieto
Claim Number: FA1802001770730
Complainant is Timepieces International Inc. (“Complainant”), represented by Michael Rampton of Timepieces International Inc., Florida, USA. Respondent is Juan C. Ubieto (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <danielsteiger.com>, registered with DropCatch.com 643 LLC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on February 7, 2018; the Forum received payment on February 7, 2018.
On February 7, 2018, DropCatch.com 643 LLC confirmed by e-mail to the Forum that the <danielsteiger.com> domain name is registered with DropCatch.com 643 LLC and that Respondent is the current registrant of the name. DropCatch.com 643 LLC has verified that Respondent is bound by the DropCatch.com 643 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 February 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2018 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@danielsteiger.com. Also on February 14, 2018, 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 March 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 registered its DANIEL STEIGER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,108,079) on June 20, 2006 for use in connection with the sale of jewelry, watches and other accessories. Respondent’s <danielsteiger.com> domain name (the “Domain Name”) matches exactly with Complainant’s mark. In fact, Complainant previously owned the Domain Name and used it in connection with its business before allowing it to expire.
Respondent has made no use of, or demonstrable preparations to use, the Domain Name for any personal or commercial use for two years. Respondent is not commonly known by the Domain Name as it bears no relation to the Respondent’s legal name. Neither does the Domain Name bear any relation to Respondent’s business interests, as demonstrated by the fact of Complainant’s exclusive rights to the DANIEL STEIGER mark.
Respondent has offered the Domain Name for sale to Complainant for an amount in excess of Respondent’s out-of-pocket costs of registration.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 will decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 (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 Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant registered its DANIEL STEIGER mark with the USPTO (Reg. No. 3,108,079) on June 20, 2006. See Complaint Annex 4. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Further, Respondent’s Domain Name is exactly identical to Complainant’s DANIEL STEIGER mark, adding only the generic top-level domain (gTLD) “.com.” UDRP Panels have consistently held disputed domain names to be identical for the purposes of Policy ¶ 4(a)(i) when they incorporate a registered mark entirely with no other change beyond the addition of a gTLD. Marquette Golf Club v. Al Perkins, FA 1738263 (Forum Jul. 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly similar to the DANIEL STEIGER mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, and (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the resolving web site is not being used for any purpose whatever. These allegations are supported by competent evidence. According to the response given to the Forum by DropCatch.com 643 LLC, the registrar, Respondent, Juan C. Ubieto, is the current registrant of the name, and Mr. Ubieto confirms that by an email addressed to Complainant earlier this year. See, Complaint Annex 2. There is no evidence before the Panel suggesting that Respondent is commonly known by the Domain Name or any variation of it.
Additionally, according to the undisputed testimony of Complainant, the Domain Name resolves to a web site that is not set up—no use is being made of it. Failure to make active use of a confusingly similar domain name is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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)”). Respondent is not currently using the Domain Name to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence discussed above in connection with the rights and legitimate interests analysis to the effect that no active use is being made of the resolving web site after some two years is also evidence of bad faith registration and use. Respondent’s web site is inactive. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith), VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum December 13,2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
Also, Complainant argues Respondent’s registration and use of the Domain Name is in bad faith within the meaning of Policy ¶ 4(b)(i) because he offers to sell it to Complainant for some $250,000, an amount which Complainant says is in excess of Respondent’s out-of-pocket costs of registration. Offering a disputed domain name for sale for an amount in excess of a respondent’s out-of-pocket costs of registration can constitute a finding of bad faith per Policy ¶ 4(b)(i). George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). It is clear from the evidence that Respondent did offer to sell the Domain Name to Complainant for $250,000. See, Complaint Annexes 2, 3. While Complainant offered no evidence of the usual and customary expenses involved in registering a domain name, the Panel will take notice that those costs are typically far less than $250,000. Moreover, while the Panel recognizes that domain investing is a business commonly recognized as legitimate so long as there is no evidence of a respondent targeting a specific mark or brand name, it is clear from the fact that the Domain Name matches Complainant’s mark exactly that Respondent did target Complainant’s mark. There is literally no other person or entity that could have a lawful interest in acquiring this Domain Name, as Complainant has registered it with the USPTO as its own trademark.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danielsteiger.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: March 12, 2018
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