Jason Claiborne v. Naylor Networks
Claim
Number: FA0508000535347
Complainant is Jason Claiborne (“Complainant”), 13901
Midway Road, Suite 102, Dallas, TX, 75244.
Respondent is Naylor Networks (“Respondent”),
1040 Grant Road, Suite 155-151, Mountain View, CA, 94040 US.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <jase.com>, registered with Dotster.
The
undersigned certifies that she acted independently and impartially and that to the
best of her knowledge she has no known conflict in serving as Panelist in this
proceeding. Hon. Carolyn Marks Johnson
sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically August
8, 2005; the National Arbitration Forum received a hard copy of the Complaint August
17, 2005.
On
August 8, 2005, Dotster confirmed by e-mail to the National Arbitration Forum
that the <jase.com> domain name is registered with Dotster and
that Respondent is the current registrant of the name. Dotster verified that Respondent is bound by
the Dotster registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
August 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 12, 2005, by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@jase.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 16, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." 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.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <jase.com>, is identical to Complainant’s JASE mark.
2. Respondent has no rights to or legitimate
interests in the <jase.com> domain name.
3. Respondent registered and used the <jase.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Jason Claiborne, is the owner of a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the JASE mark (Reg. No. 2,737,936 issued July 15, 2003, filed March 19,
2001). Complainant’s trademark
registration indicates that the date of first use for the JASE mark was May 1,
2001. However, Complainant also holds a
Nevada trademark registration showing that the first use of the mark was
November 19, 1989.
Complainant’s Jase World Water Foundation (the “Foundation) is one of
several humanitarian water projects started by Complainant. The Foundation accepts donations, which are
used to bottle and distribute clean water to humanitarian agencies throughout
the world for consumption by dying children in underdeveloped countries.
Complainant’s Foundation operates a website at the <jasewaterfoundation.com>
domain name.
Respondent registered the <jase.com> domain name April 10, 1999. Nothing suggests Respondent’s use of the
domain name or whether Respondent has ever used the domain name for any
purpose. Complainant offered to purchase
the domain name registration from Respondent for $200, but Respondent did not
accept the offer. Complainant then
offered $1,000, but Respondent again refused to sell the domain name
registration.
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."
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 will draw such inferences as
the Panel 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.”).
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
asserts rights in the JASE mark based on its registration of the mark with the
USPTO. It is well established under the
Policy that a complainant’s registration of a mark with a federal authority
establishes a prima facie case of the complainant’s rights. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The <jase.com>
domain name differs from Complainant’s JASE mark only with the addition of the
generic top-level domain (“gTLD”) “.com.”
Adding a gTLD is irrelevant in determining similarity under the Policy
and, therefore, does not function as a distinguishing feature. The Panel finds that the disputed domain
name is identical to Complainant’s mark under Policy ¶ 4(a)(iii). See Blue Sky Software Corp. v.
Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
.").
Accordingly, the
Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under the
Policy, Complainant has the initial burden of proving that Respondent lacks
rights and legitimate interests in the disputed domain name. Once Complainant asserts that Respondent
does not have rights or legitimate interests in the disputed domain name, the
burden shifts to Respondent to prove that it does have rights or legitimate
interests in the disputed domain name.
In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate interests
with respect to the domain name, it is incumbent on the respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its
initial burden by establishing a prima facie case, the Panel will now
determine whether Respondent has met its burden to establish rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent
failed to file a response in this case and, therefore, has not provided any
affirmative evidence that would establish that Respondent has rights to or
legitimate interests in the <jase.com> domain name. Therefore, the Panel finds that Respondent
failed to meet its burden to show rights or legitimate interests in the
disputed domain name. See Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of
a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertions in this
regard.”); see also Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum Dec.
30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190
(Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set
forth…as true.”).
Consequently,
the Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent demonstrated bad faith.
The record permits an inference that Respondent registered but has not
used the disputed domain name and that Respondent has held the name passively
for sometime without using it. Further,
Respondent has not offered the Panel evidence of intent to use or plans to use
the domain name in the future. The Panel infers that Respondent has not made
any use of the disputed domain name since registering the domain name more than
six years ago and that Respondent has no future plans to use it. The Panel finds that passive holding under
the Policy is evidence of bad faith registration and use under Policy ¶
4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances,
for inactivity by the Respondent to amount to the domain name being used in bad
faith.”); see also DCI S.A. v.
Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
The Panel finds
that Complainant satisfied 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 <jase.com> domain name be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 30, 2005
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