OSTER & MARTIN, LLC v. Sam Beatty and Automation Concepts Company
Claim Number: FA0512000612804
Complainant is OSTER & MARTIN, LLC (“Complainant”), represented by Kathleen A. McCoy, 717 Seventeenth Street, Suite 1475, Denver, CO 80202. Respondent is Sam Beatty and Automation Concepts Company (“Respondent”), 1250 Bergen Parkway, B100, Evergreen, CO 80439-6200.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ostermartin.com>, registered with Network Solutions, Inc.
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.
Tyrus R. Atkinson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2005.
On December 23, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <ostermartin.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 18, 2006 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@ostermartin.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, 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." 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. Respondent’s <ostermartin.com> domain name is confusingly similar to Complainant’s OSTER & MARTIN, LLC mark.
2. Respondent does not have any rights or legitimate interests in the <ostermartin.com> domain name.
3. Respondent registered and used the <ostermartin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, OSTER & MARTIN, LLC, is a law firm which is
registered as a Colorado limited liability company as of September 19,
2003. Complainant’s name is based on
the surnames of its two owners, Jonathan C. Oster and John D. Martin. Complainant has operated as a law firm since
November 1, 2003.
Complainant uses its OSTER & MARTIN, LLC mark for its
telephone listing, letterhead, business correspondence, advertisements and for
a variety of other items and services.
Complainant has used its mark to represent over eighty-five clients in
state and federal courts in Colorado and other jurisdictions.
In 2003, Complainant engaged Respondent to provide a variety of Internet-related services, including registering the <ostermartin.com> domain name. The domain name was supposed to be registered in the name of Complainant, and Complainant paid $135 to Respondent for the three-year domain name registration.
However, Respondent registered the <ostermartin.com> domain name in Respondent’s own name on October 16, 2003. Complainant used the domain name for its e-mail system and did not realize the domain name was registered under Respondent’s name until some time later when Complainant decided to change Internet service providers. Complainant asked Respondent to transfer the domain name registration, but Respondent refused to do so.
As of the filing of the Complaint, Respondent had not used the disputed domain name. However, Complainant believes that it is being deprived of a substantial business opportunity, because websites are an important way for a law firm to communicate with and advertise to potential and existing clients.
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 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.”).
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.
Complainant claims common law rights in the OSTER & MARTIN, LLC mark. Complainant has operated its law firm under the mark since Novembeer 1, 2003 and has used the mark on all of its letterhead, correspondence, advertisements, and legal proceedings. In addition, Complainant has represented numerous clients under the mark. Therefore, the Panel finds that Complainant has established secondary meaning in the mark for the purpose of demonstrating common law rights in the mark pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The <ostermartin.com> domain name is confusingly similar to Complainant’s OSTER & MARTIN, LLC mark. The domain name incorporates the prominent portions of Complainant’s mark and simply omits the ampersand, a comma, and the letters “LLC.” These changes do not sufficiently distinguish the domain name from the mark to defeat Complainant’s claim of confusing similarity under Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts, and the WHOIS information confirms, that Respondent is known by “Sam Beatty” and “Automation Concepts Company.” Respondent has not come forward with any evidence rebutting Complainant’s contentions, which leads the Panel to conclude that Respondent has failed to establish that it is commonly known by the <ostermartin.com> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent registered the <ostermartin.com> domain name on behalf of Complainant, one of its clients. However, Complainant contends that although Respondent was instructed to register the domain name in Complainant’s name, Respondent instead registered the domain name under its own name. Furthermore, since registering the domain name on October 16, 2003, Respondent has not made any use of the domain name, and Respondent refuses to transfer the domain name registration to Complainant. The Panel finds that Respondent is passively holding the disputed domain name to prevent Complainant from using the domain name and from changing Internet service providers. Respondent’s non-use of the domain name for more than two years does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent was aware that Complainant expected Respondent to register the <ostermartin.com> domain name in the name of Complainant. However, Respondent registered the domain name in its own name, although Complainant fully paid Respondent for the domain name registration. Furthermore, Respondent has refused to transfer the domain name registration to Complainant so that Complainant cannot receive Internet-related services from another provider, and Respondent has not made any use of the domain name. All of these circumstances, coupled with Respondent passive holding of the domain name, are evidence of Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See 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.”); 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 concludes that Complainant has 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 <ostermartin.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: February 2, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum