Robert H. Wadsworth Associates, Inc. v. Fundforce Ltd.
Claim Number: FA0607000743680
Complainant is Robert H. Wadsworth Associates, Inc. (“Complainant”), represented by Robert H. Wadsworth, 6732 E. Fanfol Drive, Paradise Valley, AZ 85253. Respondent is Fundforce Ltd. (“Respondent”), represented by Eugene Gourevitch, of Virage Consulting Ltd.420 Lexington Building, Suite 300, New York, NY 10170.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <fundforce.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2006.
On July 5, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <fundforce.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 July 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 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@fundforce.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <fundforce.com> domain name is identical to Complainant’s FUNDFORCE mark.
2. Respondent does not have any rights or legitimate interests in the <fundforce.com> domain name.
3. Respondent registered and used the <fundforce.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, FundForce Ltd., holds the registration for the FUNDFORCE service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,628,511 issued Oct. 1, 2002). In connection with its mutual fund management services, Complainant registered the <fundforce.com> domain name in 2002, at the latest. Complainant mistakenly let the disputed domain name expire sometime in 2006.
On June 6, 2006, Complainant discovered that Respondent had obtained the registration for the <fundforce.com> domain name. On that day, Complainant sent an email to the contact listed in the WHOIS database for the disputed domain name to notify the Respondent of its registered FUNDFORCE service mark and request the transfer of the domain name back to Complainant. Later that day, Respondent replied to Complainant stating that it intended to use the disputed domain name as a listing site for offshore mutual funds. The disputed domain name currently resolves to an “under construction” website.
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 has established rights in the FUNDFORCE service
mark through registration with the USPTO.
See 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.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <fundforce.com>
domain name contains Complainant’s FUNDFORCE mark in its entirety and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds the disputed domain name that contains nothing but
Complainant’s unmodified mark and adds a gTLD to be identical to Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant bears the initial burden of proof to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once a prima facie showing is established, the burden shifts to Respondent to affirmatively prove that it does have rights or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See 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”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to submit a Response in this proceeding creates a presumption that it lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Nonetheless, the Panel will analyze the record to determine if Respondent has rights or legitimate interests in the disputed domain name.
Because Respondent has failed to come forward with evidence to demonstrate that it has rights or legitimate interest in the disputed domain name, the Panel makes a reasonable inference that Respondent opportunistically registered the domain name after Complainant mistakenly allowed the domain name to expire. The Panel finds that Respondent’s opportunistic registration of the <fundforce.com> domain name suggests that Respondent lacks rights and legitimate interests in the disputed domain name. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”); see also Clark v. HiNet, Inc., FA 405057 (Nat. Arb. Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse).
Additionally, the WHOIS registry lists “Fundforce Ltd.” as the registrant of the disputed domain name; however, there is no affirmative evidence in the record to show that Respondent is commonly known by the <fundforce.com> domain name or any variation thereof. The Panel must therefore conclude that Respondent is not commonly known by the disputed domain name due to the lack of affirmative evidence in the record to suggest otherwise. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered the disputed domain name in bad faith. Because Complainant was the former registration holder of the <fundforce.com> domain name before it inadvertently allowed the domain name to expire and Respondent has failed to come forward with any evidence to suggest otherwise, the Panel finds that Respondent’s registration and use of the disputed domain name evidences bad faith pursuant to Policy ¶ 4(a)(iii). The Panel would like to emphasize that every domain name that is registered shortly after its inadvertent expiration is not necessarily done so in bad faith; rather, this finding is limited to proceedings where the Respondent fails to come forward with evidence to suggest that it has not acted in bad faith in registering and using the disputed domain name. 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.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fundforce.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 17, 2006
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