Michael Miller v. J. Eric Arterburn c/o Soda Sunglasses
Claim Number: FA0611000832822
Complainant is Michael Miller (“Complainant”), represented by Benjamin
L. Blaugrund, 14800 Gold Hill Road, Boulder, CO 80302. Respondent is J. Eric Arterburn c/o Soda
Sunglasses (“Respondent”), 246
The domain name at issue is <sodasunglasses.com>, registered with Names4Ever.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2006.
On November 16, 2006, Names4Ever confirmed by e-mail to the National Arbitration Forum that the <sodasunglasses.com> domain name is registered with Names4Ever and that Respondent is the current registrant of the name. Names4Ever has verified that Respondent is bound by the Names4Ever 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 November 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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@sodasunglasses.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 <sodasunglasses.com> domain name is identical to Complainant’s SODA SUNGLASSES mark.
2. Respondent does not have any rights or legitimate interests in the <sodasunglasses.com> domain name.
3. Respondent registered and used the <sodasunglasses.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Michael Miller, sells sunglasses under the SODA SUNGLASSES mark. Since 2002, Complainant has spent over $300,000 marketing its products that bear the SODA SUNGLASSES mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SODA SUNGLASSES mark (Reg. No. 3,013,800 issued November 8, 2005).
Respondent registered the <sodasunglasses.com> domain name on Complainant’s behalf on August 9, 2002. Complainant provided Respondent with Complainant’s credit card information in order to register the disputed domain name in 2002 and again when the disputed domain name registration came up for renewal. In August 2006, the business relationship between Complainant and Respondent ended, but Respondent refused to relinquish control over the disputed domain name. Complainant did not find out until this time that Respondent had registered the <sodasunglasses.com> domain name under Respondent’s name rather than under Complainant’s name. Respondent subsequently took down Complainant’s website and redirected the <sodasunglasses.com> domain name to a website selling handbags. A few days prior to the commencement of this proceeding, Respondent disabled the content at the disputed domain name and all that appears now is a blank screen.
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.
Although Complainant has registered the SODA SUNGLASSES mark
with the USPTO, Respondent registered the disputed domain name in 2002, three
years before the USPTO issued the trademark registration. Nevertheless, the Panel holds that ownership
of a valid trademark registration is not necessary for Complainant to
demonstrate its rights in the mark under Policy ¶ 4(a)(i),
if Complainant can establish common law rights in the mark. See
Complainant submits
evidence that it has been continuously using the SODA SUNGLASSES mark since
2002 in connection with its line of sunglasses and related products. For purposes of satisfying Policy ¶ 4(a)(i), the Panel finds that the mark has acquired secondary
meaning in association with Complainant’s business and as a result, Complainant
has established common law rights in the SODA SUNGLASSES mark. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum
June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark
acquired secondary meaning among local consumers sufficient to establish common
law rights where the complainant had been continuously and extensively
promoting a real estate development under the mark for several years); 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).
The Panel finds the <sodasunglasses.com> domain
name to be identical to Complainant’s domain name because the disputed domain
name contains Complainant’s entire SODA SUNGLASSES mark and merely eliminates
the space between terms and adds the generic top-level domain “.com,” neither
of which are relevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and
legitimate interests in the <sodasunglasses.com>
domain name. Complainant must first make
a prima facie case in support of its allegations, and the burden then
shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere
assertion by the complainant that the respondent has no right or legitimate
interest is sufficient to shift the burden of proof to the respondent to
demonstrate that such a right or legitimate interest does exist); 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 answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <sodasunglasses.com> domain
name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also 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). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
While the WHOIS information lists the registrant of the <sodasunglasses.com>
domain name as “J. Eric Arterburn c/o Soda
Sunglasses,” the evidence in the record indicates that Respondent
registered the disputed domain name on behalf of Complainant’s business under
the SODA SUNGLASSES mark and not because Respondent is commonly known by the
disputed domain name. Accordingly, the
Panel finds that Respondent is not commonly known by the <sodasunglasses.com>
domain name under Policy ¶ 4(c)(ii). See Bluegreen Corp. v. eGo, FA
128793 (Nat. Arb. Forum December 16, 2002) (finding that the respondent was not
commonly known by the disputed domain names where it maintained the domain name
registrations on the complainant’s behalf and then appropriated the disputed
domain names for itself, without permission from the complainant); see also 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”).
Since its business relationship with Complainant ended, Respondent has refused to relinquish control of the <sodasunglasses.com> domain name, taking down Complainant’s website and redirecting Internet users to a website selling handbags unrelated to Complainant. Currently, this disputed domain name resolves to a blank screen. Redirecting Internet users to either an unrelated website or a blank screen does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has used the <sodasunglasses.com>
domain name, which includes Complainant’s SODA SUNGLASSES mark, to redirect
Internet users seeking information on Complainant’s sunglasses to a website
selling handbags unrelated to the SODA SUNGLASSES mark. In Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002), the respondent registered the
<bigkmart.com> domain name and was using it to operate a website
featuring links to various content unrelated to the complainant. The Panel inferred that Respondent made a
profit from the amount of Internet traffic it diverted to other websites, and
that therefore, Respondent was “commercially benefiting from the likelihood of
confusion it has created through the use of Complainant’s mark” in violation of
Policy ¶ 4(b)(iv).
Moreover, because Complainant asked Respondent to register
the <sodasunglasses.com> domain name in good faith on
Complainant’s behalf and Respondent subsequently refused to relinquish control
of the disputed domain name once their business relationship ended, the Panel
finds that Respondent had actual knowledge of Complainant’s SODA SUNGLASSES
mark. Respondent also took advantage of
its business relationship with Complainant by registering the disputed domain
name on its own behalf and failing to give Complainant notice. Respondent’s actions unmistakably provide
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v.
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 <sodasunglasses.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 29, 2006
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