Suspensions, LLC v. The LBC
Group, Inc. d/b/a Creative Associates
Claim Number: FA0701000886217
PARTIES
Complainant is Suspensions, LLC (“Complainant”), represented by Amanda
A. Neidert, of Miles & Stockbridge,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <justsuspension.com> and <just-suspension.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
Hon. Nelson A. Diaz, Hon. Charles K. McCotter, Jr., and Hon. Paul A.
Dorf as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on January 9, 2007; the National
Arbitration Forum received a hard copy of the Complaint on January 10, 2007.
On January 10, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <justsuspension.com> and <just-suspension.com>
domain names are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
names. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 1, 2007 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@justsuspension.com and
postmaster@just-suspension.com by e-mail.
Respondent requested additional time to submit a Response, and this
request was granted on February 1, 2007, extending the date by which Respondent
could file a Response to February 21, 2007.
A timely Response was received on February
21, 2007. The Response was
deficient under ICANN Rule 5(a) as it was not received in hard copy. Notwithstanding Respondent’s failure to file a hard copy as required by
the ICANN rules, the Panel considered the Response
so that it can properly decide the claims on their merits. See Gaiam, Inc. v. Nielsen,
FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided
on the merits and not by default and because Complainant has not been
prejudiced in the presentation of its case by the late submission, Respondent’s
opposition documents are accepted as timely.”).
A timely Additional Submission was received from Complainant on
February 26, 2007. The Panel notes that
Respondent objected to the entry of this Additional Submission because it did
not contain the requisite “proof of service.”
Once again, in the interest of providing an appropriate decision on the
merits, and because there is no showing of prejudice to Respondent, the Panel
has considered Complainant’s Additional Submission. A second Additional Submission was received
from Complainant on March 9, 2007. This
second Additional Submission was neither timely nor allowed by the rules. Accordingly, the Panel has not considered
this second Additional Submission.
On March 13, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Nelson A. Diaz, Hon. Charles K.
McCotter, Jr., and Hon. Paul A. Dorf as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Complaint, Complainant asserts that it has common law rights in
the trademark and service mark JUST SUSPENSION.
Complainant asserts that this mark has been in continuous use in
commerce since the late 1980’s in association with the sale and distribution of
automobile parts. Complainant asserts
that it acquired the rights from Just Suspension, Inc. when it purchased that
company on March 24, 2005. Complainant
asserts that the use of the mark has been substantial and continuous since its
first use and that the name and mark JUST SUSPENSION has acquired substantial
recognition and goodwill. Finally,
Complainant filed for federal registration of the JUST SUSPENSION mark on
October 4, 2006.
Complainant asserts that its predecessor hired Respondent to establish
a website for its business, including requesting that Respondent register the
domain names <justsuspension.com>
and <just-suspension.com> for
Complainant. Complainant bolsters this
assertion with the affidavit of William Kanouse, who was President of Just
Suspension, Inc. at the relevant time.
Complainant asserts that, contrary to Mr. Kanouse’s instructions,
Responded registered the <justsuspension.com>
and <just-suspension.com>
domain names in its own name, without authorization.
Complainant asserts that the domain names are identical or confusingly
similar to its JUST SUSPENSION mark, and that Respondent has no rights or
legitimate interests in the domain names.
Complainant asserts that Respondent is not and has never been know by
either the <justsuspension.com>
and <just-suspension.com> or
name, nor has Respondent made any bona
fide use of these domain names.
Finally, Complainant asserts that Respondent has registered and is
using the <justsuspension.com>
and <just-suspension.com>
domain names in bad faith. As evidence
of this bad faith, Complainant asserts that Respondent offered to sell
Complainant the <justsuspension.com>
and <just-suspension.com>
domain names for $10,000 and that the web pages hosted at the domain names
contain referral links to Complainant’s competitors.
In its timely Additional Submission, Complainant asserts that the prior
proceeding, Suspensions LLC v. The LBC
Group, Inc., d/b/a Creative Associates, FA 662305 (Nat. Arb. Forum May 5,
2006) (“Suspensions I”) does not have res
judicata effects as to this proceeding because the Panel in the earlier
case did not resolve the case on the merits and denied the relief without
prejudice. Additionally, Complainant
asserts that Respondent’s claim of reverse domain name hijacking is without
merit.
B. Respondent
In its Response, Respondent argues that Complaint’s claim is barred by res judicata because of the holding in Suspensions
I. Respondent responds to the
substantive allegations of the Complaint only by reference to its Response in
Suspensions I.
In substance, Respondent asserts that Complainant lacks any rights in
the JUST SUSPENSION mark, having failed to actually acquire those rights from
Just Suspension, Inc. in its purchase of that company. Respondent further alleges that it registered
the domain names <justsuspension.com>
and <just-suspension.com> with
permission from Just Suspension, Inc. and that it offered to lease those domain
names back to Respondent, a practice it undertook for several of its
clients. Finally, Respondent disputes
Complainant’s characterization of its offer to sell the domain names, and
asserts that Complainant first raised the issue of purchasing the domain names
and made an offer of $200 to which Respondent’s offer of $10,000 was merely a
counter-offer.
Respondent
has also alleged that Complainant is attempting to abuse the UDRP process
through the filing of the instant Complaint.
Respondent contends that Complainant fails to accurately address the
previous decision rendered with regard to the disputed domain names and that
Complainant deliberately chose not to notify Respondent’s counsel of record of
the instant proceedings. Respondent
further maintains that Complainant’s filing of the instant Complaint is an
attempt to gain possession of the <justsuspension.com>
and <just-suspension.com> domain
names despite Respondent’s legitimate possession of them.
FINDINGS
The Panel finds that Complainant’s claim is
not barred by res judicata. The Panel finds that the <justsuspension.com> and <just-suspension.com>
domain names are identical to the mark JUST SUSPENSION in which Complainant has
at least common law rights. The Panel
finds that Respondent lacks any rights or legitimate interests in the disputed
domain names and has registered and used them in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 a previous UDRP proceeding by Complainant
against Respondent for the <justsuspension.com> and <just-suspension.com> domain names, the Panel dismissed Complainant’s request for transfer
without prejudice finding that there was insufficient evidence presented to
determine the relationship between Respondent and Complainant’s predecessor in
interest at the time the disputed domain names were registered. Accordingly, the Panel dismissed the claim and
stated its belief that a “more complete record” should be presented to a court
of law on this matter. Complainant has
chosen to refile its Complaint and asserts new evidence in the form of an
affidavit from one of the individuals associated with Complainant’s predecessor
in interest. Respondent asserts that
this proceeding is barred by the principal of res judicata, and requests that the instant proceeding be
dismissed.
The principles of res judicata only apply to a final decision on the merits. Storey
v. Cello Holdings, L.L.C., 347 F.3d 370 (2d Cir. 2003). Although the Panel in Suspensions I could
have decided the issue on the merits (having found Complainant’s evidence
deficient) and could have ruled against Complainant that Panel instead dismissed
the Complaint without prejudice, and chose not to decide the claim on its
merits. Accordingly, the Panel finds
that Complainant’s claim is not barred by res
judicata.
Complainant is not required to
possess a trademark registration in order to have rights in the JUST SUSPENSION
mark under Policy ¶ 4(a)(i). The Panel
finds Complainant possesses sufficient common law rights in its mark to meet
the burden set by Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
May 18, 2001) (“The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.”). To the extent Complainant is required to
prove secondary meaning to support its claim, as asserted by Respondent, the
Panel finds that Complainant has sufficient evidence for a finding of secondary
meaning in the mark pursuant to Policy ¶ 4(a)(i) based on the evidence of
Complainant’s predecessor in interest’s continuous use in commerce since 1986
and Complainant’s use of the JUST SUSPENSION mark as its tradename. See 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 Fishtech, Inc. v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law
rights in the mark FISHTECH that it has used since 1982).
The Panel finds that Respondent’s <justsuspension.com> and <just-suspension.com>
domain names are essentially identical
to Complainant’s JUST SUSPENSION mark.
The disputed domain names contain Complainant’s mark in its entirety,
removing only the space between the two words or replacing it with a hyphen and
adding a generic top-level domain (“gTLD”).
Neither the removal of a space nor the addition of a gTLD is sufficient
to properly distinguish Respondent’s disputed domain name from Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests 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 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).
The Panel finds that Respondent is not commonly known by the disputed domain names for purposes of Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Respondent’s diversionary use of the websites as referral sites is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Nor is Respondent’s leasing of the <justsuspension.com> domain name for use by Complainant in promotion with its goods and services 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) because of the unauthorized registration of the disputed domain name by Respondent.
Respondent, having
registered the disputed domain names in its own interest, and without
Complainant’s permission lacks rights and legitimate interests in the <justsuspension.com> and <just-suspension.com> domain
names as it had knowledge of Complainant’s mark and was employed to register
the disputed domain names on behalf of Complainant’s predecessor in interest
when it instead registered them in its own name. See Savino Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not
acquire rights or legitimate interests in a domain name identical to the former
employer's trademark); see also Vinidex Pty
Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that the
respondent lacked rights and legitimate interests in the domain name because it
did not resolve to a developed website and the respondent, a former employee of
the complainant, had constructive knowledge of the complainant’s rights in the
mark).
Respondent registered the <justsuspension.com> and <just-suspension.com> domain
names in bad faith as it was hired to register the disputed domain
names on behalf of Complainant’s predecessor in interest and therefore had full
knowledge of Complainant’s mark when registering the disputed domain
names. Accordingly, the Panel finds bad
faith registration and use under Policy ¶ 4(a)(iii). See
Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19,
2000) (finding bad faith registration and use where the respondent was formerly
employed by the complainant, was fully aware of the name of her employer, and
made no use of the infringing domain name); see
also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000)
("Respondent's registration of the company name of his former employer as
a domain name is an act of bad faith.").
Additionally, the Panel finds that
Respondent’s use of the disputed domain names for commercial gain is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Furthermore, the Panel finds that Internet users will likely be confused as to Complainant’s sponsorship of and affiliation with the resulting websites. Such likelihood of confusion provides further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Respondent’s
assertion of reverse domain name hijacking is without merit in this case, and
that Complainant’s filing of the instant Complaint was based on a good faith
belief in its rights to the disputed domain
names through its common law usage of the JUST SUSPENSION mark, and as such,
Complainant’s filing is not an abuse of the UDRP Policy. See Rusconi
Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001) (“[G]iven the
Complainant’s trade mark rights, the similarity of the Domain Name to
Complainant’s trade mark and the failure (albeit for good reason) of the
Respondent to respond to the Complainant’s letters, the Panel does not believe
that this complaint constitutes an abuse of the Policy.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief requested by Complainant shall be GRANTED. Respondent’s claim of reverse domain name
hijacking is DENIED.
Accordingly, it is Ordered that the <justsuspension.com> and <just-suspension.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz, Hon. Charles K.
McCotter, Jr., and Hon. Paul A. Dorf Panelists, Panelists
Dated: March 27, 2007
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