Claim Number: FA0702000910790
Complainant is Olympic Credit Fund, Inc. (“Complainant”), represented by Kevin M. Hayes, of Klarquist Sparkman, LLP, One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR 97204. Respondent is Site Services International c/o Richard Sorensen (“Respondent”), 112 Woodall Rodgers Freeway, Dallas, TX 75207.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ocf.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
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.
Carol M. Stoner, Esq., Chairperson, David H. Bernstein, Esq., and the Hon.Tyrus R. Atkinson as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2007.
On February 7, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <ocf.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com 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 February 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, nor returned mail, nor bounced back e-mails, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 08, 2007 , pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., Chairperson, and the Hon. Tyrus R. Atkinson, and David H. Bernstein, Esq., as Panelists.
Based on the National Arbitration Forum’s report, of the efforts it took to notify Respondent of the Complaint, 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." It therefore, is the Panel’s responsibility to 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:
Complainant, Olympic Credit Fund, Inc., offers credit services, namely factoring. Complainant was incorporated in Washington, has offices in Oregon, Colorado and Florida, and conducts extensive marketing campaigns. Complainant contends that it factors in excess of $175 million annually, and has over 200 active clients, located in a majority of the states of the United States.
Claimant was the prior registrant of the disputed domain <ocf.com>, and has, for
approximately six years, maintained common law rights in the mark, OCF.
Although the domain name registration never expired, Respondent was inextricably
able to change the WHOIS contact information to reflect Respondent’s ownership.
However, Respondent’s domain name continues to resolve to Complainant’s website.
This website, at the subject domain name, still contains information on Complainant
and its products, but Complainant no longer holds the registration of the <ocf.com> domain name, nor controls the content of the website
B. Respondent failed to submit a Response in this proceeding.
1. Based upon the facts and arguments presented to it, the Panel finds that the instant domain name hijacking issue is within the scope of the UDRP Policy; and therefore, that the Panel has jurisdiction over same.
2. Respondent’s <ocf.com> domain name is identical to Complainant’s OCF common law based, service mark.
3. Respondent does not have any rights or legitimate interests in the <ocf.com> domain name.
4. Respondent registered and used the <ocf.com> domain name in bad faith.
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 factual 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 factual 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 does not hold a Patent and Trademark (PTO) registration for the OCF service mark, the Panel finds that registration of a mark with a governmental agency is unnecessary to show rights in the mark pursuant to 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.”). Common law rights are sufficient, if shown, and in this case, Complainant does claim common law rights in the OCF service mark, pursuant to Policy ¶ 4(a)(i).
Complainant has proffered substantial and credible evidence of continuous and ongoing use of the OCF service mark, as follows: Complainant was incorporated in
Washington in 1991; has clients in a majority of the states of the United States; and
began using OCF in its URL for its website, after registering the disputed domain
name, <ocf.com>, in, or around 1997. Complainant began using OCF as a service mark, in connection with its factoring services, at least as early as 2000. Further,
Complainant has been featured in Columbus CEO Magazine, in an article referring to Complainant, by its service mark OCF.
Complainant has also offered sufficient evidence to establish a secondary meaning
in the service mark. That is, consumers recognized OCF, as designating Complainant, as the source of factoring services. Attached as Exhibit F to the
Complaint, are sample copies of Complainant’s customer marketing materials, incorporating prominent use of the OCF service mark. Attached as Exhibit G to the Complaint, is a customer testimonial stating that, “in all my years of finance experience, I have found OCF as being the best source.”
The Panel finds, therefore, that Complainant has common law rights in the OCF
service mark pursuant to Policy ¶ 4(a)(i). See 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); 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).
Complainant contends that Respondent’s <ocf.com> domain name is identical to
Complainant’s OCF service mark. The disputed domain name contains
Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the mere addition of a gTLD should be disregarded
when comparing a domain name to a mark. Therefore, it is clear that Respondent’s
domain name is otherwise identical to Complainant’s mark. So the Panel finds that
Policy ¶ 4(a)(i), wherein the domain name is not sufficiently distinguished from
the mark, has been satisfied. See Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO
July 07, 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 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 therefore finds, that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
In instances where Complainant has made a prima facie case in support of its
allegations regarding Respondent’s lack of any rights or legitimate interests, the
burden of production shifts to Respondent to show that it does have rights or
legitimate interests in accordance with Policy ¶ 4(a)(ii). See WIPO Overview of
WIPO Panel Views on Selected UDRP Issues §2.1; see also Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000).
Complainant has made a prima facie showing that Respondent, without authorization
of any sort, is causing the disputed domain to resolve to Complainant’s website as evidenced by Exhibits E and G of Complaint. This is not a legitimate interest. Neither is it a benign interest; as Respondent could cause the disputed domain name to resolve to a competitor’s or even to a counterfeit website.
Because Respondent has not come forward with any evidence to rebut Complainant’s showing, the Panel finds that Complainant has carried its burden of showing that
Respondent’s use of the disputed domain name to redirect Internet users is neither a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use in accordance with Policy ¶ 4(c)(iii). See Amazon.com v. Federov, FA211935 (Nat. Arb. Forum Jan. 2, 2004) (finding no rights or legitimate interests where respondent redirected the disputed domain to the complainant’s website); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
A review of Respondent’s WHOIS information reveals that, the registrant of the
<ocf.com> domain name is “Site Services International c/o Richard Sorensen.” The
Panel, lacking any evidence to suggest otherwise, also finds that Complainant has
satisfied its burden of showing that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also
Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a/ David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”
The Panel therefore finds, that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant has not consented to the sale, transfer or license of its domain name <ocf.com> to Respondent, nor has the registration of said domain name expired. It therefore appears, as Complainant has alleged, that Respondent has “hijacked”
Complainant’s domain name. ICANN, in its report of July 12, 2005, entitled,
Domain Name Hijacking: Incidents, Threats, Risks and Remedial Actions, states that
“Domain name hijacking refers to the wrongful taking of control of a domain name
from the rightful name holder.”
A finding of the ICANN Committee Report is that, “domain name hijacking
incidents are commonly the result of flaws in registration and related processes,
failure to comply with the transfer policy, and poor administration of domain names
by registrars, resellers and registrants.”
This Panel need not have actual knowledge of the technical method of unauthorized
transfer (hijacking) of the disputed domain name. This Panel hereby finds that the
unauthorized transfer - in, and of, itself - is sufficient for a finding of an abusive
and therefore, bad faith registration. In the Computer Consultant case, the Panel
determined not only that Respondent’s registration of the Complainant’s domain
name without permission and without changing the content of the website evidenced
Respondent’s bad faith; but also that, unlawful hijacking is on the very end of the
spectrum in terms of being a bad faith registration and use. See CC Computer Consultants GmbH & WAFA Kunststofftechnik GmbH v. APGH Solutions &
Techs., D2005-0609 (WIPO Aug. 11, 2005).
The Panel finds clear evidence to show that Respondent deceptively transferred the
disputed domain, with knowledge of Complainant’s OCF mark. That is, the WHOIS
record shows that Respondent registered the <ocf.com> domain name sometime
after January 04, 2006 (which is nearly ten years after Complainant began using
<ocf.com> for its URL, and at least five years after Complainant began using its
service mark OCF and proceeded to cause the disputed domain name to resolve to
Complainant’s website where the OCF service mark was prominently displayed.
The registration and use of a domain name confusingly similar to a trademark,
despite actual or constructive knowledge of the mark holder’s rights, is itself
evidence of bad faith registration and use. See Miller Brewing Company v. km,
FA 158252 (Nat. Arb. Forum July 3, 2003).
This Panel finds that Respondent’s use of the disputed domain name to direct Internet
users to Complainant’s website created a false association between Respondent and Complainant. The panel in Amazon.com Inc v. Federov, cited above, found
“that such direction of a disputed domain name to a complainant’s website demonstrates bad faith on that basis...and further placed respondent in a position to allow respondent in the future to exploit the goodwill complainant has built in connection with the famous mark, to the detriment of complainant.”
The Panel, in considering the totality of the circumstances, finds that Respondent has
registered and used the disputed domain name in bad faith 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 Home Interiors & Gifts, Inc., v.
Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not
mean that the domain names at issue were not registered in and are not being used in
The Panel therefore 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 <ocf.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Chairperson,
David H. Bernstein, Esq., and the Hon. Tyrus R. Atkinson as Panelists
Dated: March 22, 2007
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