Olympic Credit Fund, Inc. v. Site
Services International c/o Richard Sorensen
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 postmaster@ocf.com 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
bad faith.”).
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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