Spudos Donuts v. Nathan Rockhold c/o R Cubed Technologies
Claim Number: FA0910001288798
Complainant is Spudos
Donuts (“Complainant”), represented by Steven
L
REGISTRAR
The domain name at issue is <spudos.com>, registered with TLDS L.L.C. d/b/a SRSPlus.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 2009 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@spudos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <spudos.com> domain name is identical to Complainant’s SPUDOS mark.
2. Respondent does not have any rights or legitimate interests in the <spudos.com> domain name.
3. Respondent registered and used the <spudos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Spudos Donuts, is a restaurant offering donuts
and coffee. Complainant was created in
2008, and officially opened in March of 2009.
Three local newspapers contained articles featuring Complainant’s
opening in late 2008. Complainant
marketed its donuts and coffee across the city of
Respondent, Nathan Rockhold c/o R Cubed Technologies,
registered the <spudos.com> domain name on
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 filed for trademark registration with the
United States Patent and Trademark Office (“USPTO”), but Complainant does not
hold a trademark registration for its SPUDOS mark. However, governmental trademark registration
is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels have determined that a
federal registration is not required so long as the Complainant can establish common
law rights through proof of sufficient secondary meaning associated with the
mark. 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 Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark).
Complainant uses the SPUDOS mark to conduct its donuts and
coffee business since 2008. Complainant officially opened in March of
2009. In late 2008, three local
newspapers contained articles featuring Complainant’s opening. Complainant marketed its donuts and coffee
across the city of
Complainant asserts that Respondent’s <spudos.com>
domain name is identical to Complainant’s SPUDOS mark. The disputed domain name simply adds the
generic top-level domain (“gTLD”) “.com.”
Past panels have found that a disputed domain name is identical to a
complainant’s mark despite the addition of a gTLD. See Abt
Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The
Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition
of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶
4(a)(i) analysis.”); see also Snow Fun,
Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <spudos.com> domain
name. The burden shifts to Respondent to
prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its
allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient
prima facie case. Respondent’s failure to respond to the
Complaint allows the Panel to infer that Respondent does not have rights or
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Vanguard Group,
Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Respondent has offered no evidence suggesting that
Respondent is commonly known by the <spudos.com> domain name. Complainant asserts that Respondent has never
been authorized or licensed to use the SPUDOS mark. The WHOIS information identifies Respondent
as “Nathan Rockhold c/o R Cubed Technologies.”
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the <spudos.com> domain name pursuant to
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 Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
Respondent’s <spudos.com> domain name does not resolve to an active website. The Panel finds that this lack of use of a domain name that is identical to Complainant’s SPUDOS mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also 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)).
Respondent offered to sell the <spudos.com> domain name to Complainant. The Panel finds that Respondent’s offer to sell an identical disputed domain name for more than Respondent’s out-of-pocket expenses is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant received an offer from Respondent to sell the <spudos.com> domain name to Complainant. The Panel finds Respondent’s offer to sell the identical disputed domain name for more than Respondent’s out-of-pocket costs constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
Complainant alleges Respondent has failed to make active use
of the <spudos.com> domain name and that such failure is evidence
of Respondent’s bad faith registration and use.
The disputed domain name does not resolve to an active website. The Panel finds Respondent’s failure to make
an active use of the disputed domain name constitutes bad faith registration
and use pursuant to Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v.
Therefore, the Panel finds that Policy ¶ 4(a)(iii) has been fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spudos.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 25, 2009
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