Ultimate Electronics, Inc. v. Jason Nichols a/k/a Ultimateelectronic
Claim Number: FA0309000195683
Complainant is Ultimate Electronics, Inc., Thornton, CO (“Complainant”) represented by Benjamin L. Blaugrund of Holland & Hart LLP. Respondent is Jason Nichols a/k/a Ultimateelectronic, West Orange, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ultimateelectronics.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically September 13, 2003; the Forum received a hard copy of the Complaint September 17, 2003.
On September 15, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <ultimateelectronics.net> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 September 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2003, 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 email@example.com by e-mail.
On October 3, 2003, Respondent submitted to the Forum by e-mail the following message, which is set out in its entirety:
Ok, you're getting one response, and that's all the energy I am wasting on this matter. My store has been closed since I got the complaint. I am bankrupt, the "disputed" domain name was never disputed, and I am no longer it's owner. Any further corrsepondence [sic] and I will be filing civil, criminal, and UCMJ charges against ICANN, and all related parties. I am now a soldier in the United States Army, and as such any further harassment will be considered a federal offense. If I continue to be harassed, without any relevant legal grounds you will be hearing from a representative on my behalf from the JAG Corps.
FORMER President & CEO, UltimateElectronics.Net
P.S. This e-mail account is being closed, you may forward a formal apology to [redacted e-mail address]. If you send anything else to that account, I will in fact report it to both my commanding officer, and the office of the United States Attorney General. Do not, and I repeat for the sake of your obvious mental handicap, DO NOT, misuse my government issued e-mail address.
Having received no timely Response from Respondent that was in compliance with the Rules and having received no other communication from Respondent requesting other relief, the Forum, in compliance with Paragraph 5(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), transmitted to Complainant a Notification of Respondent Default.
On October 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any substantive Response from Respondent.
In light of Respondent’s unequivocal desire to be excluded from this proceeding, the Panel hereby excuses the Forum and Complainant from further communication with Respondent, as related to this hearing.
Complainant requests transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent, <ultimateelectronics.net>, is identical to Complainant’s ULTIMATE ELECTRONICS mark.
2. Respondent has no rights to or legitimate interests in the <ultimateelectronics.net> domain name.
3. Respondent registered and used the <ultimateelectronics.net> domain name in bad faith.
B. Respondent failed to submit a substantive Response in this proceeding.
Complainant Ultimate Electronics, Inc. holds federal trademarks in ULTIMATE ELECTRONICS (words only) and ULTIMATE ELECTRONICS (stylized). Each is registered on the Principal Register of the United States Patent and Trademark Office, and the senior mark (the stylized version) has been registered since January 16, 1996. The registration information for both marks indicates that the marks were first used in commerce in 1993.
Complainant uses its marks in association with the sale of home audio, television, and video system products as well as automobile sound systems and other consumer electronics. Complainant also holds registration of the <ultimateelectronics.com> domain name and has held this registration since March 21, 1996.
Respondent registered the disputed domain name on February 2, 2003, and has used the name to sell products similar to and in competition with those sold by Complainant.
On June 10, 2003, Complainant, through counsel, sent to Respondent a cease-and-desist letter demanding that Respondent stop using the ULTIMATE ELECTRONICS mark and <ultimateelectronics.net> domain name. Respondent replied on June 16, 2003, apologizing for “the mix up” and agreeing to transfer the domain name within thirty days in exchange for reimbursement of registration costs. Complainant’s records also document a June 20, 2003, telephone call from Respondent in which it restated its commitment to dismantle its website and transfer the domain name to Complainant. Complainant’s counsel attempted on at least three subsequent occasions to effectuate the transfer of the domain name and reimburse Respondent for registration fees. Respondent never replied to Complainant’s e-mails.
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 or seek other relief, 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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 established in this proceeding that it has rights in the ULTIMATE ELECTRONICS marks through evidence of registration on the Principal Register of the U.S. Patent and Trademark Office and by continuous use in commerce. The disputed domain name is identical to Complainant’s mark as it merely collapses two words into one and appends the requisite top-level domain name, which is in this case “.net”. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Policy ¶ 4(a)(i) has been satisfied.
Respondent’s failure to submit a substantive Response in this matter allows the Panel to infer that Respondent has no rights or legitimate interests to assert. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, Respondent’s admission to Complainant that its registration and use of the disputed domain name was the result of a “mix up” suggests that Respondent never had any rights in the name. See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question).
Respondent’s admission notwithstanding, its very use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name. See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).
Finally, other than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name (which Respondent readily agreed to discontinue using), there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS. See Yoga Works, Inc. v. Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that 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 Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information).
Having established that Respondent has no rights or legitimate interests in respect of the <ultimateelectronics.net> domain name, Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges bad faith registration and use of the domain name containing in its entirety the Complainant’s protected mark. In its communications with Complainant, Respondent apologized for its “mix up” in doing business online with Complainant’s marks. Despite Respondent’s purported ignorance of Complainant’s rights in ULTIMATE ELECTRONICS, the evidence presented by Complainant indicates that the mark has been registered on the Principal Register since 1996. As such, Respondent is charged with constructive notice of Complainant’s rights in the mark. Accordingly, Respondent’s registration and use of the infringing domain name was done in bad faith. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Beyond constructive knowledge of Complainant’s marks, given Complainant’s online and market presence, it seems probable that Respondent had actual knowledge of Complainant’s rights.
In light of Respondent’s actual or constructive knowledge of Complainant’s rights in ULTIMATE ELECTRONICS, Respondent’s use of the <ultimateelectronics.net> domain name to sell goods in competition with Complainant demonstrates bad faith according to Policy ¶¶ 4(b)(iii) & (iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to attract users intentionally to a direct competitor of Complainant); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).
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 <ultimateelectronics.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 27, 2003.
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