Dawson Center, LLC v. Domain Admin / TotalDomain Privacy Ltd
Claim Number: FA2305002044617
Complainant is Dawson Center, LLC (“Complainant”), represented by Will Rose, Florida, USA. Respondent is Domain Admin / TotalDomain Privacy Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dawsonacademy.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on May 15, 2023. Forum received payment on May 15, 2023.
On May 16, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <dawsonacademy.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dawsonacademy.com. Also on May 17, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
Complainant and its predecessor have been instructing practitioners on the evolving practice of dentistry for over four decades. Complainant has rights in the mark THE DAWSON ACADEMY through assignment to Complainant of the mark registered with the United States Patent and Trademark Office (“USPTO”). The mark has continuously been used in commerce since February 29, 2008. Complainant operates the website “www.thedawsonacademy.com”.
Respondent’s <dawsonacademy.com> domain name is nearly identical to Complainant’s THE DAWSON ACADEMY mark.
Respondent lacks rights or legitimate interests in the <dawsonacademy.com> domain name. Complainant has prominently and extensively used, promoted, and advertised the THE DAWSON ACADEMY mark and domain name for over 15 years. Respondent is not commonly known by the domain name, nor has Respondent been authorized by Complainant to use the THE DAWSON ACADEMY mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as it resolves to a parked page that offers the domain name for sale. Respondent is using a nearly identical domain name to the mark for the primary purpose of selling the domain name, and Respondent clearly registered the domain name with the hope that Complainant would purchase it. Respondent is using the goodwill and value associated with the mark for its own commercial gain.
Respondent registered and uses the <dawsonacademy.com> domain name in bad faith. Respondent registered the domain name to offer it for sale. The very nature of Respondent's registration and use of the domain name evidences bad faith. Upon information and belief, Respondent knowingly registered the domain name containing a nearly identical reproduction of the well-known mark. Respondent registered and is using the domain name primarily for the purpose of selling the domain name to Complainant. The website associated with the domain name has no content other than banner ads related to its sale and, given that the domain name is nearly identical to the mark, the only potential buyer of the domain name is Complainant (or a competitor of Complainant). Accordingly, the domain name was registered in bad faith because the primary purpose of its registration was to induce Complainant to purchase the domain name. Moreover, the mark is unique and arbitrary such that it is unlikely that the Respondent devised the term on its own. This factor alone weighs in favor of finding bad faith against Respondent. The bad faith allegations set out in the paragraphs above, combined with the Respondent's lack of interest or rights in the domain name, should lead the Panelist to the inevitable conclusion that there is no plausible circumstance under which Respondent could legitimately register or use the domain name and that, therefore, the domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that, through assignment, it has rights in the trademark THE DAWSON ACADEMY, which was registered on July 22, 2014 with the USPTO (Reg. No. 4,570,811) upon application filed on May 13, 2013. The mark was initially owned by a different company called Dawson Center L.L.C., which assigned the mark to Complainant, formerly known as Dawson Center Acquisition L.L.C., on January 1, 2017. The assignment was recorded by the USPTO on May 9, 2023.
The Panel finds Respondent’s <dawsonacademy.com> domain name to be nearly identical and confusingly similar to Complainant’s THE DAWSON ACADEMY mark as it merely deletes the word “the” and adds the inconsequential “.com” generic top-level-domain name ("gTLD"), which may be ignored.
In light of the Panel’s findings below, it is unnecessary to determine this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The <dawsonacademy.com> domain name was registered on April 25, 2009. Complainant says this was long after Complainant, through predecessors in interest, began using the mark. Complainant says it has prominently and extensively used, promoted and advertised the THE DAWSON ACADEMY mark and domain name for over 15 years.
Leaving aside the fact that Complainant acquired its rights in the mark on January 1, 2017 by assignment from a company with the same name as Complainant’s present name, Complainant has provided no evidence that it or its predecessor had acquired common law rights in the mark prior to its registration on July 22, 2014 with the USPTO, despite Complainant’s assertion that the mark has continuously been used in commerce since February 29, 2008. The only screenshot of Complainant’s website is dated 2023 (Exhibit 4). Hence the Panel is not persuaded that Respondent had Complainant’s mark in mind when registering the domain name on April 25, 2009. Accordingly, the Panel finds that Complainant has failed to show that the domain name was registered in bad faith.
Since the Policy requires proof of both bad faith registration and bad faith use, Complainant has failed to establish this element.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dawsonacademy.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: June 8, 2023
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