national arbitration forum

 

DECISION

 

Mobile Attic, Inc. v. ACC, Stow-a-ways

Claim Number: FA0805001183172

 

PARTIES

Complainant is Mobile Attic, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is ACC, Stow-a-ways (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mobileatticportablestorage.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically April 30, 2008; the National Arbitration Forum received a hard copy of the Complaint May 1, 2008.

 

On May 1, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mobileatticportablestorage.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On May 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 22, 2008,
 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@mobileatticportablestorage.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <mobileatticportablestorage.com>, is confusingly similar to Complainant’s THE MOBILE ATTIC mark.

 

2.      Respondent has no rights to or legitimate interests in the <mobileatticportablestorage.com> domain name.

 

3.      Respondent registered and used the <mobileatticportablestorage.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Mobile Attic, Inc., designs and manufactures a line of portable storage containers under its THE MOBILE ATTIC mark.  Complainant also offers storage services and moving supplies under this mark.  Complainant registered its THE MOBILE ATTIC mark with the United States Patent and Trademark Office (“USPTO”) on April 29, 2003 (Reg. No. 2,710,674). 

           

Respondent registered the <mobileatticportablestorage.com> domain name June 22, 2007.  The disputed domain name currently resolves to a website that states the website is under construction. 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Complainant provided extrinsic evidence of the registration of its THE MOBILE ATTIC mark with the USPTO on April 29, 2003.  The Panel finds this registration sufficiently establishes Complainant’s rights in its THE MOBILE ATTIC mark pursuant to Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office.  This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Respondent’s <mobileatticportablestorage.com> domain name fully incorporates Complainant’s THE MOBILE ATTIC mark with the deletion of the article “the” and the additions of the descriptive terms “portable storage,” along with the generic top-level domain (“gTLD”) “.com.”  The Panel finds these changes do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s THE MOBILE ATTIC mark.  Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to the complainant's THE BUFFALO NEWS mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."). 

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleged that Respondent does not have rights to or legitimate interests in the <mobileatticportablestorage.com> domain name.  Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant made a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights to or legitimate interests in the disputed domain name.  The Panel, however, examines the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

Respondent’s disputed domain name resolves to a website that merely states that the website is under construction.  The Panel finds Respondent failed to make an active use of the disputed domain name, and thus did not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and did not make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)).

 

The record and WHOIS information do not indicate that Respondent is commonly known by the <mobileatticportablestorage.com> domain name.  The WHOIS information lists Respondent as “ACC, Stow-a-ways,” and the record reflects Complainant has not authorized Respondent to use its THE MOBILE ATTIC mark.  Therefore, the Panel finds Respondent is not commonly known by the <mobileatticportablestorage.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also 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).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent failed to make an active use of the <mobileatticportablestorage.com> domain name.  The Panel finds this evidence supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that inactive use of a domain name permits an inference of registration and use in bad faith).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mobileatticportablestorage.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: June 10, 2008.

 

 

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