Joan N. Trice c/o Clearbox, LLC v. David Dill
Claim Number: FA1101001369280
Complainant is Joan N. Trice c/o Clearbox, LLC (“Complainant”), represented by Hae Park-Suk of Barnes & Thornburg, LLP, Washington D.C., USA. Respondent is David Dill (“Respondent”), represented by Charles F. Luce, Jr., Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clearbox.com>, registered with GoDaddy.com, Inc.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2011; the National Arbitration Forum received payment on January 24, 2011.
On January 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <clearbox.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 January 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2011 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@clearbox.com. Also on January 27, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on February 17, 2011.
A timely Additional Submission from the Complainant was received and determined to be complete on February 22, 2011.
A timely Additional Submission from the Respondent was received on February 28, 2011.
On February 25, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
By the complaint, the Complainant contends that:
· The disputed domain name <clearbox.com> is identical to and confusingly similar to the CLEARBOX Mark in which Complainant has rights.
· It founded the company Clearbox LLC in November 2006.
· it first began using the CLEARBOX trademark in November 2006, in connection with the identified services, and has been using the CLEARBOX mark continuously and extensively since this date.
· since November 2006, the Complainant has advertised its services at the domain name <clearboxllc.com>, where the trademark CLEARBOX is prominently and extensively used throughout each of the webpages.
· The Respondent has no rights or legitimate interest in the disputed domain name
· The Respondent bought the disputed domain name, even though he knew that the name CLEARBOX was already used by the Complainant for her new company.
· The Respondent offered to the Complainant the disputed domain name for leasing $175 a month and with the option to buy at the end of the lease term
· Since acquiring the disputed domain name on or around February 2007, Respondent has not made legitimate use of, or demonstrable preparation to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
· The disputed domain name presently resolves to a landing page for what appears intended to be a new business called C BOX.
· The disputed domain name is a sham placeholder, resolving to a nonfunctional website.
· The Respondent’s name is David Dill. David Dill is not commonly known by the <clearbox.com> domain name or by the trademark CLEARBOX and Complainant
has not authorized Respondent to use any version of Complainant’s Mark for any
purpose. Merely having an email address of Info@ClearBox.com as stated on the current website is not proof that Respondent is commonly known by the <clearbox.com> domain name.
· The Respondent’s acquisition of the domain name in bad faith satisfies the Paragraph 4(b) showing of bad faith
· The disputed domain name was originally registered on January 25, 1999.
· Respondent acquired the disputed domain name on or around February 2007, knowing about the Complainant’s interest in the disputed domain name, for the primary purpose of offering it for sale to Complainant for an outrageous amount and under outrageous conditions, for valuable consideration far exceeding Respondent’s out-of-pocket expenses directly related to the domain name, and for the purpose of disrupting Complainant’s legitimate business.
B. Respondent
By its Response, the Respondent asserts that
· Although the Complainant has rights in the CLEARBOX trademark, there is no evidence that it acquired such rights before the Respondent,
· Before receiving any notice of dispute, the Respondent has established rights and legitimate interest in the disputed domain name, by virtue of his demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services,
· The fact that the Complainant waited for four years to file the complaint makes more difficult to prove that the Respondent has no rights and legitimate interests in the disputed domain name (doctrine of laches).
· It registered and is using the disputed domain name in good faith, in connection with a potential bona fide offering of services without having knowledge of the Complainant’s rights in the CLEARBOX mark.
C. Additional Submissions
By their Additional Submissions timely submitted both parties maintained their assertions and brought new evidences supporting these assertions.
From the submission of the parties and the evidences supporting such submissions the Respondent acquired the disputed domain name knowing about the interest and potential rights in the CLEARBOX name belonging to the Complainant and offered the acquired domain name to lease to the Complainant immediately after its acquisition for valuable consideration far exceeding Respondent’s out-of-pocket expenses directly related to the domain name. Only after that the Respondent was notified by the Complainant’s attorneys about the dispute regarding the domain name <clearbox.com>, the Respondent initiated some non persuasive preparations to start a business under the disputed domain name.
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.
The Complainant’s company Clearbox, LLC holds the CLEARBOX mark with the United States Patent and Trademark Office (“USPTO”) registration with number, 3,641,590 filed May 15, 2008; issued June 23, 2009 in connection to services under international classes 35, 36, 42 and 45 to provide a database of licensed and certified real estate appraisers.
The Panel finds this trademark registration sufficiently proves Complainant’s rights in the CLEARBOX mark pursuant to Policy ¶ 4(a)(i), dating back to May 15, 2008. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The Panel agrees with the Complainant’s contentions that the Respondent’s <clearbox.com> domain name is identical to her CLEARBOX mark, because it fully incorporates the CLEARBOX mark in the disputed domain name and then merely attaches the generic top-level domain (“gTLD”) “.com” to the mark. As other prior UDRP panels have determined, this Panel finds that adding the generic top-level domain (“gTLD") “.com” to a mark fails to distinguish a domain name from the mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 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 SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Accordingly, the Panel holds that Respondent’s <clearbox.com> domain name is identical to Complainant’s CLEARBOX mark pursuant to Policy ¶ 4(a)(i).
While the Respondent states that the Complainant does not hold common law rights in the CLEARBOX mark the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i), as the Complainant proved his rights in the said mark resulting from the USPTO registration dating 2009.
Moreover, while Respondent argues that his registration of the <clearbox.com> domain name predates Complainant’s alleged rights in the CLEARBOX mark, the Panel finds that such a determination is also not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the <clearbox.com> domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Therefore the Panel finds that the first element of the Policy is proven.
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show he does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that neither she or her company has authorized Respondent to use the CLEARBOX mark for any purpose. The WHOIS information lists “David Dill” as the registrant of the disputed domain name, which the Panel finds is not similar to the <clearbox.com> domain name. Complainant claims that the disputed domain name resolves to a website for a business called “C BOX” and announces the launching of a website in November 2010. The display contains no indication regarding the fact that the Respondent is commonly known as CLEARBOX or even CBOX. Complainant submits a screen shot of the resolving website, which shows a page that contains an e-mail address and phone number. Complainant claims that calls to phone numbers on the resolving website were answered by a recorded female voice prompting the caller to enter the extension of the person to be reached or to press “#” for the company directory, without identification of any company associated with the phone number. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, the Complainant also alleges none of the links to third-party social networking sites (i.e. Facebook, Twitter, etc.) on the resolving website under the disputed domain name are active.
On the other side, the Respondent asserts, that before receiving any notice of this dispute, he established rights and legitimate interests in the <clearbox.com> domain name. Respondent claims that he intends to use the <clearbox.com> domain name in connection with a bona fide offering of services that are unrelated to Complainant’s real estate business. Respondent argues that he has spent years developing a new business that he will use in connection with the disputed domain name, even though on June 26, 2008, the attorneys Moye White LLP representing the Respondent, according stated to the Exhibit 8 to the Response, that Mr. Dill “…has no immediate plans for his domain name…”.
Respondent provides evidence that he has hired various marketing consultants to help him develop and refine his vision for the “ClearBox” brand. Respondent states that he began working with Linda Citroen, his current marketing consult, around November 2009. Respondent submits into evidence detailed business and website plans that have resulted from his business relationship with Ms. Citroen. Respondent claims that he intends to use the disputed domain name in connection with “C-Box,” a business that offers services assisting high-income performers, such as athletes, professionals, and entertains, by providing financial, business, and life management and consulting services. Respondent alleges that he has spent approximately $25,000 to date developing this new business. No evidences of this kind had been provided so far in the support of his allegations. Respondent states that the website currently resolving from the disputed domain name provides general information about his C-Box business, as well as contact information for the business. Respondent asserts that there were minor setbacks that prevented him from launching his business in November 2010, the date that appears on the resolving website. Respondent further claims that he intends to launch his business via the disputed domain name on or around April 2011. The Panel notes that all the evidences provided by the Respondent to prove his preparations to use the domain name in connection to a bona fide offering of services refer to actions situated in time after the letter sent by the Complainant’ s attorneys Taylor&Aust, PC dated May 28, 2008, by which the dispute of the two parties over the domain name in discussion had been notified. Therefore, in this situation and based on the evidence in the record, the Panel cannot find that Respondent has provided demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also 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)).
Moreover, the Complainant alleges Respondent met with Mark Linne and Lee Trice (Complainant’s brother) in late 2006 to discuss names for a new business venture. Complainant states that they chose the name “ValueScape” after Mark Linne contacted Complainant and was informed “Clearbox” was unavailable for their use for the new company. Complainant claims that, shortly thereafter, Respondent contacted Complainant to inform her that Respondent had purchased the <clearbox.com> domain name and to offer to lease the domain name to Complainant. Complainant claims that Respondent stated in an e-mail from February 15, 2007:
“I did want to mention that I’ve purchased www.clearbox.com because Mark mentioned months ago that this could be the name for a newly formed company in the future that I would be involved in. I understand that you felt it was something that you wanted to use so he didn’t want to move forward with the name. Let me know if you’re interested in leasing the domain name. If not, that’s ok because I believe someone will come along one day and make an offer for it.”
Complainant claims that when asking Respondent how much he wanted for the disputed domain name, Respondent replied that he was “only interested in leasing it” but would give Complainant “the right to buy after 5 years.” Complainant further claims that Respondent subsequently offered to lease the disputed domain name to Complainant for $175 per month. These last Complainant’s contentions are not denied by the Respondent. Based on the evidence in the record, the Panel finds that Respondent’s offer to lease and then sell the <clearbox.com> domain name to Complainant indicates a lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); 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)).
Regarding the doctrine of laches invoked by the Respondent in his defense, the Panel finds that the said doctrine does not apply as a defense, and correspondingly choose to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Concluding, the Panel finds that the Complainant has built a prima facie case that the Respondent has not any rights or legitimate interests in the disputed domain name.
Complainant states that Respondent is not the original registrant of the <clearbox.com> domain name, but instead is a recent transferee of the disputed domain name. Complainant argues that her common law rights in the CLEARBOX mark, established in November 2006, pre-date Respondent’s acquisition of the disputed domain name in or around February 2007. The Panel finds in this sense that the relevant registration date in the disputed domain name is when Respondent acquired the domain name.
The registration date of the CLEARBOX trademark is situated in 2009, from this date the Complainant’s company obtained trademark registration rights in the said trademark. Nevertheless, it is possible to establish rights prior to that date based on use.
The Complainant states that she founded Clearbox LLC in November 2006 and that she has used the CLEARBOX mark continuously and extensively since then. In addition, Complainant argues that she has used the <clearboxllc.com> domain name in connection with her business since November 2006. The extensive use by the Complainant of the CLEARBOX mark with offering of database of certified and licensed appraisers may bring to the conclusion that the Complainant acquired common law rights before the filing date of its federal registration. Complainant also asserts common law rights in the CLEARBOX mark. Therefore, based on the evidence in the record, the Panel finds that Complainant has provided sufficient evidence to establish secondary meaning in the CLEARBOX mark and holds that Complainant has acquired common law rights in the CLEARBOX mark pursuant to Policy ¶ 4(a)(i) that date back to November 2006. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). The establishment of common law rights in the CLEARBOX rights started with the first use in commerce of the mark November 2006. Therefore, the Respondent’s registration of the disputed domain name does not predate Complainant’s common law rights in the CLEARBOX mark. See BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date when the respondent acquired the name from the person who first registered it.); see also Gewista-Werbegesellschaft mbH v. Unasi Inc., D2005-1051 (WIPO Nov. 22, 2005) (“[H]aving reviewed earlier decisions of panels, the Panel believes, that the fact, that the Respondent did not register the disputed domain name itself but acquired it form the previous owner, does not mean that the Respondent has not ‘registered’ the Domain Name within the meaning of the Policy since there is no reason to differentiate between a direct registration and registration after transfer. The domain name at issue was in fact “registered” within the meaning of the Policy when it had been acquired by the Respondent [from a prior registrant].”).
The Complainant contends that Respondent’s offer to lease and eventually sell the disputed domain name to Complainant amounts to bad faith. In her Additional Submission, Complainant reiterates that Respondent offered to lease the <clearbox.com> domain name to Complainant for $175 per month and then sell the domain name to Complainant after five years, for a total of $10,500 as lease and an undermined final price.
On the other side, the Respondent asserts that he first heard of the “ClearBox” name in or about November or December 2006 from Mark Linne, a mutual acquaintance of Complainant and Respondent. Respondent alleges that Mr. Linne proposed the term “ClearBox” during a meeting to discuss possible names for a business venture being formed by Mr. Linne, Respondent, and Lee Trice, Complainant’s brother. Respondent contends that Mr. Linne made no mention of Complainant’s alleged use of, or intention to use, the “ClearBox” name during this meeting. The Respondent’s assertions are refuted by the evidence brought by the Complainant attached to her Additional Submissions. The attached evidence involves statements of Mark R Linee and statement of Leeland Trice, which documents that Mr. Linne phoned the Complainant during this meeting to inquire whether she was moving forward with her use of the “ClearBox” name and informed the Respondent at the end of the phone call that the Complainant intended to use the “ClearBox” name.
Consequently, Respondent states that he immediately and successfully sought to acquire the <clearbox.com> domain name from StarMine, the prior owner of the disputed domain name. Respondent claims that he did not become aware of Complainant’s interest in the “ClearBox” name until after he contacted StarMine. Nevertheless, the Respondent states that, having already begun negotiations with StarMine, he decided to move forward and attempted to acquire the disputed domain name for future use in a venture unrelated to the appraisal industry. Moreover the Respondent asserts that he felt pressured to cultivate a good working relationship with his new business partner, Complainant’s brother, and avoid upsetting Complainant, whom Respondent claims is a powerbroker in the closely-knit real estate appraisal and valuation community and only because of this, he only reluctantly offered to lease the <clearbox.com> domain name to Complainant since his agreement with the former owner of the disputed domain name prevented Respondent from immediately selling the domain name to a third party.
As mentioned above, the assertions of the Respondent are rebutted by the Complainant’s evidences and the follow up explanations given by the Respondent as documented by both Respondent and the Complainant are more likely to support the Panel in a finding that he registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant for consideration in excess of Respondent’s out-of-pocket costs.
Therefore, the Panel finds that Respondent registered the <clearbox.com> domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant for consideration in excess of Respondent’s out-of-pocket costs. The Panel determines that Respondent’s offer amounts to registration and use in bad faith under Policy ¶ 4(b)(i). See Wake Forest Univ. v. Needham, FA 125751 (Nat. Arb. Forum Nov. 27, 2002) (finding bad faith pursuant to Policy ¶4(b)(i) where the panel found the respondent had proposed rental fees for use of the domain names in dispute); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
As stated in his Response, the Respondent admits acquiring the disputed domain name from the prior registrant despite his knowledge that Complainant was using the CLEARBOX mark, and despite his knowledge that Complainant had denied consent for Respondent’s use of the mark. In her Additional Submission, the Complainant states that Mark Linne and Leland Trice attest that Mr. Linne noted that Complainant may have already taken the “ClearBox” name for her business and informed Respondent at the end of the phone call that Complainant intended to use the “ClearBox” name. This attitude amounts in the opinion of the Panel opportunistic bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Prior panels have found that a respondent’s failure to make active use of a domain name can qualify as bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name after the complainant registered its trademark with the USPTO). The Panel determines that Respondent’s failure to make active use of the disputed domain name amounts to registration and use in bad faith under Policy ¶ 4(a)(iii).
Therefore, the Panel finds that the Complainant has prove also the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clearbox.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: March 10, 2011.
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