Michele J. Budd v. Andrew Miller / 1 NetSystems, LLC
Claim Number: FA1105001390160
Complainant is Michele J. Budd (“Complainant”), represented by Michele J. Budd, Colorado, USA. Respondent is Andrew Miller / 1 NetSystems, LLC (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mjbenvironmental.com>, registered with 1&1 Internet AG.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2011; the National Arbitration Forum received payment on May 23, 2011.
On May 24, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <mjbenvironmental.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 June 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@mjbenvironmental.com. Also on June 1, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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" 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, 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 <mjbenvironmental.com> domain name is identical similar to Complainant’s MJB ENVIRONMENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <mjbenvironmental.com> domain name.
3. Respondent registered and used the <mjbenvironmental.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Michele J. Budd, is the owner of the MJB ENVIRONMENTAL mark which it has used in connection with its business since 2002. Complainant originally registered the <mjbenvironmental.com> domain name in 2008 and in 2010 renewed the domain name for an additional five years.
Respondent, Andrew Miller / 1 NetSystems, LLC, designed the disputed domain name’s website for Complainant at the end of 2010 and provided webhosting services for it. Respondent took possession of the disputed domain name in December 2010. The disputed domain name resolves to the Complainant’s own webpage.
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 contends that it has established rights in the MJB ENVIRONMENTAL mark. Complainant alleges that it has registered its mark but has not provided evidence of said registration. Complainants need not register a mark to establish rights in it. 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel will review the relevant information provided to determine if Complainant has established common law rights in the mark.
When deciding whether a complainant has established common law rights in a mark, the Panel may review all relevant information and will make a determination based on the particular circumstance of the case at hand. See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established”). Common law rights have often been found where a complainant had been using a mark long before the disputed domain name infringed on it, where a complainant had previously registered a domain name identical to the mark, and where a complainant had consistently and continuously used the mark since its creation. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because the complainant had used the mark in commerce for twelve years before the respondent registered the <bonddiamond.com> domain name); see also Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Nat. Arb. Forum Jan. 17, 2007) (“Complainant’s…registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s rights in the mark”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”). Complainant has used the MJB ENVIRONMENTAL mark since the incorporation of MJB Environmental Serives Inc. in 2002 in Colorado, USA, and has since consistently and continuously used the mark. Complainant originally registered the disputed domain name in 2008. Additionally, the mark is included on business cards and promotional materials such as calendars that Complainant provides to the public. As a result of this, the MJB ENVIRONMENTAL mark has acquired the requisite secondary meaning. The Panel finds that Complainant has established rights in the MJB ENVIRONMENTAL mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <mjbenvironmental.com> domain name is identical to its MJB ENVIRONMENTAL mark. Prior panels have determined that the elimination of a space and the addition of a generic top-level domain (“gTLD”) are insufficient to distinguish a disputed domain name from a mark because they are changes necessary to the registration of a domain name. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark). Because the disputed domain name fully incorporates Complainant’s mark, changing it only by the deletion of a space and the addition of a gTLD, the Panel finds that the <mjbenvironmental.com> is identical to Complainant’s MJB ENVIRONMENTAL mark.
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case in support of this allegation. Now that the Complainant has made a prima facie case, the burden shifts to the Respondent to provide the Panel evidence that it does have rights or legitimate interests in the <mjbenvironmental.com> domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel may assume the Respondent lacks rights and legitimate interests in the disputed domain name due to its failure to respond to the Complaint. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate’”). The Panel will, however, review the record to determine if there is evidence that Respondent does have rights or legitimate interests in the <mjbenvironmental.com> domain name.
Complainant alleges that Respondent transferred the disputed domain name and changed the information in connection to it to Respondent’s business and personal information. Previous panels have found that a respondent was not commonly known by a domain name and therefore lacks rights and legitimate interests in the domain name incorporating the complainant’s mark where respondent obtained the domain name from or without authorization from the complainant. 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 Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant). Respondent hosted the disputed domain name for Complainant in Complainant’s name before transferring the information into Respondent’s name without Complainant’s authorization. The information now provided for the disputed domain name’s registration gives no indication that Respondent is commonly known by the <mjbenvironmental.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s disputed domain name resolves to Complainant’s own website. Panels have found that the use of a disputed domain name to direct Internet traffic, even linking Internet users to the legitimate owner of a mark, demonstrates a lack of rights and legitimate interests on the part of the respondent. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”). The Panel finds that Respondent’s use of Complainant’s own website does not consitute the required Policy ¶ 4(c)(i) bona fide offering of goods or services nor the Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant alleges that Respondent’s acquisition of the disputed domain name is evidence that Respondent lacks rights and legitimate interests in it. Respondent obtained the disputed domain name by an unauthorized change of the information listed for the registration of the domain name. Previous panels have found that a complainant’s prior registration of the same domain name influences whether a resopndent has rights or legitimate interests in the domain name. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii)”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name). Due to the fact that Complainant had previously registered the disputed domain name and it is only owned by Respondent because it was deceptively and impermissibly transferred, the Panel finds that this demonstrated that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
When a panel conducts a Policy ¶ 4(b) analysis, it is not limited to those factors enumerated within it to demonstrate bad faith. Rather, a panel may look at the totality of the circumstances to determine if a respondent’s registration and use of the disputed domain name was done in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”).
Complainant contends that Respondent’s registration and use of Complainant’s webpage is evidence of bad faith under Policy ¶ 4(a)(iii). Past panels have found bad faith where a respondent registered and used a complainant’s own webpage. See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant"). Because Respondent’s domain name resolves to Complainant’s own webpage, the Panel finds that Respondent violated Policy ¶ 4(a)(iii) by registering and using the disputed domain name in bad faith.
Complainant contends that the registration and use of the disputed domain name was done in bad faith under Policy ¶ 4(a)(iii) because the domain name was previously owned by Complainant and transferred without authorization. Previous panels have found bad faith registration and use where the disputed domain name held by a respondent was previously registered by the complainant. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use”). Respondent took advantage of its business dealings with Complainant to transfer the <mjbenvironmental.com> domain name to itself without the knowledge or permission of Complainant. Due to this opportunistic registration of the domain name that had previously been registered by Complainant, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mjbenvironmental.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 25, 2011
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