Bud Johnson v. smith brown
Claim Number: FA1107001397798
Complainant is Bud Johnson (“Complainant”), Arizona, USA. Respondent is smith brown (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rolliescamera.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 12, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rolliescamera.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 July 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@rolliescamera.com. Also on July 19, 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 August 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rolliescamera.com> domain name is identical to Complainant’s ROLLIES CAMERA mark.
2. Respondent does not have any rights or legitimate interests in the <rolliescamera.com> domain name.
3. Respondent registered and used the <rolliescamera.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bud Johnson, has used its ROLLIES CAMERA mark in connection with a camera retail store continuously since 1976. The owner of Rollies Camera prior to Complainant registered the disputed domain name on October 6, 1998 for the express use of marketing and promoting its store, Rollies Camera. Complainant assumed the registration of the disputed domain name in 2005, which it held until the registration expired in 2008. Complainant currently operates an official website resolving from <rolliescamerashop.com> for marketing and promoting its Rollies Camera store.
Respondent, smith brown, acquired the <rolliescamera.com> domain name in 2008. Respondent’s disputed domain name resolves to a website that displays content identical to Complainant’s official website.
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 does not have a trademark registration for the ROLLIES CAMERA mark with the United States Patent and Trademark Office (“USPTO”). However, the Panel finds trademark registration unnecessary where Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”); 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)).
Complainant asserts it has common law rights in the ROLLIES CAMERA mark through its first use in commerce in 1961 and its continuous use in commerce since 1976 and the subsequent secondary meaning it has acquired through its use of the mark. Complainant sells professional and amateur photographic equipment such as cameras, lenses, tripods, camera bags, and digital accessories. Complainant also operates a website resolving from its <rolliescamerashop.com> domain name to market and promote products under its mark. Complainant held the registration of the disputed domain name until it inadvertently allowed it to expire, at which time Respondent acquired the registration. The Panel finds that Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning of the ROLLIES CAMERA mark in commerce to establish common law rights in the mark under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <rolliescamera.com> domain name is identical to Complainant’s ROLLIES CAMERA mark. Respondent’s disputed domain name contains the mark in its entirety, with the minor modifications of omitting the space between the terms of the mark, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that these modifications are irrelevant to a Policy ¶ 4(a)(i) analysis for distinguishing a disputed domain name from an established mark. 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (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”).
The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant must establish a prima facie case in support of this allegation. Once Complainant has done so, the burden shifts to Respondent to disprove the allegation. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to these proceedings, the Panel may view the evidence in light most favorable to Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). The Panel elects to review the evidence before concluding the Respondent’s rights and legitimate interests based on the Policy ¶ 4(c) guidelines.
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant also contends that it has not given Respondent license or other authorization to use its ROLLIES CAMERA mark. The WHOIS information for the disputed domain name identifies the registrant as “smith brown,” which does not suggest that Respondent is commonly known by the domain name. The Panel therefore finds that Respondent is not commonly known by the <rolliescamera.com> domain name under Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s <rolliescamera.com> domain name resolves to a website imitating Complainant’s website at <rolliescamerashop.com> domain name by using Complainant’s ROLLIES CAMERA mark and copying its content. Complainant further asserts that Respondent is attempting to pass itself off as Complainant by creating a likelihood of confusion in order to divert Internet users to the disputed domain name. The Panel finds that such registration and use of an identical domain name for Respondent to pass itself off as Complainant is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant contends that Respondent lacks rights and legitimate interest in the <rolliescamera.com> domain name because Complainant registered and used the disputed domain name for ten years in conjunction with its ROLLIES CAMERA mark before inadvertantly allowing the registration to expire. The Panel finds Complainant’s prior registration of the <rolliescamera.com> domain name is further evidence that Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). 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).
The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(ii).
Internet users, searching for Complainant’s business, may become confused as to Complainant’s sponsorship or affiliation with Respondent’s <rolliescamera.com> domain name and resolving website. Respondent initially used the disputed domain name for a parked site and recently started using it for a website identical to Complainant’s official website. The Panel finds Respondent’s use of the identical disputed domain name constitutes a disruption of Complainant’s camera retail business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent is using the <rolliescamera.com> domain name to pass itself off as Complainant where Respondent’s disputed domain name resolves to a website that mimics Complainant’s official website. The Panel finds that this constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel notes that Complainant previously registered and used the <rolliescamera.com> domain name for ten years and then inadvertently allowed its registration to lapse. The Panel finds that this is a further indication of Respondent’s opportunistic bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”); 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.”)
The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rolliescamera.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 17, 2011
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