Liberty Acquisitions Servicing, LLC v. Charles McManus
Claim Number: FA1108001405338
Complainant is Liberty Acquisitions Servicing, LLC (“Complainant”), represented by Marc C. Levy of Faegre & Benson LLP, Colorado, USA. Respondent is Charles McManus (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <libertyacquisitionsllc.com>, registered with 1 & 1 INTERNET AG.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2011; the National Arbitration Forum received payment on August 31, 2011.
On September 1, 2011, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <libertyacquisitionsllc.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 September 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@libertyacquisitionsllc.com. Also on September 6, 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 September 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <libertyacquisitionsllc.com> domain name is confusingly similar to Complainant’s LIBERTY ACQUISITIONS mark.
2. Respondent does not have any rights or legitimate interests in the <libertyacquisitionsllc.com> domain name.
3. Respondent registered and used the <libertyacquisitionsllc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Acquisitions Servicing, LLC, is a debt collections company offering its services throughout the United States. Complainant opened its business in 2002 and since that time, has used the LIBERTY ACQUISITIONS mark to promote and sell its services to customers nationwide. Complainant has been using the mark in conjunction with its business for nearly 10 years, and in that span of time has received recognition from third-party sources, including the State of Colorado and ColoradoBiz Magazine, for its innovative and ethical collections services. Complainant also offers its services online through the <libertyacq.com> domain name, which is an abbreviation of the mark.
Respondent, Charles McManus, registered the disputed domain name on April 16, 2010. The disputed domain name resolves to a website where Internet users and Respondent have posted complaints and other comments regarding Complainant’s business.
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.
Under Policy ¶ 4(a)(i), Complainant must prove that it has rights in the LIBERTY ACQUISITIONS mark. Although the most common and simplest way to establish rights in a mark is by registering it with the USPTO, previous panels have determined that registering a mark is not required to establish rights in said mark under the Policy. See 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)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Therefore, the Panel finds that Complainant is not required to have a trademark registration for the LIBERTY ACQUISITIONS mark, rather it may prove that it has rights in the mark under Policy ¶ 4(a)(i) by using common law standards.
Under the common law, Complainant is required to show that its mark has acquired secondary meaning with relation to its business and that individuals readily associate the mark in question with its business. Complainant claims that it has done precisely that through the continuous use of the LIBERTY ACQUISITIONS mark in conjunction with its business for over 9 years. Complainant has submitted multiple examples of where it has been recognized by third-parties, ColoradoBiz Magazine and the State of Colorado, for its good business practices in the collections industry and each of these sources appear to link Complainant with the LIBERTY ACQUISITIONS mark. Therefore, the Panel finds that Complainant has established its rights in the LIBERTY ACQUISITIONS mark under Policy ¶ 4(a)(i) by demonstrating that the mark has taken on a secondary meaning through its association with Complainant’s business, and through continuous use of the mark in conjunction with Complainant’s business for nearly a decade. 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); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Complainant claims that Respondent’s <libertyacquisitionsllc.com> domain name is confusingly similar to its LIBERTY ACQUISITIONS mark. The disputed domain name includes the entire mark while adding an abbreviation of a generic organizational identifier “llc,” along with the generic top-level domain (“gTLD”) “.com.” The disputed domain name removes the space between the terms of the mark as well. The Panel finds that the changes made by Respondent to form the disputed domain name do not sufficiently differentiate the disputed domain name from Complainant’s LIBERTY ACQUISITIONS mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
The Panel finds that Complainant has successfully shifted the burden of proof to Respondent under Policy ¶ 4(a)(ii) by making a prima facie case showing Respondent’s apparent lack of rights or legitimate interests in the disputed domain name. See 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.”). Respondent has failed to file a Response in this matter which allows the Panel to assume that what Complainant alleges is true, and that Respondent lacks rights or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel will still examine the entire record before making a reasoned determination regarding Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and in accordance with Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence to combat Complainant’s assertion and the WHOIS information identifies the registrant of the disputed domain name as “Charles McManus.” Both facts operate against Respondent and as a result, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website that offers criticism and complaints regarding Complainant’s business. The site also beseeches Internet users that read it to file civil suits against Complainant. Previous panels have concluded that using a disputed domain name in this manner does not satisfy the requirements under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (“Even if the goal of providing a free speech forum for criticizing Complainant is commendable, that goal cannot be reached by usurping Complainant’s marks and posing as Complainant.”); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Under Policy ¶ 4(a)(iii), Complainant is taxed with the burden of proving that Respondent registered and used the disputed domain name in bad faith. Policy ¶ 4(b) provides Complainant with four discrete methods in which it may be able to prove bad faith; however, these options are not exclusive and if the specific conduct of Respondent does fall within these categories, Complainant may then use the totality of the circumstances to prove bad faith registration and use under Policy ¶ 4(a)(iii). 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 registered and is using the disputed domain name in bad faith because of its apparent purpose. Respondent resolves the disputed domain name to a website offering criticism of Complainant’s business, and calls to action imploring Internet users to “file civil suits” against Complainant. The Panel finds that this use clearly constitutes bad faith registration and use under Policy ¶ 4(a)(iii) because the intention of Respondent when using Complainant’s mark in the disputed domain name was purely to divert and confuse Internet users. See Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”); see also TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).
The Panel finds that Complainant has established 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 <libertyacquisitionsllc.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 3, 2011
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