Teledrift Company v. Al Perkins
Claim Number: FA1201001423203
Complainant is Teledrift Company (“Complainant”), represented by David M. Sullivan of Crow & Dunlevy, P.C., Oklahoma, USA. Respondent is Al Perkins (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teledrift.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2012; the National Arbitration Forum received payment on January 6, 2012.
On January 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <teledrift.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2012 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@teledrift.com. Also on January 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 31, 2012.
An Additional Submission was received from Complainant on February 6, 2012, in compliance with the Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on February 16, 2012, five days after the deadline set by the Forum’s Supplemental Rule 7(c).
On February 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist and notified the Parties of the appointment.
On February 8, 2012, the Panel entered a Procedural Order requesting additional information from the Parties to be submitted by February 16, 2012. Responsive submissions were received from both Parties on February 16, 2012.
On February 6, 2012, the Forum received email correspondence from Respondent objecting to the Panelist’s appointment on the grounds that a conflict of interest arises from the appointment of a Panelist from the same country as the opposing party. The Forum responded on the same day, informing Respondent of Supplemental Rule 10, which requires that a written request stating specific reasons for the Panelist’s disqualification be submitted within five calendar days, and provides that such challenges will be reviewed and decided by the Forum. Respondent has not filed a timely request to challenge the selection of the Panelist under Supplemental Rule 10.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant and its predecessor in interest have used the TELEDRIFT mark since 1986 in connection with survey instruments for oil and gas operators and drilling contractors. Complainant claims that it has developed common-law trademark rights in TELEDRIFT as a result of extensive, continuous, and substantially exclusive use of the mark over that period. In support thereof, Complainant states that its survey instrument products have been provided to more than 100,000 people in the United States and internationally; that Complainant has used the mark widely in online and print marketing materials; and that its products are marketed by a sales force of more than 178 people. Complainant states that it used the disputed domain name to promote its products and services from 2001 until mid-2011, at which time its domain hosting service provider went out of business and the domain name registration expired, after which it was registered by Respondent. Complainant contends that the disputed domain name is identical to its TELEDRIFT mark.
Complainant further contends that Respondent has no legitimate interests in the disputed domain name. In support thereof, Complainant refers to the distinctive nature of its mark, and a claim that Respondent has caused the domain name to redirect visitors to an unrelated website with pornographic content. Complainant further asserts that the disputed domain name is not related to Respondent’s personal name or business, and that Respondent registered the domain name with the sole purpose of selling it to Complainant at a substantial profit.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant states that after it contacted Respondent concerning the domain name, Respondent made an unsolicited offer to sell the domain name to Complainant for $35,000. In further support of its bad faith claim, Complainant alleges that Respondent redirected the domain name to a pornographic website; that Respondent provided false registration information for the domain name; and that Respondent has engaged in a pattern of registering domain names in bad faith, as evidenced by a prior decision under the policy, AOL Inc. v. Perkins, FA 1402742 (Nat. Arb. Forum Sept. 16, 2011).
B. Respondent
Respondent states that Complainant does not have a trademark in the United Kingdom and is not well known there. Respondent denies having been aware of Complainant’s United States trademark, and notes that Complainant’s trademark registration has expired. Respondent accuses Complainant of having contacted Respondent in an effort to purchase the domain name in order to trap Respondent into providing evidence that Complainant could use in this proceeding. Respondent further states that Respondent’s client purchased the disputed domain name in good faith in a domain name auction, and that the client is the owner of the domain name, explaining that the client neglected to change the domain name registration information to substitute its name for Respondent’s. Respondent states that this client is a manufacturer of tools in the process of launching a new telescopic tool called “teledrift,” for which it intends to use the disputed domain name. Respondent states that Complainant’s reference to AOL Inc. v. Perkins is the only element of truth in the Complaint, but states that the registration of the domain name in that uncontested case was a mistake that is not representative of a pattern of bad faith. Respondent asks the Panel to find that the Complainant has engaged in reverse domain name hijacking.
C. Additional Submissions
Complainant’s Additional Submission responds to various contentions in the Response and Respondent’s untimely Additional Submission, in turn, responds to Complainant’s Additional Submission. Paragraph 12 of ICANN’s UDRP Rules confers upon the Panel the sole discretion to decide whether to receive supplemental material from the parties, and a Panel should consider such material only in exceptional circumstances. See, e.g., ER Marks, Inc. v. 6 Ideas, FA 1417333 (Nat. Arb. Forum Jan. 11, 2002). The Panel has reviewed the parties’ Additional Submissions and has determined that there are no exceptional circumstances present that warrant their consideration.
D. Additional Material Requested by the Panel
In its Procedural Order, the Panel requested Complainant to provide evidence that Respondent acquired the disputed domain name for reasons related to Complainant’s claimed TELEDRIFT mark, including evidence of any advertising or use of the mark by Complainant within the United Kingdom in 2011. The Panel requested Respondent to provide evidence that Respondent or Respondent’s client is a manufacturer of tools, and of the new telescopic tool in connection with which the disputed domain name is intended to be used; and evidence that Respondent or Respondent's client obtained the disputed domain name in a domain auction, including the price paid.
In response to the Panel’s Procedural Order, Complainant furnished an affidavit signed by an employee of Complainant’s parent company accompanied by supporting documentary evidence. The affidavit states inter alia that Complainant has offered products and services under the TELEDRIFT mark in the United Kingdom and has expended significant financial resources in connection with the European market. The affidavit further states that TELEDRIFT is a coined word used exclusively to refer to Complainant’s products and services in the United States, the United Kingdom, and elsewhere. The affidavit accuses Respondent of having seen the disputed domain name in an auction of expired domain names, performing a brief Internet search in which Respondent likely learned of Complainant’s mark, and then acquiring the domain name with the sole intention of selling it to Complainant at a substantial profit.
Also in response to the Panel’s Procedural Order, Respondent furnished a screen shot depicting a Go Daddy domain name auction, indicating that the disputed domain name was acquired in November 2011 at a price of $262. Respondent stated that “it is clear that godaddy did not think the domain was a TM as they would never of auctioned it.” Respondent declined to reveal the identity of Respondent’s client, citing a confidentiality agreement, and did not provide any information regarding the telescopic tool for which the domain name was to be used.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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.
Complainant has provided substantial evidence to support its claim of common-law rights in the TELEDRIFT mark. The disputed domain name is comprised of this mark with the “.com” top-level domain suffix appended thereto. The domain name is therefore identical to Complainant’s mark for purposes of paragraph 4(a)(i) of the Policy.
Complainant’s allegations and supporting evidence suffice to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden of production therefore shifts to Respondent to come forward with concrete evidence of its rights or legitimate interests. See, e.g., Shahrad Yazdani v. Domain Deluxe, FA1219173 (Nat. Arb. Forum Oct. 2, 2008). Respondent claims that the domain name was registered for a client manufacturer that intends to use the name in connection with a new telescopic tool, but provided no evidence to support this claim and declined to do so in response to the Panel’s specific request. The Panel notes that Respondent could have provided redacted copies of the confidentiality agreement cited by Respondent and of other materials describing Respondent’s client and its telescopic tool. The lack of any evidence whatsoever to support Respondent’s claim leads the Panel to doubt Respondent’s claims and conclude that Complainant has met its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(b) of the Policy lists various circumstances which serve as evidence of the registration and use of a domain name in bad faith. Under paragraph 4(b)(i), bad faith may be inferred when the domain name was acquired primarily for the purpose of resale at a profit to the owner of a corresponding trademark or a competitor thereof. Here, Respondent acquired the disputed domain name at auction. Although the price paid in that auction was fairly modest, the Panel nonetheless considers it very likely that Respondent would have performed at least a perfunctory Internet search for the term “teledrift” in order to decide how much to bid on the domain name. Substantially all of the results of such a search would have been references to Complainant or its mark. Respondent therefore would have learned of Complainant’s mark prior to bidding on the domain name, or at least would have investigated the matter further before bidding.
In regard to Respondent’s claim that Go Daddy would not have auctioned a domain name that contained a trademark, the Panel does not consider it likely that Respondent relied upon Go Daddy to clear trademark rights to the term. The auction screen contains a prominent statement that the party listing the domain name for sale is responsible for ensuring that it does not infringe on third-party trademarks, and the posted membership agreement for Go Daddy Auctions states explicitly that domain names are sold without any representation or warranty that they do not infringe upon the rights of third parties.
Respondent’s failure to provide the Panel with any evidence whatsoever to substantiate the claimed reason for registering the disputed domain name, when considered with Respondent’s offer to sell the domain name for $35,000 and the other circumstantial evidence in the record, leads the Panel to infer that Respondent in fact registered the domain name intending to sell it to Complainant or one of its competitors. The Panel therefore finds that Complainant has met its burden of proving that the disputed domain name was registered and has been used in bad faith.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teledrift.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 23, 2012
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