Apex Brands, Inc. v. Basingstoke Commercial Services
Claim Number: FA1204001439841
Complainant is Apex Brands, Inc. (“Complainant”), represented by Jennifer Van Kirk of Lewis & Roca LLP, Arizona, USA. Respondent is Basingstoke Commerical Services (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jobox.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 17, 2012; the National Arbitration Forum received payment on April 17, 2012.
On April 19, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <jobox.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Net-work Solutions, LLC has verified that Respondent is bound by the Network Sol-utions, 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 April 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@jobox.com. Also on April 24, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant owns the JOBOX trademark, on file with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,923,277, registered October 3, 1995) that it acquired through an Assignment of Record.
Respondent’s <jobox.com> domain name is substantively identical to Complain-ant’s JOBOX trademark.
Respondent has never been commonly known by the disputed <jobox.com> domain name.
Respondent is not a licensee of Complainant, and has never received Com-plainant’s permission to use the JOBOX® trademark.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s domain name previously resolved to a website that marketed Complainant’s JOBOX brand products, which Respondent attempted to sell with-out authorization from Complainant.
The same website also formerly advertised the products of a commercial com-petitor of Complainant.
Respondent’s domain name currently resolves to a webpage that merely states Respondent’s name and address and is not used actively in any way.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the JOBOX trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO adequate to establish rights in a mark under Policy ¶ 4(a)(i)). This is true without regard to whether Complain-ant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of operations. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence, it being sufficient under the Policy that a complainant can demonstrate rights in its mark in some jurisdiction).
Respondent’s <jobox.com> domain name is substantively identical to Complain-ant’s JOBOX mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s entire mark, and merely adds the generic top-level domain (“gTLD”) “.com.” See, for example, Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007):
The Panel also finds that Respondent’s … domain name is identical to Complainant’s … mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
See also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has never been commonly known by the <jobox.com> domain name, and that Respondent is not a licensee of Complainant and has never received Complainant’s permission to use the JOBOX® trademark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Basingstoke Commercial Services,” which does not resemble the domain name. On this record, we conclude that Respondent has not been com-monly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (con-cluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by that domain name, including the relevant WHOIS information, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that a respondent was not commonly known by either of the domain names <aolcamera.com> or <aolcameras.com>, and so failed to show that it had rights to or legitimate interests in those domain names under Policy ¶ 4(c)(ii), because that respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s <jobox.com> domain name previously resolved to a website that marketed Complainant’s JOBOX brand products, which Respondent was attempting to sell without authorization from Complainant, and that Respondent also formerly used the domain name to advertise the products of a commercial competitor of Complainant. These uses of the domain name are not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003):
Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.
See also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] … mark to market products that compete with Complainant’s goods does not con-stitute a bona fide offering of goods and services.
Moreover, Complainant further asserts, again without objection from Respond-ent, that Respondent’s <jobox.com> domain name currently resolves to a web-page that merely recites Respondent’s name and address and is not actively used. In the circumstances here presented, failure to make a current active use of the disputed domain name similarly does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005):
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 of-fering 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).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s prior use of the disputed domain name to market its products, without authorization from Complainant, and to do so alongside the products of Complainant’s commercial competitors disrupted Complainant’s business. This stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not authorized to sell a complainant’s goods, to that complainant); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a respondent registered and used the domain name <classicmetalroofing.com> in bad faith under Policy ¶ 4(b)(iii) by employing it to redirect Internet users to that respondent’s competing website).
In addition, it is clear from the record that Respondent had actual knowledge of Complainant and of its rights in the JOBOX mark both when the disputed domain name was registered and while it has been in use. Such knowledge is itself evi-dence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that that re-spondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <jobox.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 29, 2012
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