Horizon Publishing, LLC v. Opulence Communications Ltd
Claim Number: FA1302001487500
Complainant is Horizon Publishing, LLC (“Complainant”), represented by Marc J. Kesten of Marc J. Kesten, P.L., Florida, USA. Respondent is Opulence Communications Ltd (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <opulence.com>, registered with Tierranet, Inc., d/b/a DomainDiscover.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2013; the National Arbitration Forum received payment on February 27, 2013.
On February 27, 2013, Tierranet, Inc., d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <opulence.com> domain name is registered with Tierranet, Inc., d/b/a DomainDiscover and that Respondent is the current registrant of the names. Tierranet, Inc., d/b/a DomainDiscover has verified that Respondent is bound by the Tierranet, Inc., d/b/a DomainDiscover 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 February 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2013 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@opulence.com. Also on February 28, 2013, 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 March 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Horizon Publishing, LLC (“Complainant” or “Horizon”) is a well-known and well-established publishing company that publishes, inter alia, a monthly print and electronic magazine named “South Florida Opulence,” and uses the mark “OPULENCE” on or in connection with its magazine and advertising goods and services
Complainant owns and is actively using on and/or in connection with its on-going publishing and advertising business activities. The <opulence.com> domain name that is currently registered by Respondent is confusingly similar to, and tarnishes and dilutes Complainant’s marks.
Complainant has been using the mark “OPULENCE” in commerce and interstate commerce since as early as October 13, 2010, in connection with Publishing/Advertising-Related Goods and Services. On September 25, 2012, Complainant filed a U.S. trademark application seeking to register the mark “OPULENCE” for its Publishing/Advertising-Related Goods and Services
Complainant discovered that Opulence Communications, Ltd. is a dissolved entity and is no longer conducting business. Respondent company was dissolved on or about November 15, 2011, and has never used the domain name <opulence.com> for any legitimate business purpose.
During the entire time that Respondent was in existence, the <opulence.com> domain was used solely as a solely as a parking space and/or landing page.
Complainant, through its intellectual property attorney sent an e-mail inquiry directly to the e-mail contact information shown in the Whois database for this domain name. Complainant received a “Failure of Delivery” notice.
Further, on or about November 12, 2012, Complainant’s counsel called the Administrative Contact, Technical Contact, and Zone Contract telephone number for Respondent that was provided on the Whois page for <opulence.com> to find out whether the domain name at issue was for sale.
Someone at the phone number for the domain name’s administrative contact named “Ronnie” claimed to work for a company named Luxur told Complainant’s counsel that the at-issue domain name was for sale. On Complainant’s behalf, Complainant offered Ronnie the sum of $1,250.00 to purchase the domain name, but Ronnie rejected the offer and told Complainant’s counsel that the minimum purchase price for the domain name was $250,000.00.
Complainant has established common law rights in and to the mark “OPULENCE” and anticipates receiving a U.S. federal trademark registration for this mark in the near future. Complainant also has established Florida State trademark rights in and to the marks “SOUTH FLORIDA OPULENCE” and “SOUTH FLORIDA OPULENCE (and design).”
Respondent’s <opulence.com> domain name is identical and certainly confusingly similar to Complainant’s “OPULENCE” trademark, and nearly identical and confusingly similar to Complainant’s “SOUTH FLORIDA OPULENCE” trademarks. Respondent’s domain name resembles Complainant’s marks and is likely to cause confusion or mistake, with Complainant’s common law and registered trademarks.
Respondent does not have any rights or legitimate interests in and to the domain name <opulence.com>. As a matter of law, Complainant’s assertion, alone, is sufficient to establish a prima facie case under Policy ¶ 4(a)(ii), thereby shifting the burden to Respondent to present evidence of its right or legitimate interests.
Respondent has no rights or legitimate interest in the disputed domain name because it is a dissolved entity that is no longer in existence and/or doing business. Respondent company was dissolved back on November 15, 2011.
Moreover, Respondent never made any active use of the domain name <opulence.com>. The evidence suggests that Respondent only the <opulence.com> domain name simply as either a parking or landing page.
Respondent has never made active use of the domain name <opulence.com>. Any use of this domain name, during the period of time that Respondent existed as a company, was limited to it being used a parking or landing space.
Bad faith also is evident due to Respondent’s failure to provide its registrar of record with accurate contact information. Evidence that a domain name owner provided incorrect information to a domain name registrar supports a finding of bad faith. The information provided by Respondent to its registrar is entirely inaccurate, including Respondent’s phone numbers and address.
The counter offer by “Ronnie” regarding Complainant’s offer to purchase the domain name further indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The at-issue domain name was first registered in 2004.
OPULENCE is a generic dictionary word.
Complainant’s rights in the OPULENCE marks, if any, manifested no earlier than October 13, 2010.
Complainant filed trademark registration applications for the SOUTHERN FLORIDA OPULENCE mark with the State of Florida on or about January 31, 2011.
Complainant filed a trademark registration with the USPTO for the OPULENCE mark on September 25, 2012. As of the date of this decision, a trademark registration has not been issued.
Respondent registered and used the at-issue domain name before Complainant had rights in any of the OPULENCE trademarks.
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.
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.”).
Complainant fails to demonstrate that it is has rights in a mark pursuant to Policy ¶4(a)(i).
Complainant presents the Panel with its trademark applications to the USPTO and to the State of Florida for the marks OPULENCE and SOUTH FLORIDA OPULENCE respectively. However, it is well settled that an application, without issuance, does not establish a Complainant’s trademark rights under the Policy. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”). Although trademark registration is not necessary to show rights under paragraph 4(a)(i) of the Policy, and a complainant may demonstrate such rights by showing that it has common law trademark rights in a relevant mark, in the instant case there is insufficient evidence for the Panel to find common law rights regarding the OPULENCE or SOUTHERN FLORIDA OPULENCE marks. Since the Complainant lacks the requisite rights in a mark, it is not necessary need for the Panel to further consider whether the mark and the at-issue domain name are identical or confusingly similar.
While finding that Complainant lacks rights in a mark might be the end of the Panel’s inquiry in that it precludes a decision in favor of Complainant, the Panel nonetheless elects to consider the remaining Policy ¶4(a) factors.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant suggests that Respondent has no rights or legitimate interest in the at-issue domain name because Respondent was dissolved in November of 2011. The dissolution, implies Complainant, divests Respondent of any contractual rights to the at-issue domain name. Additionally, since Respondent never made an active use of the domain name <opulence.com> and Respondent only used the <opulence.com> domains name as either a parking or landing page, Respondent has no rights or legitimate interests.
Since Complainant’s initial burden is slight regarding Policy ¶4 (a)(ii), and without considering that Complainant has not demonstrated rights in a mark pursuant to Policy ¶4(a)(i), Complainant’s pleadings are sufficient to make out the requisite prima facie showing that Respondent lacks rights or legitimate interests in respect of the domain name. Since Respondent has failed to respond, this showing acts conclusively.
Complainant does not, and cannot, show Respondent’s bad faith under Policy ¶4(a)(iii).
Even if we assume for argument that Complainant established rights in one or all of the OPULENCE marks under Policy ¶4(a)(i), by its own admission the earliest date that Complainant might have secured such rights was on October 13, 2010, the date of the first use in commerce regarding the OPULENCE mark. On the other hand the WHOIS record for the at-issue domain name reveals that the <opulence.com> domain name was first registered in 2004. These two facts foreclose the Panel from finding bad faith registration and use under Policy 4(a)(iii).
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
WIPO, WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.1 (2d ed.).
As this Panel has set forth in prior decisions, it is axiomatic that if a complainant does not have trademark rights at the time of an at-issue domain name’s registration, there can be no bad faith registration on the part the domain registrant/respondent. Numerous decisions support this very logical proposition. For example see: Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO September 23, 2001); PrintForBusiness B.V v. LBS Horticulture, D2001-1182 (WIPO December 21, 2001); Edward Smith v. Douglas Bates, FA1483682 (Nat. Arb. Forum March 27, 2013).
Although there may be exceptions to this rule, such exceptions require that “it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.” See supra, WIPO Overview. The record in the instant case contains absolutely no evidence to support any contention that might allow an exception. Even if Complainant currently had rights in OPULENCE or one of the related at-issue marks, such rights would not magically extend to Respondent’s domain name or relate back to a time six years before the OPULENCE marks were claimed to have been first used in commerce.
Therefore, the Panel concludes that Complainant fails to meet it burden of proof regarding Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).
REVERSE DOMAIN HIJACKING
Rule ¶15 (e) defines reverse domain name hijacking as the filing of a complaint in bad faith resulting in the abuse of the UDRP administrative process.
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Rules 15(e).
There is no requirement that Rule 15(e) issues be raised on the record for a Panel to hold that a complaint was filed in bad faith. Therefore, and for at least the following reasons, the Panel considers and finds that the instant Complaint was brought in bad faith.
In bringing its Complaint and as discussed above, Complainant overtly disregards facts and law which should have been well known to Complainant prior to filing; namely that the at-issue domain name domain name was registered about six years prior to Complainant having any possible trademark interest in the OPULENCE mark(s),and that it is black letter in all but very specific circumstances a UDRP complaint must fail when the complainant lacks trademark rights at the time the at-issue domain name was first registered.
Since Complainant, through Counsel, knew, or should have known, that its Complaint should, and likely would, fail but nevertheless choose to file the Complaint anyway, the only purpose for doing so must have been in the hope that the reviewing panel would overlook Complainant’s lack of rights at the time the domain name was registered and erroneously rule in Complainant’s favor. Alternatively, Complainant may have filed its losing Complaint to intimidate an unwitting domain name’s owner into making a favorable deal with Complainant, rather than risk an unfavorable decision where he or she would get nothing. Filing a complaint for either of these purposes represents an abuse of the UDRP process.
Having NOT established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <opulence.com> domain name REMAIN with Respondent.
Paul M. DeCicco, Panelist
Dated: April 2, 2013
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