International Gold and Silver Exchange, Inc. v. Craig Jacobson
Claim Number: FA1304001494860
Complainant is International Gold and Silver Exchange, Inc. (“Complainant”), represented by William K. Forbes, Minnesota, USA. Respondent is Craig Jacobson (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <igseinc.info> and <igseinc.net>, registered with Godaddy.Com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2013; the National Arbitration Forum received payment on April 15, 2013.
On April 15, 2013, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <igseinc.info> and <igseinc.net> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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 April 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@igseinc.info, postmaster@igseinc.net. Also on April 19, 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 May 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
1. Complainant is in the business of helping investors pursue their personal financial goals by facilitating the purchase of physical gold, silver, and precious metals. Complainant has used the IGSE, Inc. mark in trade since 2010. Complainant has used the mark continuously and has invested resources and efforts into advertising and promoting the mark. Complainant has registered the IGSE mark with the State of Minnesota. See Minnesota Reg. No. 61352200028 issued Aug. 17, 2012. Complainant has produced marketing materials for its business that feature the IGSE, Inc. mark. See Complainant’s Ex. C.
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
3. Respondent has had no affiliation with Complainant since his termination. Respondent is not commonly known by the name IGSE, Inc.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
5. Respondent seeks to use the domain names solely to pressure Complainant into paying Respondent’s demanded fees for the domain names.
Respondent’s Contentions
Respondent did not submit a Response.
1. Respondent’s <igseinc.info> and <igseinc.net> domain names are confusingly similar to Complainant’s IGSE, Inc. mark.
2. Respondent does not have any rights or legitimate interests in the <igseinc.info> and <igseinc.net> domain names.
3. Respondent registered or used the <igseinc.info> and <igseinc.net> domain names 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.
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 argues that it is in the business of helping investors pursue their personal financial goals by facilitating the purchase of physical gold, silver, and precious metals. Complainant claims that it has used the IGSE, Inc., mark in trade since 2010. Complainant argues that it has used the mark continuously and has invested resources and efforts into advertising and promoting the mark. Complainant’s business operates from the <igseinc.com> domain name. Complainant notes that it has registered the IGSE mark with the State of Minnesota. See Minnesota Reg. No. 61352200028 issued Aug. 17, 2012. Complainant also notes that it has produced marketing materials for its business that feature the IGSE, Inc. mark. See Complainant’s Ex. C. The Panel initially agrees that state trademark registrations are rarely distinctive enough to establish rights in a mark. But see Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP). The Panel agrees that Complainant has shown that its use of the IGSE, Inc., mark in commerce consistently since 2010, demonstrating that Complainant has common law rights in the mark dating back to that time under Policy ¶ 4(a)(i). See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).
Complainant argues that both of the domain names incorporate the entire IGSE, Inc. mark. Complainant concludes that confusing similarity exists because the domain names consist predominantly of Complainant’s mark. The Panel agrees that the domain names are identical to the mark when the only changes made to the mark were the deletion of spacing and punctuation, and the addition of generic top-level domains (“gTLDs”) such as “.info” and “.net.” See 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”); Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Therefore the Panel concludes that the <igseinc.info> and the <igseinc.net> domain names are identical to the IGSE, Inc. mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 argues that Respondent has had no affiliation with Complainant since his termination. Complainant contests that Respondent is not commonly known by the name. The Panel notes that the WHOIS information merely reflects Complainant’s assertion that Respondent is “Craig Jacobson.” The Panel agrees that when no evidence in the record shows otherwise, Respondent is not commonly known as 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).
Complainant argues that Respondent was an independent contractor whose services were retained by Complainant. Complainant notes that Respondent’s contract was terminated on March 4, 2012, and thereafter Respondent took control of Complainant’s electronic business infrastructure—including domain names. Complainant avers that Respondent registered both the <igseinc.info> and the <igseinc.net> domain names in retaliation and sought to extort money from Complainant in exchange for the domain names. Complainant believes that Respondent had no purpose for registering these domain names beyond extortion. The Panel notes that there is no evidence in the record as to whether there is an active use being made of the domain names, or as to whether Respondent has in fact made an offer to sell the domain names. The Panel agrees that Respondent’s registration and holding of these domain names solely for purposes of extorting favors or cash from Complainant does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods and services, nor is such a use a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Complainant argues that Respondent seeks to use the <igseinc.info> and the <igseinc.net> domain names solely to pressure Complainant into paying Respondent’s demanded fees for the domain names. The Panel again notes that there is no other evidence as to what Respondent’s offer of sale may have been. The Panel agrees with Complainant and determines that Respondent’s registration and use of this domain name primarily to “exact revenge” on Complainant by way of extortion constitutes Policy ¶ 4(b)(i) bad faith. See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”) .
Complainant also argues that Respondent had actual knowledge of Complainant’s rights, as Respondent had previously been retained by Complainant as a contractor and was well aware of Complainant’s use of the mark in trade. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <igseinc.info> and <igseinc.net> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 31, 2013
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