j2 Global, Inc. dba j2 Global Communications, Inc. v. LCI / Omid Larijani
Claim Number: FA1307001509635
Complainant is j2 Global, Inc. dba j2 Global Communications, Inc. (“Complainant”), represented by Leanne Larsen, California, USA. Respondent is LCI / Omid Larijani (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <efaxer.net>, <efaxer.org>, <efaxhelper.com>, <efaxing.co>, and <efaxing.info>, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2013; the National Arbitration Forum received payment on July 15, 2013.
On July 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <efaxer.net>, <efaxer.org>, <efaxhelper.com>, <efaxing.co>, and <efaxing.info> 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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@efaxer.net, postmaster@efaxer.org, postmaster@efaxhelper.com, postmaster@efaxing.co, postmaster@efaxing.info. Also on July 17, 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 August 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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 names be transferred from Respondent to Complainant.
A. Complainant
1) Complainant contends it has rights in the EFAX mark, used in connection with telecommunications goods and services related to the receipt and transmission of documents and communications. Complainant is the owner of registrations for the EFAX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,786,350 registered Aug. 3, 1993).
2) Complainant’s eFax services have generated over $750 million in total revenue since 1989. Complainant’s eFax services are offered in forty-six countries and 3,500 cities worldwide. Complainant devotes substantial resources to advertising and marketing, including over $15 million in advertising in 2012.
3) The disputed domain names are confusingly similar to Complainant’s mark. All the disputed domain names include Complainant’s EFAX mark in its entirety. The <efaxer.net> and <efaxer.org> domain names add “er” to Complainant’s mark. The <efaxing.co> and <efaxing.info> domain names add “ing” to Complainant’s mark. The <efaxhelper.com> domain name adds the word “helper” to Complainant’s mark. All the disputed domain names include a generic top level domain (“gTLD”).
4) Respondent does not own any rights or legitimate interests in the disputed domain name.
a) Respondent is not commonly known by the disputed domain names. The WHOIS record for the disputed domain names lists either “LCI” or “Omid Larjani” as the domain name registrant. Further, Complainant has not authorized Respondent to use its EFAX mark in any way.
b) The disputed domain names resolve to blank, parked pages.
5) Respondent registered and is using the disputed domain names in bad faith.
a) Respondent’s registrations of numerous domain names, including Complainant’s mark, demonstrates a pattern of conduct meant to prevent Complainant from reflecting its EFAX mark in corresponding domain names.
b) Respondent had notice of Complainant’s mark prior to registered the disputed domain names because of Complainant’s longstanding rights in the EFAX mark and the mark’s wide recognition in the United States and internationally.
c) Respondent’s non-use of the disputed domain names infers bad faith.
d) Respondent’s bad faith is also evidenced by the fact that Respondent continues to use the disputed domain names after receiving a cease and desist letter from Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends it has rights in the EFAX mark, used in connection with telecommunications goods and services related to the receipt and transmission of documents and communications. Complainant states it is the owner of registrations for the EFAX mark with the USPTO (e.g., Reg. No. 1,786, 350 registered Aug. 3, 1993). Therefore, the Panel finds that Complainant has rights in the EFAX mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant next alleges that the disputed domain names are confusingly similar to Complainant’s mark. Complainant notes that all the disputed domain names include Complainant’s EFAX mark in its entirety. The <efaxer.net> and <efaxer.org> domain names add “er” to Complainant’s mark. The <efaxing.co> and <efaxing.info> domain names add “ing” to Complainant’s mark. The <efaxhelper.com> domain name adds the word “helper” to Complainant’s mark. Complainant also notes that all of the disputed domain names include a gTLD. The Panel finds that the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the addition of the letters “er” or “ing” does not sufficiently distinguish the <efaxer.net> and <efaxer.org> or the <efaxing.co> and <efaxing.info> domain names from Complainant’s mark. See Xcentric Ventures, LLC d/b/a www.RipoffReport.com v. yourdomainserver.com c/o YDS Web Solution, FA 1298258 (Nat. Arb. Forum Jan. 8, 2010) (finding that the addition of the letters “er” or “ers” to the end of Complainant’s RIP-OFF REPORT mark does not sufficiently distinguish the disputed domain names from Complainant’s mark); see also Square 1 Bank v. Kurt Bowker, FA 1484016 (Nat. Arb. Forum March 31, 2013) (finding that the addition of “ing” to the end of Complainant’s mark does not sufficiently distinguish the disputed domain name from Complainant’s mark). The Panel finds that the addition of the generic term “helper” to the <efaxhelper.com> domain name does not distinguish this disputed domain name from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Therefore, the Panel finds that Respondent’s <efaxer.net>, <efaxer.org>, <efaxhelper.com>, <efaxing.co>, and <efaxing.info> domain names are confusingly similar to Complainant’s EFAX mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 claims Respondent does not own any rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names. Complainant asserts that the WHOIS record for the disputed domain names lists either “LCI” or “Omid Larjani” as the domain name registrant. Further, Complainant claims that it has not authorized Respondent to use its EFAX mark in any way. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the EFAX mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <efaxer.net>, <efaxer.org>, <efaxhelper.com>, <efaxing.co>, and <efaxing.info> domain names within the meaning of Policy ¶ 4(c)(ii).
Complainant next alleges that the disputed domain names resolve to blank, parked pages. Past panels have found a failure to make an active use of a disputed domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that because Respondent has failed to make an active use of the disputed domain names, Respondent’s use of the <efaxer.net>, <efaxer.org>, <efaxhelper.com>, <efaxing.co>, and <efaxing.info> domain names is not a bona fide offering of goods under Policy ¶ 4(c)(i) or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant contends Respondent registered and is using the disputed domain names in bad faith. Complainant urges that Respondent’s registration of numerous domain names including Complainant’s mark demonstrates a pattern of conduct meant to prevent Complainant from reflecting its EFAX mark in corresponding domain names. Past panels have inferred bad faith registration and use when a respondent has multiple domain names involved in the proceeding currently before the panel. See Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith). Therefore, the Panel finds that Respondent’s registration of the <efaxer.net>, <efaxer.org>, <efaxhelper.com>, <efaxing.co>, and <efaxing.info> domain names constitutes a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Complainant alleges that Respondent had notice of Complainant’s mark prior to registering the disputed domain names because of Complainant’s longstanding rights in the EFAX mark and the mark’s wide recognition in the United States and internationally. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant asserts that Respondent’s non-use of the disputed domain names infers bad faith. Past panels have found that a failure to make an active use constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Therefore, the Panel finds that Respondent’s failure to make an active use of the <efaxer.net>, <efaxer.org>, <efaxhelper.com>, <efaxing.co>, and <efaxing.info> domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Lastly, Complainant contends that Respondent’s bad faith is also evidenced by the fact that Respondent continues to use the disputed domain names after receiving a cease and desist letter from Complainant. In RRI Financial Inc. v. Ray Chen, D2001-1242 (WIPO Dec. 11, 2001), the panel found that failure to respond to the demands of a cease and desist letter is a factor supporting a finding of bad faith. Therefore, the Panel finds that Respondent’s failure to respond to the demands of the cease and desist letter provide further evidence of the bad faith.
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <efaxer.net>, <efaxer.org>, <efaxhelper.com>, <efaxing.co>, and <efaxing.info> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 16, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page