Benchemark Printing, Inc. v. Mark Sharadin
Claim Number: FA1308001515137
Complainant is Benchemark Printing, Inc. (“Complainant”), represented by Nicholas Mesiti of Heslin Rothenberg Farley & Mesiti P.C., New York, USA. Respondent is Mark Sharadin (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benchemark.com>, registered with WILD WEST DOMAINS, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2013; the National Arbitration Forum received payment on August 16, 2013.
On August 16, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <benchemark.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 August 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@benchemark.com. Also on August 23, 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.
A timely Response was received and determined to be complete on September 12, 2013.
Complainant submitted an Additional Submission, which was received and found compliant on September 17, 2013.
On September 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Mark and the Nature of the Disputed Domain Name
Policy ¶ 4(a)(ii): Rights and Legitimate Interests
Policy ¶ 4(a)(iii): Bad Faith
Laches
B. Respondent
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Laches
C. Additional Submissions
Laches
Complainant generally reasserts its contentions regarding the inapplicability of the doctrine of laches to UDRP proceedings. Complainant further adds that it reached out to Respondent informally several times between now and Respondent’s termination, and thus Respondent has not in fact been allowed to use this domain name without Complainant’s objection for nearly as long as claimed.
Complainant is Benchemark Printing, Inc. of Schenectady, NY, USA. Complainant is the owner of the BENCHEMARK mark for which it secured a USA trademark registration on June 18, 2013. Complainant claims that is has continuously used the mark since 1985 for its printing services business. Complainant also owns several domain names including <benchemark.net> (1998) and <benchemarkprinting.com> (2010).
Respondent is Mark Sharadin of Ballston Spa, NY, USA. Respondent’s registrar’s address is indicated as Scottsdale, AZ, USA. Respondent claims to have worked for the Complainant for approximately 5 years and states that a Benchemark senior management employee advised him to register the disputed domain name on or about April 8, 1998. Respondent refused to transfer the domain name to Complainants when asked on or about February 2, 1999.
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 claims that it uses the BENCHEMARK mark to identify its bindery services, namely through the binding of print materials. Complainant states that it has registered the BENCHEMARK mark with the USPTO (Reg. No. 4,353,719, registered on June 18, 2013; filed October 24, 2012). The Panel notes that USPTO registration is satisfactory evidence of Policy ¶ 4(a)(i) rights. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel finds that this registration dates back Complainant’s Policy ¶ 4(a)(i) rights to October 24, 2012. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Complainant argues that Respondent has registered the <benchemark.com> domain name, which is virtually identical to the BENCHEMARK mark, as the only addition is the indistinguishing gTLD “.com.” The Panel finds that the domain name at issue is identical to Complainant’s mark. See, e.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has NOT met this burden.
Respondent claims that Complainant advised Respondent to acquire and maintain the <benchemark.com> domain name since about April 8, 1998. Complainant does not directly address Respondent’s contention in that regard. Complainant does indirectly acknowledge that Respondent was an employee, at least as it bears on Respondent’s knowledge that Complainant did business under the BENCHEMARK mark. Complainant also characterizes Respondent as a disgruntled former employee. Complainant and Respondent both agree that discussions were held between the parties regarding the transfer of the domain name however the parties disagree about the frequency and substance of the discussions. The parties agree that the domain name is inactive but inactivity alone does not indicate a lack of rights or legitimate interest in a domain name. See, e.g., Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint).
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). While the Panel finds that Complainant has failed to meet its burden the Panel does not find that Respondent’s assertions indicate that Respondent has established rights and a legitimate interests in the disputed domain name. The matter is best resolved in a forum constructed to resolve breach of contract, breach of fiduciary duty, and like types of employment disputes. The UDRP setting is not the proper mechanism for resolving labor and employment conflicts. See, Latent Technology Group, Inc. v. Bryan Fitchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel).
The Complainant has NOT proven this element.
Because the Panel finds that Complainant failed to establish a prima facie case that Respondent lacks rights or legitimate interests in the <benchemark.com> domain name it is unnecessary to address this element.
DECISION
Because the Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that <benchemark.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: October 03, 2013
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