Valeant International Bermuda v. DNS Administrator
Claim Number: FA1408001573544
Complainant is Valeant International Bermuda (“Complainant”), represented by Rebecca R. Younger of Pirkey Barber PLLC, Texas, USA. Respondent is DNS Administrator (“Respondent”), represented by Samantha M. Quimby of Frost Brown Todd LLC, Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ambi.com>, registered with Moniker Online Services 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2014; the National Arbitration Forum received payment on August 5, 2014.
On August 12, 2014, Moniker Online Services LLC confirmed by email to the National Arbitration Forum that the <ambi.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ambi.com. Also on August 13, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 2, 2014.
A timely Additional Submission was received from Complainant and determined to be complete on September 9, 2014.
A timely Additional Submission was received from Respondent and determined to be complete on September 12, 2014.
On September 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant states that it has used the AMBI trademark for many years to identify its skin care and beauty products. The mark is registered in many countries, and Complainant’s U.S. trademark registrations date back to 1970.
The disputed domain name <ambi.com> was registered in May 2007 by 3C Capital, LLC, and shortly thereafter the registration was transferred into the name of a privacy service. Although the registrant now is listed as DNS Administrator, Complainant alleges that the domain name remains under the control of 3C Capital, LLC.
Complainant contends that the disputed domain name <ambi.com> is identical or confusingly similar to its AMBI mark. Complainant contends further that Respondent has no rights or legitimate interests in the domain name, and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant alleges that Respondent is not commonly known by the domain name, has not been licensed or otherwise permitted to use Complainant’s marks, and has not made a bona fide use of the domain name. Complainant asserts that Respondent has used the domain name in connection with a website entitled “American Beauty Institute” and purporting to offer beauty and skin care products or depicting images of such products, and has offered the domain name for sale, at one point for US$100,000. In March 2014, Complainant states that it sent a cease-and-desist letter to Respondent, and immediately thereafter Respondent changed the content of the website associated with the domain name to a display a statement that the website would be used to provide software for youth hockey leagues.
B. Respondent
Respondent contends that the disputed domain name is not identical or confusingly similar to a mark in which Complainant has rights, noting that AMBI appears in many other trademarks that are unrelated to Complainant, and that it is also a Latin term and an acronym.
Respondent contends further that it has rights or legitimate interests in the disputed domain name, arising from its intent and preparations to use the domain name in connection with a platform for scheduling youth hockey and other recreational sporting events on a reciprocal basis; and denies that it registered or has used the domain name in bad faith. In support thereof, Respondent states that it acquired the domain name at auction in 2007 with this sports scheduling venture in mind, and that while it was aware of the use of AMBI by other businesses, it did not believe that such use would preclude Respondent’s intended use of the domain name. Respondent states that in 2008, it contracted with Alex Kane, a programmer, to provide services in connection with the venture; that it applied for a patent for its reciprocal scheduling technology in 2009, which issued in 2012; and that while it has parked the domain name, it has done so in a manner that prevents the appearance of links to products or services of Complainant and other AMBI trademark owners. (Respondent notes that the links appearing on the page entitled “American Beauty Institute” in August 2007, subsequent to Respondent’s acquisition of the domain name, are for tweezers—a product not offered by Complainant—rather than beauty and skin care products.) The supporting evidence presented by Respondent includes affidavits of its principal (Marc Friedfertig) and Alex Kane, copies of its patent applications, and selected internal email correspondence from 2008.
C. Additional Submissions
Complainant’s Additional Submission consists primarily of allegations reiterated from the Complaint and responses to statements appearing in the Response. Complaint also accuses Respondent of being “an established domainer with a history of registering infringing domain names,” noting that a reverse Whois search for email and postal addresses associated with Respondent and the name of Respondent’s principal shows that Respondent owns over 800 domain names, of which at least 40 are comprised of third party trademarks or celebrity names.
Paragraph 12 of the Rules confers upon the Panel the sole discretion to decide whether to receive supplemental material from the parties, and a Panel should consider such material only in exceptional circumstances, such as where the material reflects newly discovered evidence or rebuts arguments that could not reasonably have been anticipated. See, e.g., Civic Non-Partisan Ass’n v. Charko, FA 1489087 (Nat. Arb. Forum May 20, 2013); America Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006). Complainant fails to identify any exceptional circumstances that would warrant the Panel’s consideration of additional material. Furthermore, Complainant could easily have included the reverse Whois search and “established domainer” accusation in its initial Complaint, since all of the associated names and addresses appeared in that submission, rather than presenting the matters for the first time in its Additional Submission. For these reasons, the Panel declines to exercise its discretion to consider Complainant’s Additional Submission. As Respondent’s Additional Submission is merely a reply to Complainant’s Additional Submission, the panel declines to consider it as well.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.
The disputed domain name is identical to Complainant’s registered trademark, but for the addition of the “.com” top-level domain, which is irrelevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Abt Electronics, Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (finding <abt.com> identical to ABT). The fact that other parties may also have trademark rights in the same or similar terms is irrelevant. Nor does it matter that the term is susceptible to use in senses other than as a trademark: Complainant’s burden here is merely to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights. See, e.g., Skycam, Inc. v. Administrator, Domain / Vertical Axis, Inc, FA 1372311 (Nat. Arb. Forum Apr. 29, 2011) (finding trademark rights in SKYCAM, but rejecting complaint on other grounds); Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding trademark rights in ST. MORITZ, but rejecting complaint on other grounds). The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant’s allegations and supporting evidence suffice to state a prima facie case, shifting the burden of production to Respondent. Under paragraph 4(c)(i) of the Policy, rights or legitimate interests may be shown by evidence of “demonstrable preparations to use[] the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” prior to any notice of the dispute.
Respondent’s position is that it has acquired rights or legitimate interests by virtue of its reciprocal sports scheduling platform venture and its intended use of the domain name in connection with that venture. Respondent has produced sufficient evidence to persuade the Panel that it has engaged in demonstrable preparations to engage in the venture, but it is not clear that Respondent acquired the domain name intending to use it for that purpose (or, indeed, that the domain name had any connection whatsoever to the venture until after Respondent was contacted by Complainant in 2014). The only evidence to that effect is contained in the self-serving affidavits of Marc Friedfertig and Alex Kane. Kane’s affidavit says that he and Friedfertig “had discussed the eventual use of the AMBI.COM domain name for the multi-sport scheduling software program” but decided to focus on marketing the program for youth hockey first.
The Panel considers it noteworthy that none of the email correspondence presented by Respondent contains any mention of the disputed domain name in connection with the sports scheduling venture, and that the only evidence of such a connection is contained in self-serving affidavits of persons connected with Respondent that were prepared specifically for purposes of this proceeding. Respondent could easily have included copies of email correspondence or other contemporaneous documents connecting the venture with the disputed domain name, if such a connection in fact existed. Since such information is uniquely within Respondent’s knowledge and control, it is entirely appropriate for the Panel to draw an adverse inference from its absence. See, e.g., Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (Respondent’s failure to present information “uniquely within the knowledge and control of the respondent ... is tantamount to admitting the truth of complainant's assertions”); Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (“Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent”).
The Panel concludes that Respondent has failed to rebut Complainant’s prima facie case with concrete evidence of rights or legitimate interests in the disputed domain name, and thus finds that Complainant has met its burden with respect to this element.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s use of the domain name to display apparently commercial links on a page entitled “American Beauty Institute” indicates an intent to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. The title of the page itself represents an effort to associate the page with Complainant’s industry, and Respondent presumably stood to gain by inducing Internet users to click on the links to tweezers and “related topics” displayed on the page. Furthermore, while Respondent’s subsequent publication of an offer to sell the domain name does not appear on its face to have been targeted specifically at Complainant or its competitors, it is not unreasonable to infer (based in part upon Respondent’s previous use of the domain name) that Respondent was aware of Complainant’s mark at that time and probably considered Complainant or a competitor thereof to be the most likely purchaser of the domain name.
Taking into account all of the evidence in the record, the Panel considers it more likely than not that Respondent acquired and subsequently used the domain name with the intent to profit from its correspondence to Complainant’s mark; and that after receiving the cease-and-desist letter from Complainant, Respondent sought to associate the domain name with its previously unrelated venture involving sports scheduling software as a pretext. The Panel therefore finds that the domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ambi.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 15, 2014
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