Nascent Blue, Inc. v. Harald Doering-Powell
Claim Number: FA1410001586824
Complainant is Nascent Blue, Inc. (“Complainant”), represented by Steve Hudson, Florida, USA. Respondent is Harald Doering-Powell (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nascentblue.com>, registered with Register.com, Inc.
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 October 27, 2014; the National Arbitration Forum received payment on October 27, 2014.
On October 27, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nascentblue.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 October 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2014 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@nascentblue.com. Also on October 29, 2014, 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 November 24, 2014, 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.
A. Complainant’s Contentions
1. Complainant has been incorporated and done business under the name Nascent Blue, Inc., a Florida corporation, since its incorporation in 2009. Complainant has operated online through the <nascentblue.com> domain name for four years.
2. Respondent in this case was a previous employee of Complainant who was authorized during his employment to register the <nascentblue.com> domain name on behalf of Complainant. However, Respondent registered the name to himself. Complainant paid the filing and administrative fees of the account under the expectation that Complainant was the rightful owner of the disputed domain name. In 2014, when Respondent left his employment with Complainant, Complainant discovered that the disputed domain name was registered to Respondent as the owner. Complainant was unaware of this as Respondent concealed the true identity of the holder. As Respondent was acting as Complainant’s agent in registering the name, and because Complainant borne all expenses associated with the name, Respondent lacks rights and legitimate interests in the disputed domain name.
3. Respondent’s bad faith is demonstrated by Respondent’s registration of the <nascentblue.com> domain name for himself when he had been authorized the register the disputed domain name on behalf of Complainant. Complainant now stands to suffer business damages resulting from the potential deactivation or sale of the domain name. Respondent’s continued efforts to control the domain name show clear intent to expose Complainant to significant risk, and therefore demonstrates Respondent’s bad faith.
B. Respondent’s Contentions
1. Respondent failed to submit a Response.
1. Respondent’s <nascentblue.com> domain name is confusingly similar to Complainant’s NASCENT BLUE mark.
2. Respondent does not have any rights or legitimate interests in the <nascentblue.com > domain name.
3. Respondent registered or used the <nascentblue.com > domain name 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.”).
The Panel notes that Complainant does not claim rights in the NASCENT BLUE mark through trademark registration. Previous panels have found that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i); instead, a complainant may establish its rights in the mark through common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims to have been incorporated and done business under the name Nascent Blue, Inc., a Florida corporation, since its incorporation in 2009. Complainant purports to use the NASCENT BLUE mark to provide model-driven development tools, IT services, and software architecture services. Complainant urges that it has used the <nascentblue.com> domain name for four years to operate online. The Panel notes that Complainant has included numerous pamphlets, information materials, case studies, and the like, to demonstrate its rights in the NASCENT BLUE mark. See Compl., at Attached Exs. A-J. After considering these documents, the Panel agrees that Complainant has established secondary meaning in the NASCENT BLUE mark for the purposes of demonstrating common law rights in the mark pursuant to 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); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
The Panel sees that Complainant does not make any contentions relating to the confusing similarity of the mark to the disputed domain name. However, for completeness, the Panel notes that the <nascentblue.com> domain name deviates from the NASCENT BLUE mark by the addition of a generic top-level domain (“gTLD”) and the omission of spacing. As previous panels have determined that the omission of spacing and the addition of a gTLD are inconsequential alterations under Policy ¶ 4(a)(i), the Panel determines the <nascentblue.com> domain name is identical to the NASCENT BLUE mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s 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 explains that Respondent was a previous employee of Complainant who was authorized during his employment to register the <nascentblue.com> domain name on behalf of Complainant. Complainant contends that Respondent instead registered the domain name to himself. The Panel notes that the WHOIS information lists “Harald Doering-Powell” as the registrant of record. In considering the issue of Policy ¶ 4(c)(ii)’s “commonly known as,” the Panel looks to Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002), where that panel found that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant. See also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Consistent with such precedent, the Panel agrees that there is no basis to hold that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant does argue that Respondent’s efforts to deceive and then deprive Complainant of the domain name demonstrate Respondent’s lack of rights in the disputed domain name. Complainant explains that after Respondent purportedly registered the domain name on Complainant’s behalf, Complainant paid the filing and administrative fees of the <nascentblue.com> account under the expectation that it was the rightful owner of the disputed domain name. Then in 2014, when Respondent left his employment with Complainant, Complainant discovered that the disputed domain name was registered to Respondent as the owner. Complainant maintains that Respondent essentially left with the domain name and has ignored all Complainant’s requests for its return. Prior panels have found a respondent lacks rights and legitimate interests in the domain name in similar circumstances. For example, in Anbex Inc. v. WEB-Common Techs. Grp., FA 780236 (Nat. Arb. Forum Sept. 19, 2006), the panel concluded that the respondent could not establish rights or legitimate interests under either Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where the respondent hijacked the complainant’s domain name and merely displayed the complainant’s website. See also Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark). The Panel agrees that the circumstances here demonstrate that Respondent lacks any rights or protections afforded by Policy ¶ 4(a)(ii), irrespective of the subsequent use, because Respondent effectively hijacked the domain name Complainant had authorized Respondent to register.
The Panel observes that Complainant has not made any arguments under the articulated Policy ¶ 4(b) provisions. Still, the Panel agrees that these provisions are merely illustrative, and Complainant may be able to demonstrate Respondent’s bad faith based on the totality. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant claims that Respondent registered the <nascentblue.com> domain name for himself when he had been authorized to register the disputed domain name on behalf of Complainant. Complainant urges that it now stands to suffer significant business damages given the ominous potential for deactivation or sale of the domain name. Complainant argues that Respondent’s continued efforts to control the domain name show clear intent to expose Complainant to significant risk, and therefore demonstrates Respondent’s bad faith. The Panel agrees that Respondent’s conduct falls within the parameters of bad faith envisioned under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (“the nature of the method by which Respondent acquired the disputed domain name registrations (effectively hijacking Complainant’s previous registration of the domain names) evidences bad faith use and registration of those domain names.”); DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (Nat. Arb. Forum Aug. 17, 2004) (“The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent wilfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nascentblue.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 5, 2014
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