Broadnet Teleservices, LLC v. SUN, MICHAEL
Complainant is Broadnet Teleservices, LLC (“Complainant”), represented by James R. Menker of Holley & Menker, P.A., Florida, USA. Respondent is SUN, MICHAEL (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <broadnet.com>, registered with Network Solutions, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2015; the Forum received payment on June 24, 2015.
On June 25, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <broadnet.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2015 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@broadnet.com. Also on June 25, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following contentions
Complainant uses the BROADNET mark in conjunction with telecommunications services, including automated telephonic calling, messaging, and conferencing and related services. Complainant has registered the BROADNET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,539,758, registered December 2, 2008), which demonstrates its rights in the mark. The <broadnet.com> domain name is confusingly similar to the BROADNET mark as it simply adds the generic top-level domain (“gTLD”) “com.”
Respondent has no rights or legitimate interests in the <broadnet.com> domain name. Respondent is not commonly known by the <broadnet.com> domain name. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name or providing a legitimate noncommercial or fair use. Instead, the resolving website has been inactively held since at least 2009. See Compl., at Attached Ex. 4 (Internet Archive Wayback Machine). Respondent has also offered the <broadnet.com> domain name for sale to Complainant in the amount of $10,000.00 with an expressed interest in entering into a business partnership with Complainant.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent offered to sell Complainant the disputed domain name for an amount well in excess of Respondent’s out-of-pocket costs. See Compl., at Attached Exs. 7-8 (email correspondence). Further, Respondent has engaged in bad faith through its inactive holding of the disputed domain name, which continued through the domain’s February 2012 renewal by Respondent during the parties’ settlement negotiations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of telecommunications services, including automated telephonic calling, messaging, and conferencing and related services.
2. Complainant is the registered owner of the BROADNET mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,539,758, registered December 2, 2008).
3. The disputed domain name was registered on October 16, 1998 and since then Respondent has renewed the registration of the domain name most recently on February 27, 2012. The operative date for determining registration and use of the domain name in bad faith is February 27, 2012.
4. The resolving website of the disputed domain name has been inactively held since at least 2009. Respondent has also offered the <broadnet.com> domain name for sale to Complainant in the amount of $10,000.00 with an expressed interest in entering into a business partnership with Complainant.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the BROADNET mark in conjunction with telecommunications services, including automated telephonic calling, messaging, and conferencing and related services. Complainant has registered the BROADNET mark with the USPTO (e.g., Reg. No. 3,539,758, registered December 2, 2008), and argues that this trademark registration demonstrates its rights in the mark. Past panels have concluded that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).Complainant therefore has trademark rights in the BROADNET mark.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BROADNET mark. Complainant argues that the <broadnet.com> domain name is confusingly similar to the BROADNET mark as it simply adds the gTLD “com” to the trademark. The Panel agrees that the addition of a generic gTLD does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the trademark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant has thus made out the first of the three elements that it must establish.
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BROADNET mark and to use it in its domain name adding only the top level domain “.com”;
(b) Respondent registered the disputed domain name on October 16, 1998;
(c) The resolving website of the disputed domain name has been inactively held since at least 2009. Respondent has also offered the <broadnet.com> domain name for sale to Complainant in the amount of $10,000.00 with an expressed interest in entering into a business partnership with Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interest in the <broadnet.com> domain name. The Panel notes that Complainant does not argue that Respondent is not commonly known by the disputed domain name or the BROADNET mark. The Panel also notes that the WHOIS information for the disputed domain name merely lists “SUN, MICHAEL.” Past panels have found that a respondent cannot be commonly known by a disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Accordingly, the Panel finds that, based on the WHOIS information, Respondent is not commonly known by the <broadnet.com> domain name mark pursuant to Policy ¶ 4(c)(ii);
(f) Complainant also contends that Respondent is not making a bona fide offering of goods or services through the disputed domain name or providing a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. Complainant submits that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name. The Panel has reviewed Attached Annex A to the Complaint (Declaration of Brian Brown), wherein Complainant argues that Respondent has not operated a functioning website using the disputed domain name in the last eleven years. See also Attached Exhibits 3 and 4 for Internet Archive Wayback Machine screenshots of the disputed domain name from 2004 and 2009, respectively. Past panels have found that a respondent lacked rights or a legitimate interest in a confusingly similar domain name where it had not made demonstrable preparations to use a disputed domain name. 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 agrees that Respondent has failed to use the <broadnet.com> domain name actively and evince any bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g)Further, Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent previously offered to sell his rights to the disputed domain name to Complainant for more than his reasonable out-of-pocket costs. The Panel notes Complainant’s Attached Exhibit 5 for what seems be a GoDaddy offer for purchase of the disputed domain name for $59.99. The Panel compares such an offer with email correspondence at Attached Exhibits 7 and 8 where Respondent is engaged with Complainant in negotiations surrounding the purchase of the <broadnet.com> domain name for $10,000.00. Past panels have found that a respondent lacks rights or legitimate interests in a disputed domain name after it offers the domain name for sale for more than its out-of-pocket costs. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services or providing a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has engaged in bad faith registration and use of the <broadnet.com> domain name. First, Complainant argues that Respondent offered the disputed domain name for sale at a price well above Respondent’s out-of-pocket costs. The Panel notes that Complainant has submitted Attached Exhibits 7 and 8 for the Panel’s consideration, which demonstrate Respondent’s attempt to sell the disputed domain name for $10,000.00. Past panels have found bad faith where a respondent has attempted to sell a disputed domain name to a complainant for an amount in excess of the respondent’s out-of-pocket costs. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Accordingly, the Panel concludes that, pursuant to Policy ¶ 4(b)(i), Respondent’s attempt to sell the disputed domain name to Complainant demonstrates bad faith.
Secondly,the Panel notes that Complainant submits that Respondent’s renewal of the <broadnet.com> domain name, alleged to be February 2012, should be treated as the operative date when considering rights in the domain name as the parties were supposedly in a protracted settlement process surrounding the disputed domain name and the Panel agrees. See Compl., at Attached Exs. 7-8 (email correspondence). In Houlberg Dev. v. Adnet Int’l, FA 95698 (Nat. Arb. Forum Oct. 27, 2000) the panel held that as the respondent had actual knowledge of the complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name, the domain name was renewed in violation of ICANN Policy ¶ 2(b) and hence in bad faith). Accordingly, the Panel finds Respondent’s actual knowledge when renewing the disputed domain name as indicative of its bad faith intent to deprive the owner of a confusingly similar mark under Policy ¶ 4(a)(iii) in light of its exposure with Complainant. See 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).
Thirdly, Complainant further alleges that Respondent is engaging in general bad faith pursuant to Policy ¶ 4(a)(iii). Complainant argues that Respondent has demonstrated bad faith by inactively holding the disputed domain name for more than eleven years, as shown by its Attached Exhibits 3 and 4. The Panel therefore finds that the inactive holding of the disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Fourthly, Complainant argues that Respondent demonstrated bad faith by providing false information to a domain registrar. The Panel notes Attached Annex A with additional information regarding the false information Respondent allegedly provided to the domain registrar. Past panels have found that a respondent’s use of false information when registering a domain name is evidence of bad faith. See McDonald’s Corp. v. Holy See, FA 155458 (Nat. Arb. Forum June 27, 2003) (holding that the respondent’s use of falsified information when it registered the disputed domain name was evidence that the domain name was registered in bad faith, despite the respondent’ claim that such an action was necessary to protect it from a reprisal by the complainant). The Panel so finds in the present case.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <broadnet.com> domain name using the BROADNET mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <broadnet.com> Domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 23, 2015
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