Andrew E. Clements v. WHOIS PROXY by ULTRA-DOMAIN / ULTRA-DOMAIN
Claim Number: FA1701001711347
Complainant is Andrew E. Clements (“Complainant”), Maine, USA. Respondent is WHOIS PROXY by ULTRA-DOMAIN / ULTRA-DOMAIN (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frindle.com>, registered with Key-Systems GmbH.
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 January 7, 2017; the Forum received payment on January 7, 2017. The Complaint was received in both Japanese and English.
On January 10, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <frindle.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 12, 2017, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of February 1, 2017 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@frindle.com. Also on January 12, 2017, the Japanese language 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 February 2, 2017, 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, Andrew E. Clements, is an author. Complainant published the book FRINDLE in 1996 and has registered the FRINDLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,504,108, registered April 1, 2014).
Respondent’s FRINDLE mark and the associated domain name is valuable only to Complainant as it is a fanciful term that was coined by Complainant. Respondent cannot have any rights in the domain name or the mark.
Respondent took advantage of Complainant’s lapse in registration of the domain name and has shown bad faith through attempting to sell the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Registration Agreement for the disputed domain name is written in Japanese, thereby making Japanese the language of the proceeding. The Panel has accordingly reviewed the applicable rules on language of the proceedings under the UDRP. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Complainant is an author who published the book Frindle in 1996.
2. Complainant registered the FRINDLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,504,108, registered April 1, 2014).
3. Respondent registered the disputed domain name on May 7, 2015 having taken advantage of Complainant’s lapse in renewing the registration of the domain name.
4. Respondent has shown bad faith registration and use of the domain name by attempting to sell it.
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(f), 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 (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 question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that he has rights in the FRINDLE mark through registration of the mark with the USPTO (Reg. No. 4,504,108, registered April 1, 2014). The Panel accepts that evidence. See Compl., at Attached Ex. 2. Panels have routinely held, and this Panel holds, that registration of a mark with the USPTO is sufficient to demonstrate rights in a mark. See AOL LLC v. Interrante, FA 681239 (Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FRINDLE mark. It should be pointed out here that Complainant coined the expression FRINDLE in connection with the title of a book he wrote, named Frindle, which was translated into many languages including Japanese. Although Complainant does not argue it, the Panel finds that Respondent’s <frindle.com> domain name is identical to the FRINDLE mark under Policy ¶ 4(a)(i). Respondent’s domain name includes the entire FRINDLE mark and merely adds the generic top-level domain “.com,” which has been held in previous decisions not to negate a finding, otherwise open on the evidence, that a domain name is identical or confusing similar to the domain name in question. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). In the present case, there is no difference between the domain name and the trademark and the Panel finds that they are identical.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 (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 (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.”).
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 FRINDLE mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on May 7, 2015;
(c) It is clear on the evidence as a whole that Respondent registered the disputed domain name having taken advantage of Complainant’s lapse in renewing its registration and has since been trying to sell it for profit, in all probability to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that no other person besides Complainant could have rights or find value in the FRINDLE mark as it is a fanciful term that Complainant created for his children’s book of the same name. Panels have held that a respondent is not commonly known by a disputed domain name where the domain name is comprised of fanciful terms and where the evidence so indicates. See G.D. Searle & Co. v. Sean, FA 129128 (Forum Dec. 27, 2002) (“[A]s Complainant's mark is a fanciful term specifically coined by Complainant, it is doubtful that anyone other than Complainant could claim to be ‘commonly known by’ a derivative of the mark.”). The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant also submits that Respondent’s acquisition of the domain name for sale or otherwise would be illegitimate. Complainant claims that Respondent has attempted to sell the disputed domain name, in all probability to Complainant. See Compl., at Attached Ex. 7. Panels have held that attempting to sell a disputed domain name for an amount in excess of out-of-pocket costs may, subject to the evidence, demonstrate a lack of rights or legitimate interests in the domain name. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum December 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). The Panel finds on the evidence that Respondent’s intention to sell the domain name indicates a lack of Respondent’s rights or legitimate interests in the disputed domain name.
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 does not have a right or legitimate interest 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 claims that Respondent has registered and is using the disputed domain name in bad faith. Complainant has included evidence to indicate that Respondent has listed the disputed domain name on <sedo.com> in an attempt to sell it. See Compl., at Attached Ex. 7. In fact, after offering Respondent $500.00 to buy the disputed domain name Respondent countered with $999.00 at which point Complainant halted contact and initiated this proceeding. See Id. Panels have held that a respondent’s attempt to sell a domain name in excess of out-of-pocket costs may demonstrate bad faith under Policy ¶(b)(i) if supported by the evidence. See George Weston Bakeries Inc. v. McBroom, FA 933276 (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). It should be pointed out here that Complainant was the previous registrant of the domain name and that the registration was due to expire on February 7, 2015. Complainant says that because of a communications error he did not renew the registration when it expired. On May 7, 2015, Respondent registered the domain name at the same time as Complainant’s options to renew the registration expired. The domain name was subsequently put up for sale on Sedo, leading to the reasonable inference that it was more likely than not that the intention of Respondent was that Complainant would be forced to buy the domain name. The Panel therefore finds on the totality of the evidence that Respondent’s behavior demonstrates bad faith under Policy ¶ 4(b)(i).
Secondly, as Complainant has shown, if Respondent had conducted a search on the internet, it would have found that the term “frindle” in the domain name has been used, and probably exclusively, in connection with Complainant and his book. Further, having done so and proceeding to register the domain name, knowing that fact, is itself an act of bad faith, as it must have been apparent to Respondent that registering the domain name would probably interfere with Complainant’s business. Proceeding to register the domain name without such a search was in all the circumstances also an act of bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the FRINDLE mark and in view of the conduct that Respondent has
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 <frindle.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 13, 2017
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