Clark Enterprises, Inc. v. Clark Enterprises, Inc.
Claim Number: FA1708001744498
Complainant is Clark Enterprises, Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Clark Enterprises, Inc. (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarkenterpriseinc.com>, registered with Godaddy.Com, Llc.
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 Forum electronically on August 14, 2017; the Forum received payment on August 14, 2017.
On August 15, 2017, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <clarkenterpriseinc.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, 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 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@clarkenterpriseinc.com. Also on August 22, 2017, 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 September 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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:
1. Complainant, Clark Enterprises, Inc. uses the CLARK ENTERPRISES mark to provide and market products and services. Complainant offers a serial number and date for a pending trademark application for the CLARK ENTERPRISES mark. See Amend. Compl., at Attached Annex B. Respondent’s <clarkenterpriseinc.com> is identical or confusingly similar as it contains Complainant’s CLARK ENTERPRISES mark in its entirety, merely removing the space and the letter “s”, adding the generic term
“inc”, and the generic top level domain (“gTLD”) “.com.”
2. Respondent does not have rights or legitimate interests in the <clarkenterpriseinc.com> domain name. Complainant has not granted respondent permission or license to use the CLARK ENTERPRISES mark for any purpose. [Respondent fails to make any ¶¶ 4(c)(i), (ii), and (iii) arguments.]
3. Respondent has registered and used the <clarkenterpriseinc.com> domain name in bad faith. Respondent is using the domain name to disrupt Complainant’s business. Respondent is using the domain name to attract Internet users for commercial gain. Finally, Respondent’s registration of the domain name evidences opportunistic bad faith.
Respondent:
1. Respondent failed to submit a Response in this proceeding.
1. The Panel finds that Complainant’s argument does not satisfy Policy ¶ 4(a)(i).
2. Complainant has failed to prove that Respondent does not have any rights or legitimate interests in the <clarkenterpriseinc.com> domain name.
3. Complainant has failed to establish Respondent registered or used the <clarkenterpriseinc.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(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.”).
Complainant offers serial number and date for the pending trademark application of the CLARK ENTERPRISES mark. See Amend. Compl. at Attached Annex. B. However, providing evidence of an application for a pending Trademark does not satisfy Policy ¶ 4(a)(i). See Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (“The Panel finds that, in this specific case, the pending trademark application(s) of Complainant are insufficient to establish trademark rights.”). Here, Complainant applied for rights in the CLARK ENTERPRISES mark on July 17, 2017 (Serial No. 87,530,378) and the new application will be assigned to an attorney approximately 3 months after filing date. Complainant does not make any contentions regarding common law rights. Therefore, the Panel finds that Complainant’s argument does not satisfy 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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in <clarkenterpriseinc.com>. However, Complainant fails to make any Policy ¶ 4(c)(i)(ii) and (iii) arguments supporting its claim. Accordingly, the Panel elects to dismiss the case. See Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Forum Apr. 23, 2004) (finding that Complainant failed to meet its burden pursuant to Policy ¶ 4(a)(ii) where Complainant neglected to state how Respondent used the disputed domain name in the Complaint).
Having failed to establish all three elements required under the ICANN Policy, the Complaint is hereby dismissed.
John J. Upchurch
Dated: September 26, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page