Ultimate Electronics, Inc. v. Jason
Nichols a/k/a Ultimateelectronic
Claim
Number: FA0309000195683
Complainant is Ultimate Electronics, Inc., Thornton,
CO (“Complainant”) represented by Benjamin
L. Blaugrund of Holland & Hart LLP. Respondent is Jason Nichols a/k/a Ultimateelectronic,
West Orange, NJ (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ultimateelectronics.net>, registered with
Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically September 13, 2003; the Forum received a hard copy of the
Complaint September 17, 2003.
On
September 15, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed
by e-mail to the Forum that the domain name <ultimateelectronics.net>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a
Internet Names Worldwide verified that Respondent is bound by the Melbourne It,
Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
September 19, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 9, 2003, by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@ultimateelectronics.net
by e-mail.
On
October 3, 2003, Respondent submitted to the Forum by e-mail the following
message, which is set out in its entirety:
Ok, you're
getting one response, and that's all the energy I am wasting on this matter. My
store has been closed since I got the complaint. I am bankrupt, the
"disputed" domain name was never disputed, and I am no longer it's
owner. Any further corrsepondence [sic] and I will be filing civil, criminal,
and UCMJ charges against ICANN, and all related parties. I am now a soldier in
the United States Army, and as such any further harassment will be considered a
federal offense. If I continue to be harassed, without any relevant legal
grounds you will be hearing from a representative on my behalf from the JAG
Corps.
Sincerely,
-Jason Nichols
FORMER President & CEO, UltimateElectronics.Net
P.S. This e-mail account is being closed,
you may forward a formal apology to [redacted e-mail address]. If you send
anything else to that account, I will in fact report it to both my commanding
officer, and the office of the United States Attorney General. Do not, and I
repeat for the sake of your obvious mental handicap, DO NOT, misuse my
government issued e-mail address.
Having
received no timely Response from Respondent that was in compliance with the
Rules and having received no other communication from Respondent requesting
other relief, the Forum, in compliance with Paragraph 5(b) of the Rules for
Uniform Domain Name Dispute Resolution Policy (the "Rules"),
transmitted to Complainant a Notification of Respondent Default.
On
October 12, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum discharged its responsibility under
Paragraph 2(a) of the Rules "to employ reasonably available means
calculated to achieve actual notice to Respondent." 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 substantive Response
from Respondent.
In
light of Respondent’s unequivocal desire to be excluded from this proceeding,
the Panel hereby excuses the Forum and Complainant from further communication
with Respondent, as related to this hearing.
Complainant
requests transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<ultimateelectronics.net>, is identical to Complainant’s ULTIMATE
ELECTRONICS mark.
2. Respondent has no rights to or legitimate
interests in the <ultimateelectronics.net> domain name.
3. Respondent registered and used the <ultimateelectronics.net>
domain name in bad faith.
B. Respondent failed to submit a substantive
Response in this proceeding.
Complainant
Ultimate Electronics, Inc. holds federal trademarks in ULTIMATE ELECTRONICS
(words only) and ULTIMATE ELECTRONICS (stylized). Each is registered on the Principal Register of the United States
Patent and Trademark Office, and the senior mark (the stylized version) has
been registered since January 16, 1996.
The registration information for both marks indicates that the marks
were first used in commerce in 1993.
Complainant uses
its marks in association with the sale of home audio, television, and video
system products as well as automobile sound systems and other consumer
electronics. Complainant also holds
registration of the <ultimateelectronics.com> domain name and has held
this registration since March 21, 1996.
Respondent
registered the disputed domain name on February 2, 2003, and has used the name
to sell products similar to and in competition with those sold by Complainant.
On June
10, 2003, Complainant, through counsel, sent to Respondent a cease-and-desist
letter demanding that Respondent stop using the ULTIMATE ELECTRONICS mark and <ultimateelectronics.net>
domain name. Respondent replied on June
16, 2003, apologizing for “the mix up” and agreeing to transfer the domain name
within thirty days in exchange for reimbursement of registration costs. Complainant’s records also document a June
20, 2003, telephone call from Respondent in which it restated its commitment to
dismantle its website and transfer the domain name to Complainant. Complainant’s counsel attempted on at least
three subsequent occasions to effectuate the transfer of the domain name and
reimburse Respondent for registration fees.
Respondent never replied to Complainant’s e-mails.
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."
In view of
Respondent's failure to submit a Response or seek other relief, 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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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.
Complainant has
established in this proceeding that it has rights in the ULTIMATE ELECTRONICS
marks through evidence of registration on the Principal Register of the U.S.
Patent and Trademark Office and by continuous use in commerce. The disputed domain name is identical to
Complainant’s mark as it merely collapses two words into one and appends the
requisite top-level domain name, which is in this case “.net”. See Hannover Ruckversicherungs-AG v.
Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
Policy ¶ 4(a)(i)
has been satisfied.
Respondent’s
failure to submit a substantive Response in this matter allows the Panel to
infer that Respondent has no rights or legitimate interests to assert. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore,
Respondent’s admission to Complainant that its registration and use of the
disputed domain name was the result of a “mix up” suggests that Respondent
never had any rights in the name. See
Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that under the circumstances, Respondent’s apparent willingness
to dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Marcor Int’l v. Langevin, FA 96317 (Nat.
Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name
at issue indicates that it has no rights or legitimate interests in the domain
name in question).
Respondent’s
admission notwithstanding, its very use of the domain name (and Complainant’s
mark) to sell products in competition with Complainant demonstrates neither a
bona fide offering of goods or services nor a legitimate noncommercial or fair
use of the name. See Computerized
Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services).
Finally, other
than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web
page and in its domain name (which Respondent readily agreed to discontinue
using), there is no evidence that Respondent is commonly known by the <ultimateelectronics.net>
domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity
besides Complainant authorized to trade as ULTIMATE ELECTRONICS. See Yoga Works, Inc. v. Arpita d/b/a
Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not commonly known by the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”); see also Neiman Marcus Group, Inc. v. Neiman-Marcus,
FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and
legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was
not commonly known by the <neiman-marcus.net>
name, despite naming itself
“Neiman-Marcus” in its WHOIS contact information).
Having
established that Respondent has no rights or legitimate interests in respect of
the <ultimateelectronics.net> domain name, Policy ¶ 4(a)(ii) has
been satisfied.
Complainant
alleges bad faith registration and use of the domain name containing in its
entirety the Complainant’s protected mark.
In its communications with Complainant, Respondent apologized for its
“mix up” in doing business online with Complainant’s marks. Despite Respondent’s purported ignorance of
Complainant’s rights in ULTIMATE ELECTRONICS, the evidence presented by Complainant
indicates that the mark has been registered on the Principal Register since
1996. As such, Respondent is charged
with constructive notice of Complainant’s rights in the mark. Accordingly, Respondent’s registration and
use of the infringing domain name was done in bad faith. See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration). Beyond constructive knowledge of Complainant’s marks, given
Complainant’s online and market presence, it seems probable that Respondent had
actual knowledge of Complainant’s rights.
In light of
Respondent’s actual or constructive knowledge of Complainant’s rights in
ULTIMATE ELECTRONICS, Respondent’s use of the <ultimateelectronics.net>
domain name to sell goods in competition with Complainant demonstrates bad
faith according to Policy ¶¶ 4(b)(iii) & (iv). See TM Acquisition
Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad
faith where Respondent used the domain name, for commercial gain, to attract
users intentionally to a direct competitor of Complainant); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ultimateelectronics.net> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 27, 2003.
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