DECISION

 

Rexam PLC v. Meys, Inc. c/o Serge Yassievich

Claim Number: FA0311000211942

 

PARTIES

Complainant is Rexam PLC, London, United Kingdom (“Complainant”) represented by John E. Slaughter, of Moore & Van Allen, PLLC, P.O. Box 3843, Durham, NC 27702-3843.  Respondent is Meys, Inc. c/o Serge Yassievich (“Respondent”), P.O. Box 705, New York, NY 10040.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <rexam.us>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

Rodney C. Kyle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 14, 2003; the Forum received a hard copy of the Complaint on November 17, 2003.

 

On November 17, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <rexam.us> is registered with Go Daddy Software, Inc. and that  Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 8, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with ¶ 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

A timely Response was received and determined to be complete on December 8, 2003.

 

An Additional Submission was timely received from Complainant and was determined to be complete on December 12, 2003.

 

An Additional Submission was timely received from Respondent and was determined to be complete on December 15, 2003.

 

On December 22, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Rodney C. Kyle as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Respondent seeks a finding of Reverse Domain Name Hijacking.

 

PARTIES’ CONTENTIONS

A. Complainant

Basically, in the Complaint, Complainant makes three main sets of contentions, including to submit evidence contended to support aspects of them.

 

FIRST MAIN SET

In the first main set of contentions, Complainant basically makes contentions by way of four points as to Policy ¶ 4(a)(i).

 

The first point is that the domain name at issue is registered by Respondent.

 

The second point is that Complainant owns, and therefore has rights in, trademarks of REXAM , as follows:

Serial # (U.S.)	Registration # (U.S.)	Goods & Services
78141823		·        containers of metal; cans of metal; metal fragrance and cosmetic pumps; metal spray containers; metal lipstick cases; metal compacts and cosmetic closures; metal bottles; bottle caps; bottle closures; bottle seals; bottle fasteners; capsules of metal for bottles; metal ends and closures for attachment to cans and other containers; dispensers of metal; pumps of metal for attachment to aerosol cans and other containers; dispensers or spray attachments of metal for attachment to containers for dispensing the contents of those containers ·        cellulose acetate film used as an industrial or commercial packaging material; packaging, containers, seals, lids and closures made from film; laminates; plastic fibers; plastic film; insulating materials for packaging, containers, seals, lids and closures; latex, films, packaging, containers, seals, lids and closures for medical, surgical, pharmaceutical and healthcare use; packaging materials for forming seals
74733356	2191704	·        paper for industrial or commercial packaging or wrapping; paper for the manufacture of books, stationery or stationery items; paper for drafting, plotting, tracing, printing or reproduction; security paper for the manufacture of checks, passports and the like; metallized paper for the manufacture of labels, packaging or giftwrap; coated paper for use in the manufacture of products such as labels, pressure sensitive adhesive products and transdermal patches; paper bags, pouches and envelopes for packaging; blister cards; labels; containers made of paperboard or cardboard; paper paint color cards; paper or cardboard point of sale displays and materials; plastic films and laminates of plastic films for commercial, medical or industrial packaging or wrapping ·        containers not made of metal for commercial or industrial use ·        printing to the specification of others; design of packages and packaging material for others
74674309	2129700	·        printing to the specification of others; design of packages and packaging material for others ·        paper for industrial or commercial packaging or wrapping; paper for the manufacture of books, stationery; paper for drafting, plotting, tracing printing or reproduction; security paper for the manufacture of checks, passports and the like; metalized paper for the manufacture of labels, packaging or giftwrap; coated paper for use in the manufacture of products such as labels, pressure sensitive adhesive products and transdermal patches; paper bags, pouches and envelopes for packaging; blister cards; labels; containers made of paperboard or cardboard; paper paint color cards; paper or cardboard point of sale displays and materials; plastic films and laminates of plastic films for commercial, medical or industrial packaging or wrapping ·        containers not made of metal for commercial or industrial use

 

The third point is that Complaint Annex C includes a true and correct copy of U.S. Patent and Trademark Office web site printouts for said trademarks and which evidence said trademarks and Complainant’s ownership thereof.

 

The fourth point is that the domain name at issue is identical to said trademarks.

 

SECOND MAIN SET

In the second main set of contentions, Complainant basically contends by way of three points that within the meaning of Policy ¶ 4(a)(ii) Respondent has no “rights or legitimate interests” in respect of the domain name at issue.

 

The first point has three sub-points and is to the effect that (i) prior to contact by

Complainant, Respondent had commercial advertising, not associated either with said

trademarks or with Complainant products, present at the website or other on-line location

that resolves through the domain name at issue; (ii) currently, since contact by

Complainant, Respondent provides no indication of use or intent to use the domain name

at issue in connection with a bona fide offering of goods and services, and indeed

Respondent is doing just the opposite by leaving the domain name inactive and making

no use of the domain name at issue; and (iii) such commercial advertising and lack of

indication is evidenced by the affidavit of Mr. John Slaughter that is Complaint Annex A.

 

The second point has two sub-points and is to the effect that (i) there is no indication that Respondent has been commonly known by the domain name, as an individual, business, or other organization; and (ii) such lack of indication is evidenced by the affidavit of Mr. John Slaughter that is Complaint Annex A.

 

The third point has four sub-points and is to the effect that (i) Complainant has not licensed Respondent to use Complainant’s trademarks; (ii) Respondent does not have any relationship with Complainant that would entitle Respondent to use Complainant’s trademarks; (iii) Complainant is the owner of the <rexam.com> and <rexam.net> domain names, which are directed to Complainant’s main corporate website; and (iv) the first three sub-points of this third point are evidenced by the affidavit of Mr. Frank Brown that is Complaint Annex B and by the true and correct copy of the Whois database printouts for the <rexam.com> and <rexam.net> domain names as of September 15, 2003 that are Complaint Annex F.

 

THIRD MAIN SET

In the third main set of contentions, Complainant basically contends by way of several points that within the meaning of Policy ¶ 4(a)(iii) Respondent either or both of registered, or is using, the domain name at issue in “bad faith”.

 

One of those points is to the effect that (in view of constructive notice by U.S.C. Title 15, Chapter 22, Subchapter I, Section 1072 and of the reference thereto in Barney’s Inc. v. BNY Bulletin Board, D2000-0059 WIPO (Apr. 2, 2000)) the basis for Respondent’s use of the domain name at issue was to create confusion as to one or more of the source, sponsorship, affiliation, or endorsement of the website that resolves through the domain name at issue with that of Complainant, with the intent to exploit Complainant’s goodwill in its trademarks.

 

B. Respondent

Basically, in the Response, Respondent makes three main sets of contentions, including to submit evidence contended to support aspects of them.

 

FIRST MAIN SET

In the first main set of contentions, Respondent does not dispute what is set out above as Complainant’s first main set of contentions.

 

SECOND MAIN SET

In the second main set of contentions, Respondent basically makes contentions by way of

five points as to Complainant’s second main set of contentions; Respondent’s second

main set of contentions does not include evidence.

 

In Respondent’s first point, Respondent does not dispute the first of Complainant’s three

sub-points of Complainant’s first point (i.e. Complainant’s sub-point that prior to contact

by Complainant, Respondent had commercial advertising, not associated either with said

trademarks or with Complainant products, present at the website or other on-line location

that resolves through the domain name at issue). Respondent instead contends that said

first of Complainant’s three sub-points is “true by itself” but that said sub-point “can only

be used to show good faith of [Respondent’s] intentions.”

 

In Respondent’s second point, Respondent disputes the second of Complainant’s three

sub-points of Complainant’s first point (i.e. Complainant’s sub-point that currently, since

contact by Complainant, Respondent provides no indication of use or intent to use the

domain name at issue in connection with a bona fide offering of goods and services, and

indeed Respondent is doing just the opposite by leaving the domain name inactive and

making no use of the domain name at issue).

 

In Respondent’s third point, Respondent disputes the second point of Complainant’s

second main set of contentions (i.e. Complainant’s point that there is no indication that

Respondent has been commonly known by the domain name, as an individual, business,

or other organization). As part of doing so, Respondent contends in effect (and as exemplified by Respondent’s using the phrase “first come – first served”), that Respondent’s registration of the domain name at issue per se confers or evidences “rights or legitimate interests” within the meaning of that expression as it appears in Policy ¶ 4(a)(ii).

 

In Respondent’s fourth point, Respondent does not dispute the third point of

Complainant’s second main set of contentions (i.e. Complainant’s point comprised of

four sub-points that (i) Complainant has not licensed Respondent to use Complainant’s

trademarks; (ii) Respondent does not have any relationship with Complainant that would

entitle Respondent to use Complainant’s trademarks; (iii) Complainant is the owner of

the <rexam.com> and <rexam.net> domain names, which are directed to Complainant’s

main corporate website; and (iv) the first three sub-points of this third point are

evidenced by the affidavit of Mr. Frank Brown that is Complaint Annex B and

by the true and correct copy of the Whois database printouts for the <rexam.com> and

<rexam.net> domain names as of September 15, 2003 that are Complaint Annex F).

Respondent instead contends that said third point is “true” but that said third point is

“irrelevant” in that Respondent “did not and do[es] not use [Complainant’s] trademarks.”

 

In Respondent’s fifth point, Respondent disputes Complainant’s general Policy ¶ 4(a)(ii)

contention (i.e. Complainant’s contention that in respect of the domain name at issue

Respondent has no rights or legitimate interests) by contending that the domain name at

issue “has been taken in memory of [a] pet known under [the] Russian name

<<PeKcaMac>> which sounds very similar to Rexamus [in] English.” As part of doing so,

Respondent repeats the contention described in the next to immediately preceding 

paragraph hereof, that Respondent’s registration of the domain name at issue per se

confers or evidences “rights or legitimate interests” within the meaning of that expression

as it appears in Policy ¶ 4(a)(ii).

 

THIRD MAIN SET

In the third main set of contentions, Respondent basically does two things.

 

First, with at least one exception, Respondent basically denies Complainant’s third main set of contentions.

 

One exception is as to the Complainant contention of bad-faith use in which Complainant relies on U.S.C. Title 15, Chapter 22, Subchapter I, Section 1072 constructive notice and on the reference thereto in Barney’s Inc., supra. In response to Complainant’s contention, Respondent contends that “[t]he facts demonstrated that [Respondent] did not use [the domain name at issue] at all … [a]nd we both agreed about it” as well as that “[Respondent] do[es] not violate any trademark in any sense” and so, Respondent contends, that neither that section nor Barney’s Inc., supra, is applicable.

 

Second, Respondent contends that by this proceeding Complainant has attempted Reverse Domain Name Hijacking.

 

C. Additional Submissions

Neither Party’s Additional Submission appears to permissibly provide anything pertinent

that, in view of the Complaint and the Response, was not already apparent to the Panel as

being at issue in this proceeding or as being the responsibility of the Panel.

 

FINDINGS

The Panel finds

(i)         the domain name at issue is registered by Respondent, there are at least U.S. trademark registrations 2191704 and 2129700 as to REXAM and in which Complainant has rights, and the domain name at issue is identical thereto;

(ii)                Respondent has no rights or legitimate interests in respect of the domain name at issue; and

(iii)              bad-faith use of the domain name at issue.

 

DISCUSSION

Introduction

Rules ¶ 15(a) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Policy ¶ 4(a) requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(i)                  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii)                Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)              the domain name has been registered, or is being used, in bad faith.

Especially in view thereof, the summaries of each Party’s contentions, set out above, are basically as to those three requirements.[i]

 

Also, especially in view of Rules ¶ 15(a), the Panel notes four rules and principles of law that it especially deems applicable to ascertaining whether each of those three elements has been proven. First, that

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. “real evidence”); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[ii]

Second, especially as to mode “3”, that Rules ¶ 10(d) provides that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Third, as to construing and applying Rules ¶ 10(d), especially as to whether mode “1” rather than mode “3” applies: a complainant’s pleading of fact that is not disputed (or, phrased differently, not “put in issue”) by a respondent against whom it is contended, is an admission by that respondent,[iii] so evidence tendered as being rationally probative of (i.e. as being “relevant to”) establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[iv] Fourth, as to whether mode “2” rather than either of mode “1” or mode “3” applies, a canvassing of law and commentary shows that

It was not desirable, nor indeed possible, to foreclose the trier’s use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[v]

and that “The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question.”[vi]

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical or Confusingly Similar

The third of the four rules and principles of law set out in the next to immediately preceding paragraph hereof is applicable to the Parties’ contentions on this topic. Specifically, the Panel finds that Respondent admits Complainant’s contentions on this topic (i.e. the four points of Complainant’s first main set of contentions) and that consequently, on this topic, Complaint Annex C is immaterial.

 

In view especially of the immediately preceding paragraph hereof, Policy ¶ 4(a)(i) is proven as to the domain name at issue.

 

Rights or Legitimate Interests

The context in which this part of this discussion occurs includes (i) Policy ¶ 4(c); and (ii) administrative panel decisions as to burden of production.

Policy Paragraph 4(c)

Policy ¶ 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

When you receive a complaint, you should refer to the Rules in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of [Policy] Paragraph 4(a)(ii):

(i) You are the owner or beneficiary of a trade or service mark that is identical to the domain name; or

(ii) Before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(iii) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iv) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

(See endnote 3 hereof for some provisions of the Rules.)

 

Neither Policy ¶ 4(c)(i) nor Policy ¶ 4(c)(iv) appear to be contended for in this

proceeding.

 

Instead, (i) Complainant’s second main set of contentions amount to contentions of

Policy ¶ 4(a)(ii) generally and of negatives of Policy ¶¶ 4(c)(ii) and 4(c)(iii) particularly;

and (ii) in response, two aspects of Complainant’s second main set of contentions are not

put in issue (i.e. by the first and fourth points of Respondent’s second main set of

contentions) and are therefore admitted by Respondent, whereas three aspects are put in

issue (i.e. by the second, third, and fifth points of Respondent’s second main set of

contentions).

 

The first aspect not in issue is that, prior to contact by Complainant, Respondent had

commercial advertising, not associated either with said trademarks or with Complainant

products, present at the website or other on-line location that resolves through the

domain name at issue. (On this topic, the commercial advertising aspect of Complaint

Annex A is therefore immaterial.) Respondent’s contention that such advertising can only

be used to show good faith of Respondent’s intentions is wrong. Instead, (i) there is the

fact that the registration dates of the trademark registrations precede the registration date

of the domain name at issue;[vii] (ii) the advertising to which Respondent admits proves

Respondent’s use of the domain name at issue for commercial gain (in an intentional attempt to attract Internet users thereto through confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of said website or other on-line location or of products or services thereon) but points away from Respondent having made a bona fide offering of goods or services and therefore points away from Policy ¶ 4(c)(ii) availing Respondent; and (iii) the advertising does not point towards Policy ¶ 4(c)(iii) availing Respondent.

 

The second aspect not in issue is that (i) Complainant has not licensed Respondent to use

Complainant’s trademarks; (ii) Respondent does not have any relationship with

Complainant that would entitle Respondent to use Complainant’s trademarks; (iii)

Complainant is the owner of the <rexam.com> and <rexam.net> domain names, which

are directed to Complainant’s main corporate website; and (iv) those first three sub-

points are evidenced by the affidavit of Mr. Frank Brown that is Complaint Annex B and

by the true and correct copy of the Whois database printouts for the <rexam.com> and

<rexam.net> domain names as of September 15, 2003 that are Complaint Annex F. (On

this topic, those first three sub-point aspects of Complaint Annexes B and F are therefore

immaterial). Respondent’s contention that said four sub-points are irrelevant, in that

purportedly Respondent did not and does not use Complainant’s trademarks, is wrong in

two respects. First, (i) Respondent admits that the domain name at issue is registered by

Respondent;[viii] and (ii) Complainant’s trademark legal interests were registered since

September 29, 1998 and January 20, 1998 and the registration of the domain name at

issue occurred on May 8, 2002;[ix] so (iii) to effect registration of the domain name at

issue, Respondent used the character-string that then was (and still is) subject to

Complainant’s trademark legal interests. Second, (i) as indicated by the immediately

preceding paragraph hereof, Respondent admits to use of that character-string as part of

the domain name at issue, for resolution to the above-mentioned advertising; and (ii) such

character-string use is use of said trademarks, and it is use that does not avail Respondent

under either of Policy ¶¶ 4(c)(ii) and 4(c)(iii) since it is use for which Respondent admits

Respondent is neither licensed by Complainant nor otherwise entitled by a relationship

with Complainant.

 

As for the three aspects in issue, the Complaint provides evidence on two of the three of

them and the Response provides no evidence at all. As to the first aspect in issue,

Complaint Annex A is indeed as contended by Complainant: it includes evidence by ¶ 2

of an affidavit from Mr. John Slaughter that currently, since contact by Complainant,

Respondent provides no indication of use or intent to use the domain name at issue in

connection with a bona fide offering of goods or services, and that indeed Respondent is

doing just the opposite by leaving the domain name inactive and making no use of the

domain name at issue. As to the second aspect in issue, Complaint Annex A is indeed as

contended by Complainant: it includes evidence by ¶ 3 of an affidavit from Mr. John

Slaughter that there is no indication that Respondent has been commonly known by the

domain name, as an individual, business, or other organization. As to the third aspect in

issue, there is Respondent’s repeated contention that Respondent’s registration of the domain name at issue per se confers or evidences “rights or legitimate interests” within the meaning of that expression as it appears in Policy ¶ 4(a)(ii), but Respondent’s contention is wrong. It is wrong because, (i) if a respondent’s domain name registration that is the very subject-matter of a mandatory administrative proceeding under the Policy could, per se, confer or evidence “rights or legitimate interests” within the meaning of that expression as it appears in Policy ¶ 4(a)(ii) then the Policy would basically be rendered a nullity; (ii) analogously, it has long been well and clearly established by mandatory administrative proceeding decisions under the UDRP that such registrations do not confer or evidence UDRP ¶ 4(a)(ii) “rights or legitimate interests”;[x] and (iii) in those respects, the same reasoning applies under the Policy as under the UDRP.

 

Administrative Panel Decisions As To Burden of Production

In view especially of the six immediately preceding paragraphs hereof, Complainant has made a prima facie showing.

 

Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) includes that when, as in this case, “the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue” (emphasis in original). (To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).)

 

Respondent has not met that burden: Respondent’s contentions do not include concrete evidence that Respondent has rights to or legitimate interests in the domain name at issue.

 

Summary

In view especially of the ten immediately preceding paragraphs hereof, Policy ¶ 4(a)(ii) is proven as to the domain name at issue.

 

Registration, or Use, in Bad Faith

The context in which this part of this discussion occurs includes Policy ¶ 4(b).

 

Policy ¶ 4(b) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

For the purposes of [Policy paragraph 4(a)(iii)], the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:

(i) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or

(iii) You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

As for each of Policy ¶¶ 4(b)(i), (ii) and (iii), they basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel then at least bad-faith registration is in turn evidenced via application of the respective one of those three provisions.

 

As for Policy ¶ 4(b)(iv), it basically defines a type of bad-faith use and provides that if such type of use is ascertained by a panel then at least bad-faith use is in turn evidenced via application of that provision.

 

In view of the Panel’s disposition of the Policy ¶ 4(b)(iv) issue, the Panel need not

address other Policy ¶ 4(b) issues. Specifically, in view of the fact that the registration

dates of the trademark registrations precede the registration date of the domain name at

issue,[xi] both of U.S.C. Title 15, Chapter 22, Subchapter I, Section 1072 and the

constructive notice reference in Barney’s Inc., supra, are applicable. More specifically, it

is worth setting out, here, Complainant’s reference to that legislation and to that decision.

Complainant’s reference quotes Barney’s Inc., supra, by including the following

(wherein expressions specific to that case having been replaced by bracketed

expressions):

Under Section 22 of the United States Trademark Act, the Respondent is charged with knowledge of Complainant’s rights in its trademark.  Section 22 of the Trademark Act states that “(r)egistration of a mark on the principal register . . . shall be constructive notice of the registrant’s claim of ownership thereof.”  As a matter of the United States trademark law, it must therefore be presumed that Respondent was on notice of Complainant’s [trademark rights] prior to registering the domain name [at issue].

 

Respondent’s registration of the domain name at issue necessarily preceded Respondent’s

use of the domain name at issue and it is completely inapposite for Respondent to

contend that the facts demonstrated (i) Respondent did not use the domain name at issue

at all, and Complainant and Respondent agreed about such non-use; and (ii) Respondent

does not violate any trademark in any sense. Instead, (i) Respondent used the domain

name at issue;[xii] and (ii) such use of the domain name at issue does indeed

violate Complainant’s trademarks and occurred after Respondent had constructive notice

of Complainant’s trademark rights.[xiii] As a result, Complainant’s Policy ¶ 4(b)(iv)

contention of bad-faith use (which contention relies on U.S.C. Title 15, Chapter 22,

Subchapter I, Section 1072 and on the constructive notice reference in Barney’s Inc.,

supra) is therefore entirely apposite: Respondent’s use of the domain name at issue is

bad-faith use, contrary to Policy ¶ 4(b)(iv).

 

In view especially of the six immediately preceding paragraphs hereof, Policy ¶ 4(a)(iii) is proven as to the domain name at issue.

 

DECISION

Having established all three elements under the usTLD Policy, the Panel concludes that relief shall be hereby GRANTED.

      

Accordingly, (i) it is Ordered that the <rexam.us> domain name be TRANSFERRED from Respondent to Complainant; and (ii) Respondent’s request for a finding of Reverse Domain Name Hijacking is dismissed.

 

 

Rodney C. Kyle, Panelist
Dated: January 5, 2004

 

 

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