DECISION

 

Digital-Logic AG v. Jordano Daemonti

Claim Number: FA0405000273488

 

PARTIES

Complainant is Digital-Logic AG (“Complainant”), represented by James A. Newmark, of Hayman & Baldi, Zeltweg 44, Postfach 1622, Zurich, 8032, CH, Switzerland.  Respondent is Jordano Daemonti (“Respondent”), 4350 N. Nellis BLV #255, Las Vegas, NV 89115.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <digitallogic.com>, registered with Bulkregister, Llc.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 17, 2004; the Forum received a hard copy of the Complaint on May 18, 2004.

 

On May 25, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain name <digitallogic.com> is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name.  Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 May 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 15, 2004 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@digitallogic.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 24, 2004, 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 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."  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.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following assertions:

1.      Respondent’s <digitallogic.com> domain name is confusingly similar to Complainant’s DIGITAL-LOGIC mark.

 

2.      Respondent does not have any rights or legitimate interests in the <digitallogic.com> domain name.

 

3.      Respondent registered and used the <digitallogic.com> domain name in bad faith.

 

B.     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Digital-Logic AG, is the owner of the DIGITAL-LOGIC mark, which it registered in the United States on the Supplemental Register of the U.S. Patent and Trademark Office (“USPTO”) on April 2, 2002 (U.S. Reg. No. 2,557,420 filed on April 8, 1999).  Under the DIGITAL-LOGIC mark, Complainant develops, produces and distributes computer hardware and software for use as an embedded operating system.  Complainant claims to have made continual use of the mark since 1992.

 

On December 29, 1996, Complainant registered the <digitallogic.ch> domain name for use with its business.  After over a year of negotiations, Complainant was then able to purchase the domain name registration for the <digitallogic.com> domain name from MicroScientific, Inc., owner of the domain name registration since January of 1999, for $10,000.  The transfer of this sum was made to EchoStar Network Solutions, Inc., one of the administrative and technical contacts for the <digitallogic.com> domain name, on July 11, 2000.  The domain name was consequently transferred to BulkRegister as the new registrar, and Dr. Emad Krechan (the second administrative and technical contact for the <digitallogic.com> domain name) made the domain name available for Complainant’s use.  Complainant then proceeded to use the domain name for its business for the next three and a half years.

 

On January 14, 2004, Complainant was informed by BulkRegister that the <digitallogic.com> domain name registration had been renewed (without Complainant’s knowledge or authorization) on January 13, 2004, and that the only available contact listed for the domain name registration was forlease@digitallogic.com.  Complainant was subsequently informed by BulkRegister that Network Division, Inc., an entity of which Complainant had never heard of or dealt with prior to this incident, had made the renewal on behalf of Complainant.

 

Complainant attempted to contact Network Division, Inc., without success, and soon noticed that the DNS entries for the <digitallogic.com> domain name had been changed to <networkdivision.com> on January 22, 2004, again without Complainant’s approval.

 

By January 24, 2004, Complainant’s website at the <digitallogic.com> domain name had been deactivated and was no longer accessible by Internet users.  All of Complainant’s e-mail communications, which had been running through the domain, were also blocked.

 

Respondent, Jordano Daemonti, is listed as sole registrant/contact for the <digitallogic.com> domain name.  Jordano Daemonti uses the same P.O. Box address (#360335) in Brooklyn, NY as Dr. Emad Krechan, the administrative and technical contact for the domain name registration when it was owned by MicroScientific, Inc., and Malik Krechman, respondent in an earlier complaint filed with the Forum concerning the domain name.

 

The WHOIS information for the <digitallogic.com> domain name states that Respondent registered the domain name on January 20, 1999.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Prior Decision

 

Before addressing the merits of the parties' contentions, the Panel finds it necessary to determine whether it may even consider the Complaint. The domain name in dispute in this case was the subject of an identical dispute between Complainant and a different named Respondent. In a prior decision, earlier this year, a panel decided the dispute in favor of Respondent, refusing to transfer the domain name to Complainant. Digital-Logic AG v. Krechman FA 235827 (Nat. Arb. Forum April 8, 2004).  Panels have been split as to whether principles of claim or issue preclusion apply in proceedings under the Policy. 

 

The Panel finds that common law principles should not be applied in this relatively new and developing area.  Furthermore, the Panel finds that preclusion is inapplicable where, as here, a previous Panel has reserved the right for Complainant to refile.  See High Speed Prod., Inc. v. Thrasher Magazine, Ltd, FA 97008 (Nat. Arb. Forum June 20, 2001) (declining to apply principles of issue and claim preclusion where the area of law is so new and the dispute resolution process is still evolving); see also Cluett, Peabody & Co., Inc. v. Sanford Bus Writing Serv., FA 95842 (Nat. Arb. Forum Dec. 12, 2000) (allowing a Complaint to be refiled because the previous Panelist had “expressly reserved the right of Complainant to recharge bad faith registration and use of the domain name in or [at] issue”); see also Jones Apparel Group Inc. v. Jones Apparel Group.com, D2001-1041 (WIPO Oct. 16, 2001) (allowing refiling as the previous Panelist gave the “green light in the clearest possible way to refiling the Complaint”).

 

Procedural Issue

 

Complainant asserts that after a decision was made in the prior proceeding, the respondent in that proceeding transferred the <digitallogic.com> domain name to the current Respondent within the fifteen-day waiting period required under Policy ¶ 8(a).  Complainant further argues that Respondent in this proceeding is a related entity of the prior respondent.  Thus, the Panel may find that any actions of the prior respondent, Malik Krechman, transfer to the current named Respondent.  See Miles D., Ltd v. Tokaido Shosha, AF-0318 (eResolution Sept. 28, 2000) (“[I]n certain circumstances, illegitimacy and bad faith of a prior domain name owner may ‘attach to’ the domain name, and pass with the transfer to a subsequent domain name owner.  This would be the case, for example, where the transfer was a sham or to a related entity.”).

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has established rights in the DIGITAL-LOGIC mark by registering it with the Supplemental Register of the United States Patent and Trademark Office on April 2, 2002 (Reg. No. 2,557,420 filed on April 8, 1999).  The Panel finds that Complainant’s registration of the mark makes the mark inherently distinctive.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

 

Furthermore, Complainant asserts that prior to its trademark rights in the DIGITAL-LOGIC mark, it has had common law rights in the mark since at least 1995.  Complainant further asserts that it has used the mark at trade shows in the United States and has operated under the DIGITAL-LOGIC mark in Switzerland since at least as early as 1995.  Complainant asserts that it registered the <digitallogic.ch> domain name on December 29, 1996.  Thus, the Panel finds that Complainant has established common law rights in its mark through secondary meaning.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

 

Complainant argues that the <digitallogic.com> domain name is confusingly similar to Complainant’s DIGITAL-LOGIC mark because the domain name fully incorporates the mark, deleting only a hyphen.  The Panel finds that merely deleting a hyphen from Complainant’s trademark fails to distinguish the disputed domain name from Complainant’s mark.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to Complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).

 

Rights or Legitimate Interests

 

The Panel finds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

Complainant asserts that, while it used the domain name in association with its business for three and a half years, Respondent shut down Complainant’s website and has not made any use of the domain name.  Thus, the Panel finds that passively holding the disputed domain name does not constitute a bona fide offering of goods or services by Respondent pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

 

Additionally, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

 

Finally, because Respondent has not submitted a Response, the Panel accepts all reasonable allegations and inferences in the Complaint as true.  See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

 

Registration and Use in Bad Faith

 

While each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, the Panel may consider additional factors in determining if there is bad faith registration and use.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

 

Complainant asserts that Respondent has not developed a website in connection with the <digitallogic.com> domain name.  The Panel finds that passive holding of a domain name is evidence of bad faith registration and use on the part of Respondent.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

 

Furthermore, Complainant asserts that its DIGITAL-LOGIC mark has been heavily promoted in the United States and Switzerland to purchasers of embedded operating systems equipment.  The Panel finds that Respondent’s registration of a domain name that incorporates Complainant’s registered mark, deviating only by the deletion of a hyphen, suggests that Respondent knew of Complainant’s rights in the DIGITAL-LOGIC mark.  Thus, the Panel finds that Respondent chose the disputed domain name based on the distinctive and well-known qualities of Complainant’s mark and that this evidences bad faith registration.  See 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); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

 

DECISION

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

 

Accordingly, it is Ordered that the <digitallogic.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Panelist

Dated:  July 9, 2004