Cricket Technologies, L.L.C. v. John
Martin a/k/a Cricket Technologies LLC
Claim Number: FA0408000311353
Complainant is Cricket Technologies, L.L.C. (“Complainant”),
represented by Jordan S. Weinstein,
of Oblon, Spivak, McClelland, Maier
& Neustadt, P.C., 1940 Duke Street, Alexandria, VA 22314-3454. Respondent is John Martin a/k/a Cricket
Technologies LLC (“Respondent”), 908 Holly Blossom Court, Great Falls, VA
22066.
The
domain name at issue is <crickettechnologies.com>,
registered with Register.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 12, 2004; the Forum received a hard copy of the
Complaint on August 12, 2004.
On
August 12, 2004, Register.com confirmed by e-mail to the Forum that the domain
name <crickettechnologies.com>
is registered with Register.com and that Respondent is the current registrant
of the name. Register.com has verified that Respondent is bound by the Register.com
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
August 16, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 7, 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@crickettechnologies.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
September 15, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Judge Harold Kalina
(Ret.) 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."
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 makes the following assertions:
1. Respondent’s <crickettechnologies.com> domain name is identical to
Complainant’s CRICKET TECHNOLOGIES mark.
2. Respondent does not have any rights or
legitimate interests in the <crickettechnologies.com>
domain name.
3. Respondent registered and used the <crickettechnologies.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Cricket Technologies, L.L.C., is a limited liability company engaged in the
business of providing business, computer, and document conversion and storage
services since its inception in 2001.
Complainant adopted the CRICKET TECHNOLOGIES mark and has continuously
used it in commerce in connection with its services since August 2001. Additionally, Complainant owns trademark
rights to the CRICKET TECHNOLOGIES mark through registration with the United
States Patent and Trademark Office (Reg. No. 2,794,229, issued December 16,
2003).
Since August
2001, Complainant has operated a website linked to the <crickettechnologies.com> domain name. Complainant has paid for all costs
associated with maintaining the website.
Respondent, John
Martin, was employed by Complainant on August 7, 2001. Complainant’s Board of Managers directed and
authorized Respondent to register the <crickettechnologies.com>
domain name for and on behalf of Complainant.
Respondent reported to Complainant his registration of the disputed
domain name to Complainant, with the designation of Respondent as the
administrator.
Upon termination
of Respondent’s employment, Complainant discovered the disputed domain name was
registered under Cricket Technologies, LLC listing Respondent as the
administrative contact, and could not be transferred from Respondent to
Complainant due to Respondent’s objection to the transfer.
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, 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
draw such inferences it 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
established in this proceeding that it has rights to the CRICKET TECHNOLOGIES
mark as evidenced by its registration with the USPTO. 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).
The domain name
registered by Respondent, <crickettechnologies.com>,
is identical to Complainant’s CRICKET TECHNOLGOIES mark because the only
difference between the two is the addition of the top-level domain “.com.” The adidtion of a top-level domain does not
significantly distinguish the domain name from the mark under policy ¶
4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to Complainant's registered
trademark GAY GAMES); see also Interstellar Starship Services Ltd. v. EPIX,
Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the
same mark" as EPIX); see also
Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001)
(finding that the <bodybyvictoria.com> domain name is identical to
Complainant’s BODY BY VICTORIA mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case 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 Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that under certain circumstances the mere assertion by Complainant that
Respondent has no right or legitimate interest is sufficient to shift the
burden of proof to Respondent to demonstrate that such a right or legitimate interest
does exist).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a Response. See Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n 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).
Although
Respondent is listed as the Administrative contact in the WHOIS domain name
registration information, nothing suggests that Respondent is commonly known by
the <crickettechnologies.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Yoga Works, Inc. v. Arpita,
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 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 RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Additionally,
because Respondent registered the domain in the capacity of Complainant’s employee
acting on behalf of the Complainant, any rights or interests that Respondent
had in the domain name as an employee of Complainant ceased upon the
termination of Respondent’s employment.
Moreover, Respondent has not made any independent use of the <crickettechnologies.com> domain
name. See Vinidex Pty. Ltd. v. Auinger,
AF-0402 (eResolution Oct. 18, 2000) (finding that as a former employee,
Respondent knew or should have known Complainant’s mark was in use as an
integral part of the corporate name and as a trademark and that Respondent
understood the legitimate interests and rights of Complainant and, by contrast,
its own lack of interest or right. This
is sufficient for Complainant to establish that Respondent had no rights or
interest in the domain name); see also
Nasaco Elec. Pte Ltd. v. A&O Computer AG, D2000-0374 (WIPO July 14,
2000) (finding that Respondent has no rights or legitimate interests in the
domain name where Respondent’s former employee registered the domain name and
transferred it to Respondent, who has since made no use of the domain name).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
While
each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences
bad faith use and registration of a domain name, additional factors can also be
used to support findings of 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”).
Since Respondent
registered the <crickettechnologies.com>
domain name within the scope of employment with Complainant, Respondent’s act
of registering the domain name in his individual name and providing his
personal contact information such as his home and his personal e-mail address
is evidence that Respondent registered and used the domain name in bad
faith. See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399
(WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent
was employed by Complainant’s business, was fully aware of the name of her
employer, and made no use of the infringing domain name); see also Sonic-Crest Cadillac, LLC
v. Hayes, FA 212652 (Nat. Arb.
Forum Jan. 14, 2002) (finding bad faith where “Respondent registered the
disputed Domain Names on behalf of and with instruction from Complainant, but
registered them in the name of Respondent’s entity” and “Respondent’s
registration of the Domain Names for any other entity than Complainant is evidence
of a bad faith”).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <crickettechnologies.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
September 27, 2004
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