Enlightened, Inc. v. Nil
Claim
Number: FA0508000549191
Complainant is Enlightened, Inc. (“Complainant”), represented
by Mark C. Young of Stinson Morrison Hecker LLP,
1201 Walnut, Suite 2900, Kansas City, MO 64106-2150. Respondent is Nil (“Respondent”),
Ottawa City, Ontario, ON K1S 2P1, CA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <enlightened.com>, registered with 000domains.com.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 29, 2005.
On
September 6, 2005, 000domains.com confirmed by e-mail to the National
Arbitration Forum that the <enlightened.com> domain name is
registered with 000domains.com and that Respondent is the current registrant of
the name. 000domains.com has verified
that Respondent is bound by the 000domains.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
September 8, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 28, 2005 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@enlightened.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 5, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <enlightened.com>
domain name is identical to Complainant’s ENLIGHTENED mark.
2. Respondent does not have any rights or
legitimate interests in the <enlightened.com> domain name.
3. Respondent registered and used the <enlightened.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Enlightened, Inc., is a full service
Information Technology (“IT”) consulting firm headquarted in Washington,
DC. Complainant was incorporated on
July 6, 1997 subsequent to which date Complainant began using the ENLIGHTENED
mark in assocation with its IT products and services.
On December 8, 1997, Complainant released its “Mind Our Own Business”
computer software under its ENLIGHTENED mark.
Complainant and its products have also been favorably featured in
several business magazines and numerous online articles.
Respondent registered the <enlightened.com> domain name on October 12, 1998. The domain name appears to attempt to divert
Internet users to a website at the <buddhadust.org> domain name, which is
not an active website. There is no evidence
that Respondent has ever used the domain name for any purpose.
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. 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 (Nat. Arb. 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.”).
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 is
not required to own a trademark registration to establish rights in the
ENLIGHTENED mark under Policy ¶ 4(a)(i).
See British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Mar. 23, 2000) (noting that the Policy “does not distinguish between registered
and unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
Complainant has continuously and extensively used its ENLIGHTENED mark
in commerce since July 6, 1997 to promote its IT products and services. In addition, Complainant has developed a
favorable reputation in its field, as evidenced by its recognition in numerous
business magazines. Complainant
asserts, and the Panel agrees, that Complainant has established common law
rights in the ENLIGHTENED mark by virtue of showing secondary meaning
associated with the mark. See 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
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
[KEPPEL BANK] in connection with its banking business, it has acquired rights
under the common law.”); see also Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the
complainant had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark).
The <enlightened.com>
domain name differs from Complainant’s ENLIGHTENED mark only with the addition
of the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD to a mark is irrelevant in determining
similarity under the Policy and, therefore, is not a distinguishing
feature. Thus, the domain name is
identical to Complainant’s mark under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the
generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants."); see also Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain
name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel,
therefore, finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under the
Policy, Complainant has the initial burden of proving that Complainant has
rights to and legitimate interests in a mark contained within a disputed domain
name and that the respondent lacks such rights and legitimate interests in the
domain name. In Compagnie Generale
des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14,
2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a prima
facie case and the burden of proof is then shifted onto the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant met its
initial burden by establishing a prima facie case, the Panel will now
analyze whether Respondent met its burden to establish rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <enlightened.com>
domain name and there is no evidence in the record to dispute this
allegation. The WHOIS information for
the disputed domain name lists Respondent as “Nil” and suggests no other
connection between Respondent and the disputed domain name. Because Respondent has failed to respond to
any of Complainant’s contentions, the Panel is left with no evidence to rebut
Complainant’s assertions that Respondent is not commonly known by the disputed
domain name. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); 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"); see
also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”).
Furthermore,
Complainant asserts that Respondent is not using the <enlightened.com>
domain name. Without a response from
Respondent to assert a use or intended use, the Panel accepts as true
Complainant’s assertion that Respondent is not using the disputed domain
name. See Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
The Panel holds
that Respondent’s nonuse of the <enlightened.com> domain name for
nearly seven years constitutes passive holding and is not a bona fide
offering of goods or services or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(i) or (iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name); see
also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent registered and passively held the disputed domain
name. Although Policy ¶ 4(b) includes a
list of four specific situations that constitute evidence of bad faith
registration and use, the Panel is not limited to this list and may take into
account additional evidence in making a finding of bad faith under Policy ¶
4(a)(iii). 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) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent did
not provide evidence that would suggest that Respondent is holding the disputed
domain name for any non-infringing purpose.
Without an indication that Respondent registered the domain name with
the intention of using it for a legitimate purpose, the Panel finds that
Respondent’s passive holding of the <enlightened.com> domain name
for almost seven years constitutes bad faith registration and use under Policy
¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
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).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <enlightened.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme
Court, NY (Ret.)
Dated: October 18, 2005
National Arbitration Forum
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