The Trail House, Inc. v. David Murphy d/b/a UtahHost.com
Claim Number: FA0512000606417
Complainant is The Trail House, Inc., 17 South Market Street, Frederick, MD, 21701(“Complainant”). Respondent is David Murphy d/b/a UtahHost.com (“Respondent”), 912 W. Cannon Oaks Pl., Salt Lake City, UT, 84104.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <trailhouse.com>, registered with Intercosmos Media Group, Inc. d/b/a DirectNIC.com.
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 electronically December 8, 2005; the National Arbitration Forum received a hard copy of the Complaint December 12, 2005.
On December 8, 2005, Intercosmos Media Group, Inc. d/b/a DirectNIC.com confirmed by e-mail to the National Arbitration Forum that the <trailhouse.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a DirectNIC.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a DirectNIC.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a DirectNIC.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 December 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 9, 2006, 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@trailhouse.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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. The domain name that Respondent registered, <trailhouse.com>, is identical to Complainant’s TRAIL HOUSE mark.
2. Respondent has no rights to or legitimate interests in the <trailhouse.com> domain name.
3. Respondent registered and used the <trailhouse.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Trail House, Inc., provides sales of goods and services relating to outdoor recreation including hiking, camping, skiing and cycling and has done so for more than twenty years. The TRAIL HOUSE mark has adorned different types of merchandise sold by Complainant as well as being a consistent feature in print advertisements and phonebooks. Complainant established its client base, reputation, and goodwill in connection with the TRAIL HOUSE mark.
Complainant purchased hosting services through Respondent, David Murphy d/b/a UtahHost.com, to host the <trailhouse.com> domain name. Respondent registered the domain name March 18, 2000. On about January 22, 2003, Respondent transferred Complainant’s interests in the domain name into the name of UtahHost.com with David Murphy as the Administrative Contact.
Respondent failed to pay the required fees to its own hosting source; however, Complainant arranged a short-time accommodation to keep the website associated with the <trailhouse.com> domain name available to its customers. Complainant’s repeated efforts to contact Respondent have been unsuccessful.
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 will draw such inferences as the Panel 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 Complainant to 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 asserts that it has established common law
rights in the TRAIL HOUSE mark, and it has made specific averments of its
continuous use of the mark for the last twenty years. Because Respondent has not offered any evidence to rebut this
claim, the Panel accepts that Complainant’s TRAIL HOUSE mark acquired secondary
meaning and, therefore, is a mark in which Complainant has rights pursuant to
Policy ¶ 4(a)(i). See generally Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.”); see S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318
(Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established
rights in the descriptive RESTORATION GLASS mark through proof of secondary
meaning associated with the mark); Fishtech,
Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding
complainant has common law rights in the mark FISHTECH that it has used since
1982).
The Panel finds that the <trailhouse.com>
domain name is identical to Complainant’s TRAIL HOUSE mark. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
The Panel finds that Complainant established Policy ¶ 4(a)(i).
The Panel accepts Complainant’s allegations that Respondent
is associated with Complainant’s web hosting service and that Respondent
changed the domain name registration information to reflect Respondent as the
Registrant. Currently, the website
associated with the disputed domain name is Complainant’s official
website. However, the record suggests
that after Respondent changed the domain name registration, Complainant had to
pay additional amounts to keep the website at the disputed domain name
active. The Panel holds that
Respondent’s fraudulent registration of the <trailhouse.com>
domain name has put Complainant in the position of expending additional monies
to keep the associated website active.
Respondent’s conduct did not constitute a bona fide offering of a
good or service pursuant to Policy ¶ 4(c)(i) and it did not constitute a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Cf. Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); Savino Del
Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a
former employee does not acquire rights or legitimate interests in a domain
name identical to the former employer's trademark).
The Panel finds nothing in the record, including the WHOIS
registration information, which demonstrates that Respondent is commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant established Policy ¶ 4(a)(ii).
The record suggests that after Respondent fraudulently
changed the domain name registration, Complainant had to pay additional amounts
to keep the website at the disputed domain name active. The Panel infers that the additional costs
to Complainant are a result of (1) Respondent’s negligence in maintaining the
associated website or (2) Respondent’s extortion. The Panel finds that fraudulently changing the domain name
registration of a client to squeeze the client of money is evidence of bad
faith pursuant to Policy ¶ 4(a)(iii). See
163972 Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding
that because the respondent was hired by the complainant to help design and
register the complainant’s websites, respondent had intimate knowledge of
complainant’s business and use of its TEENFLO mark. Therefore, respondent’s
registration of the <teenflo.com> domain name was in bad faith); Savino
Del Bene Inc. v. Gennari, D2000-1133
(WIPO Dec. 12, 2000) ("Respondent's registration of the company name of
his former employer as a domain name is an act of bad faith."). See generally Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy
that a complainant prove that domain names are being used in bad faith does not
require that it prove in every instance that a respondent is taking positive
action. Use in bad faith can be inferred from the totality of the circumstances
even when the registrant has done nothing more than register the names.”).
The Panel finds that Complainant established 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 <trailhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 24, 2006.
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