AC Direct, Inc. v. Kevin Kemp
Claim Number: FA0602000643546
Complainant is AC Direct, Inc. (“Complainant”), represented by Barbara Rudolph Smith, 255 South Orange Avenue, Suite 1401, Orlando, FL 32801. Respondent is Kevin Kemp (“Respondent”), 127 West Fairbanks Ave, Winter Park, FL 29898.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <acdirect.com>, registered with Namescout.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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 13, 2006.
On February 13, 2006, Namescout.com confirmed by e-mail to the National Arbitration Forum that the <acdirect.com> domain name is registered with Namescout.com and that Respondent is the current registrant of the name. Namescout.com has verified that Respondent is bound by the Namescout.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 February 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 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@acdirect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 <acdirect.com> domain name is identical to Complainant’s ACDIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <acdirect.com> domain name.
3. Respondent registered and used the <acdirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AC Direct, Inc., is a distributor of heating and air conditioning units, and has used the ACDIRECT mark in connection with its business continuously since 2001. Complainant filed for registration of the ACDIRECT mark with the United States Patent and Trademark Office (“USPTO”) on November 13, 2003, and Complainant’s registration was granted (Reg. No. 2,953,900 issued May 17, 2005). On March 31, 2003, Complainant registered the <acdirect.com> domain name, through which Complainant exclusively conducted its business. A WHOIS search conducted on March 31, 2003 shows that the disputed domain name was registered to Complainant on that date.
On August 2, 2004, Complainant hired Respondent as an independent contractor to complete the development of its website located at the <acdirect.com> domain name and entered into a non-disclosure and assignment agreement with Respondent as well, wherein Respondent assigned to Complainant its entire right, title, and interest in any invention, idea, or systems design conceived by Respondent while working for Complainant, or which related to Complainant’s business.
On January 16, 2006, Complainant discharged Respondent. Complainant alleges that Respondent then transferred the <acdirect.com> domain name to itself, without any right or authority to do so. At that time, Internet users who accessed the domain name were directed to a website stating that Complainant had been closed for business by Respondent, along with the message “BAD things happen to BAD people.”
On January 27, 2006, Complainant established another website under the <acdirect.info> domain name. On January 29, 2006, Complainant discovered that the <acdirect.com> domain name pointed to a website which was identical to Complainant’s new website, except that the address and phone number were different, and the website under the <acdirect.com> domain name was titled “www.acliquidation.com” rather than “www.acdirect.info.”
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 has established rights in the ACDIRECT mark pursuant to Policy ¶ 4(a)(i) by virtue of registering the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
In addition, Complainant asserts rights in the ACDIRECT mark on the basis of the fact that Complainant originally registered the <acdirect.com> domain name. Complainant asserts that Respondent wrongfully transferred the domain name to itself after Complainant discharged Respondent. The Panel finds that prior possession of the disputed domain name, which is identical to Complainant’s mark, is also sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (“[T]he fact that Complainant previously held registrations for the [disputed] domain names attests to the fact that it has rights in its marks.”); see also Marty Taylor Homes, Inc. v. JNPR Mgmt., FA 366170 (Nat. Arb. Forum Jan. 5, 2005) (finding that the complainant’s prior use of the disputed domain name, which was identical to the asserted trademark, was evidence of its rights in the mark.
Respondent’s <acdirect.com> domain name is identical to Complainant’s ACDIRECT mark because it incorporates Complainant’s mark in its entirety along with the top-level domain “.com.” The Panel finds that, because all domain names require a top-level domain, the addition of “.com” to Complainant’s mark fails to distinguish Respondent’s domain name from the mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <acdirect.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, Complainant’s assertions are unopposed, and the Panel will evaluate the evidence to determine if Respondent has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of [sic] 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 on to 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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
After Complainant discharged Respondent, Respondent used the <acdirect.com> domain name, which incorporates Complainant’s mark in its entirety, to direct Internet users to a website featuring the message that Complainant was no longer in business, and included a comment that cast Complainant in a negative light. When Complainant registered a new domain name and established a website at that name, Respondent changed the its website so that it appeared virtually identical to Complainant’s new website, except for a different address and phone number. The Panel finds that Respondent used the <acdirect.com> domain name to broadcast his unhappiness with Complainant, and then to confuse Complainant’s customers. These uses of the disputed domain name are not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use). Additionally, the fact that Complainant originally contracted Respondent to work on its website under the disputed domain name does not give Respondent rights or legitimate interests in the domain name. See Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that a contractor hired by the complainant to develop a website acquires no rights or legitimate interests in the complainant’s domain name even if the contractor is listed as the registrant of the domain name).
Respondent refers to itself in the
WHOIS database as “Kevin Kemp,” which is the name by which Complainant knew
Respondent when Respondent was contracted to work for Complainant. Complainant asserts that, as a result of a
non-compete and assignment agreement between it and Respondent, Respondent
forfeited its entire right, title, and interest in any invention, idea, or
systems design conceived by Respondent while working for Complainant, or which
relates to Complainant’s business.
There is no evidence that Respondent has ever been commonly known by <acdirect.com>
before it was contracted to develop Complainant’s website. The Panel finds that Respondent has no
rights or legitimate interests in this name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; (3) the respondent is not commonly known by the
domain name in question); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent was originally hired by Complainant to develop its website under the <acdirect.com> domain name. The Panel presumes that, as a result of its relationship with Complainant, Respondent gained intimate knowledge of Complainant’s business, including the information necessary to transfer the domain name from Complainant. Complainant alleges that Respondent unlawfully and improperly took control of the <acdirect.com> domain name. Respondent used the disputed domain name to direct Complainant’s customers to a website containing a message critical of Complainant and then to a website confusingly similar to Complainant’s website, which contained a phone number and address unrelated to Complainant. Additionally, the Panel finds that Respondent, with knowledge of Complainant’s business and mark, also deprived Complainant of the opportunity to reflect its mark in the <acdirect.com> domain name. Such use of the disputed domain name is an attempt to disrupt Complainant’s business, and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(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, the respondent had intimate knowledge of the complainant’s business and use of its TEENFLO mark. Therefore, the respondent’s registration of the <teenflo.com> domain name was in bad faith); cf. William Hill Org. Ltd. v. Fulfillment Mgmt. Servs. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration and use where “[R]espondent’s employee must have had the Complainant’s trade marks in mind when choosing the disputed domain name and that the respondent‘s interest was to deprive the complainant of the opportunity to reflect its mark in that name until the registration expires”).
The Panel also finds that Respondent’s registration of the domain name, which Complainant originally owned, also amounts to bad faith registration and use. See Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”)
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 31, 2006
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