United Service Organizations, Inc. v. .2B4 S.r.L
Claim Number: FA0604000671264
Complainant is United Service Organizations, Inc. (“Complainant”), represented by Keith A. Barritt, of Fish & Richardson P.C., 1425 K Street, N.W., Suite 1100, Washington, DC 20005. Respondent is .2B4 S.r.L (“Respondent”), Via Roma, 49, Guigliano in campania 80014, Italy.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usoitaly.com>, registered with Tucows Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2006.
On April 3, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <usoitaly.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 April 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 25, 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@usoitaly.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a non-profit organization chartered by the United States Congress to provide support and welfare services to members of the United States armed forces and their families.
Complainant uses the USO mark in connection with its travel, food, entertainment, and other general services.
Complainant has more than 120 service centers around the world, including in Italy.
Complainant has registered the USO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 703,682, issued August 30, 1960; and Reg. No. 1,731,688, issued November 10, 1992).
The United States Congress has enacted a specific statute, 36 U.S.C. § 220106, giving Complainant the exclusive right to use the USO mark regardless of the goods and services offered under the mark.
Respondent registered the <usoitaly.com> domain name on May 27, 2005.
The disputed domain name does not resolve to any content.
Respondent is a former employee at one of Complainant’s USO centers in Italy who was involved in a scheme to use Complainant’s staff and resources for his own private gain.
Respondent has also registered the <usoitaly.it> domain name (registered on May 30, 2005), which also does not resolve to any content, and possibly registered the <freeuso.it> domain name (registered on November 8, 2002), which resolves to a travel and tourism website, under his alter ego, Mr. Pierpaolo Pirozzi.
Respondent’s <usoitaly.com> domain name is confusingly similar to Complainant’s USO mark.
Respondent does not have any rights or legitimate interests in the <usoitaly.com> domain name.
Respondent registered and used the <usoitaly.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the USO mark pursuant to a federal statute, 36 U.S.C. § 220106, and by registration of the mark with the USPTO. See Am. Nat’l Red Cross v. Universal Translator, Inc., FA 237440 (Nat. Arb. Forum Mar. 31, 2004): “Complainant has established rights in the RED CROSS mark through evidence of wide use of the mark in commerce, through evidence of acts of Congress protecting that mark, and through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <usoitaly.com> domain name is confusingly similar to Complainant’s USO mark, because it contains Complainant’s entire mark and merely adds the geographic term “italy.” Previous panels have held that domain names wholly incorporating Complainant’s USO mark are not sufficiently distinguishable by simply adding a geographic term to the mark. See United Serv. Orgs., Inc. v. TTA Panama, FA 543473 (Nat. Arb. Forum Sept. 29, 2005) (finding the <usosandiego.com> domain name confusingly similar to Complainant’s USO mark); see also United Serv. Orgs., Inc. v. Moore, FA 543451 (Nat. Arb. Forum Sept. 27, 2005) (finding the <uso-european-region.org> and <uso-hawaii.org> domain names, among others, confusingly similar to the USO mark); see also United Serv. Orgs., Inc. v. Walker, FA 543463 (Nat. Arb. Forum Sept. 30, 2005) (finding the <usorome.com>, <usoparis.com>, <usonaples.com> and <usodubai.com> domain names confusingly similar to the USO mark). Further see Volvo Trademark Holding AB v. SC-RAD, Inc., D2003-0601 (WIPO Oct. 9, 2003): “[A] domain name created by appending a geographic term to another’s trademark or service mark does not change the domain name from being confusingly similar to the trademark.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <usoitaly.com> domain name. Complainant must first make a prima facie case in support of its allegations, at which point the burden shifts to Respondent to show it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 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) (finding
that once a complainant asserts that a respondent has no rights or legitimate
interests with respect to a disputed domain name, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <usoitaly.com>
domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002): “Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.” See
also Canadian Imperial Bank
of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23,
2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the panel and a respondent did not come
forward to suggest any right or interest it may have possessed). However, the Panel
may nonetheless, and will now, examine the record to determine if there is any
substantial evidence that Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the disputed domain name under the name “.2B4 S.r.L,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <usoitaly.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <usoitaly.com> domain name pursuant to Policy ¶ 4(c)(ii). See, for example, Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests where a respondent is not commonly known by the disputed domain name or employing it in connection with a legitimate or fair use); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when it is not known by the mark).
Moreover, Respondent’s <usoitaly.com> domain name, which includes Complainant’s USO mark, does not resolve to any content. Respondent registered the domain name on May 27, 2005, and has been passively holding it for almost a year. Panels have held that the passive holding of a domain name for as little as six months provides evidence that a respondent lacks rights or legitimate interests in the domain name. See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003): “Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.” See also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where a respondent failed to submit a response to the complaint and made no use of the domain name in question). Thus, Respondent’s passive holding of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii), because Respondent has failed to make any use of the domain name since registering it eleven months ago.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is not using for any purpose the <usoitaly.com> domain name, which includes the entirety of Complainant’s USO mark. Therefore, Respondent is passively holding the disputed domain name. Such conduct provides evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). In Phat Fashions, LLC v. Kruger, FA 9619 (Nat. Arb. Forum Dec. 29, 2000), the Panel concluded that “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” Because a federal statute protects Complainant’s rights to the USO mark, any use Respondent could make of the disputed domain name would be in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s passive holding of a disputed domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Moreover, it is evident from the unchallenged evidence in
this proceeding that Respondent registered the contested domain name with
either actual or constructive knowledge of Complainant’s rights in the USO mark
by virtue of Respondent’s prior employment with Complainant and by reason of
Complainant’s prior registration of its mark with the United States Patent and
Trademark Office. Registration of a
confusingly similar domain name despite such actual or constructive knowledge
evidences bad faith registration and use of the domain name pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <usoitaly.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 15, 2006
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