S4 LLC v. JAY BEES
Claim Number: FA0611000856335
Complainant is S4 LLC (“Complainant”), represented by Arlana
S. Cohen, of Cowan, Liebowitz & Latman, P.C.,
1133 Avenue of the
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <britishknights.com>, registered with Network Solutions, 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 1, 2006.
On November 29, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <britishknights.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@britishknights.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 04, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <britishknights.com> domain name is identical to Complainant’s BRITISH KNIGHTS mark.
2. Respondent does not have any rights or legitimate interests in the <britishknights.com> domain name.
3. Respondent registered and used the <britishknights.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, S4 LLC, is engaged in the sale and distribution
of shoes and apparel in the
Respondent registered the disputed domain name on August 20, 1999. Respondent has not made any use of the disputed domain name since its registration date.
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 submitted evidence of its registration of
the BRITISH KNIGHTS mark with the USPTO.
Such evidence establishes Complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).
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 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 <britishknights.com> domain name is identical to Complainant’s BRITISH KNIGHTS mark in that Respondent’s domain name incorporates
Complainant’s mark in its entirety, adding only the generic top-level domain
“.com.” The addition of a generic
top-level domain to Complainant’s registered mark does not negate the identical
character of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). Thus, the Panel
finds that the disputed domain name is identical to Complainant’s mark pursuant
to Policy ¶ 4(a)(i).
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding that the domain name
<pomellato.com> is identical to a complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name. Under Policy ¶ 4(a)(ii), the burden is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See 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”); see also 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.”).
Respondent has not made any use of the <britishknights.com> domain name since registering it on August 20, 1999. Internet users who seek out the resultant website are directed to a website that does not display any information, indicating that the domain name is not associated with any websites. The Panel finds that Respondent registered a domain name incorporating Complainant’s mark but has not posted any content at the resultant website since its registration. Such nonuse does not constitute 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 AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise).
Moreover, Respondent has registered the domain name under
the name “Jay Bees” and there is no
evidence in the record suggesting that Respondent is commonly known by the <britishknights.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <britishknights.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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 Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that the respondent was not commonly known by the domain name
<greatsouthernwood.com> where the respondent linked the domain name to
<bestoftheweb.com>).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant has also alleged that Respondent acted in bad
faith. Respondent has not posted any
content at the website associated with the <britishknights.com> domain name. With no content associated at the website and
no evidence of Respondent’s preparations to use the disputed domain name, the
Panel concludes that Respondent registered and used the <britishknights.com> domain name in
bad faith pursuant to Policy ¶ 4(a)(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 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.”).
The Panel finds that Complainant satisfied 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 <britishknights.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: January 11, 2007
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