Claim Number: FA0808001219601
PARTIES
Complainant is
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allauburnallorange.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names
Worldwide, and <allauburnallorange.net>
and <allauburnallorange.org>,
registered with and GoDaddy.com, Inc.
PANEL
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.
Nathalie Dreyfus as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 7, 2008; the
National Arbitration Forum received a hard copy of the Complaint on August 8, 2008.
On August 8, 2008, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <allauburnallorange.net> and <allauburnallorange.org>
domain names are registered with GoDaddy.com,
Inc. and that the Respondent is the current registrant of the
names. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 10, 2008, Melbourne It, Ltd.
d/b/a Internet Names Worldwide confirmed by e-mail to the National
Arbitration Forum that the <allauburnallorange.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide
and that the Respondent is the current registrant of the name. Melbourne It,
Ltd. d/b/a Internet Names Worldwide has verified that Respondent is
bound by the Melbourne It, Ltd. d/b/a Internet
Names Worldwide 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 August 13, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 2, 2008 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@allauburnallorange.com, postmaster@allauburnallorange.net and postmaster@allauburnallorange.org by e-mail.
A timely Response was received and determined to be complete on August 28, 2008.
On September 2, 2008, an Additional Submission was received from
Complainant. This Additional Submission
was timely and complete in accordance with Supplemental Rule 7.
On September 5, 2008, an Additional Submission was received from
Respondent. This Additional Submission
was timely and complete in accordance with Supplemental Rule 7.
On September
17, 2008, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
<<A. Complainant makes the following assertions
1. The domain names <allauburnallorange.com>, <allauburnallorange.net>
and <allauburnallorange.org>
are confusingly similar with Complainant’s common law trademark ALL AUBURN ALL
ORANGE
2. Respondent has no right or legitimate interest in the domain names <allauburnallorange.com>,
<allauburnallorange.net> and <allauburnallorange.org>
3. Respondent registered and used the domain names <allauburnallorange.com>,
<allauburnallorange.net> and <allauburnallorange.org>
in bad faith
B. Respondent submitted a Response to the Complaint and asserts that
1. The domain names <allauburnallorange.com>,
<allauburnallorange.net> and <allauburnallorange.org>
are not identical or confusingly similar to a trademark or service mark in
which Complainant has rights
2. Respondent has rights and legitimate interests in respect of the
domain names <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org>
3. Respondent did not register or use the domain names <allauburnallorange.com>,
<allauburnallorange.net> and <allauburnallorange.org>
in bad faith
4. Before the institution of this dispute, Respondent
demonstrably evidenced an intent to use the domain name <allauburnallorange.com>
C. Additional Submissions
Complainant in its Additional Submission alleges as follows:
1.
Likelihood
of confusion exists between Complainant’s mark and Respondent’s domain names
2.
Respondent
has not demonstrated any legitimate interest in the domain names. Respondent’s
familiarity with Complainant is evidence of his lack of such an interest
3.
Respondent
has not advanced any evidence that he has used or is or has prepared to use the
disputed domain names in connection with a bona
fide offering of goods and services, nor has Respondent been commonly known
by the disputed domain names.
4.
The
circumstances of the current case indicate that the domain names were
registered for the purpose of resale to Complainant for profit.
5.
The
interactions of Respondent with Complainant clearly imply an offer to sell the
domain names
Respondent in its Additional Submission alleges as follows:
1. The domain names are not identical or confusingly similar to a
trademark or service mark in which Complainant has rights
2. Respondent has rights and legitimate interest in respect of the
domain names
3. Respondent did not register or use the
domains in bad faith
FINDINGS
Respondent is a 2004 graduate of Complainant,
a member of Auburn Alumni Association, as well as a current employee of
The domain name <allauburnallorange.com> was registered on October 3, 2006 and the domain names <allauburnallorange.net> and <allauburnallorange.org> were
created on 5 June 2008.
DISCUSSION
Preliminary
Issue: Multiple Respondents
In the instant proceedings,
Complainant has alleged that the entities which control the domain names at
issue are effectively controlled by the same person and/or entity, which is
operating under several aliases.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides
that a “complaint may relate to more than one domain name, provided that the
domain names are registered by the same domain name holder.” Complainant contends that the WHOIS information for each of the
disputed domain names lists the same name, “Anthony Oravet,” and email address,
“tonyoravet@evenparsolutions.com.” For
each of the disputed domain names, the addresses and phone numbers for the
registrant, technical, and administrative contact are identical. However, the WHOIS information for the <allauburnallorange.net>
and <allauburnallorange.org> domain names additionally list the
business name “EvenPar Solutions.” Respondent asserts himself to be Anthony
Oravet and has not disputed that it is the current owners of all three of the <allauburnallorange.com>, <allauburnallorange.net>
and <allauburnallorange.org>
domain names.
Accordingly, the Panel finds that the listed aliases “Anthony Oravet” and
“EvenPar Solutions” are the same person or entity, or
entities controlled by the same person or entity, so that the filing of this Complainant
is justified, proper and pursuant to Supplemental Rule ¶ 4(f)(ii). See
Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001)
(finding multiple aliases to be the same respondent when the administrative
contact information of the various subject domain names was the same or quite
similar); see also Yahoo! Inc. & GeoCities v. Data Art
Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple
aliases where "the addresses used and the Contacts designated [were] inter-linking
and identical."). But see Boehringer Ingelheim Pharma
GmbH & Co. KG v. Domains by Proxy, Inc., D2006-0465 (WIPO June 14, 2006) (partial dismiss of complaint against
the additional respondent, where the second respondent was not found to be the same
person or entity as the first respondent, because the WHOIS contact details
were different).
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Primary
Issue
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that Complainant did not need to register its ALL AUBURN
ALL ORANGE mark with a governmental authority in order to establish rights in
the mark pursuant to Policy ¶ 4(a)(i). See
Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8,
2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration
if a complainant can establish common law rights in its mark); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also 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).
Complainant asserts that it has established common law rights in the ALL
AUBURN ALL ORANGE mark in connection with
The Panel considers that this evidence appears sufficient to establish
that there is secondary meaning in the ALL AUBURN ALL ORANGE mark associated
with Complainant and that this association, along with Complainant’s continuous
use of mark, is sufficient for demonstrating Complainant’s common law rights in
its mark for the purposes of Policy ¶ 4(a)(i).
See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb.
Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark
acquired secondary meaning among local consumers sufficient to establish common
law rights where the complainant had been continuously and extensively
promoting a real estate development under the mark for several years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005)
(finding that the complainant established common law rights in the STELLAR CALL
CENTRES mark because the complainant demonstrated that its mark had acquired
secondary meaning); see also Hiatt
v. personal fan & official site builders : we build great sites, FA
881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark
authority is unnecessary under Policy ¶ 4(a)(i) in
instances where a mark has gained secondary meaning through extensive
commercial use and common law rights have been established ….”).
The
<allauburnallorange.com>, <allauburnallorange.net>
and <allauburnallorange.org> domain
names each contain the ALL AUBURN ALL ORANGE mark in its entirety omitting the
spaces within the mark and adding the generic top-level domains (“gTLDs”)
“.com,” “.net” or “.org.” The inclusion
of a gTLD and omission of a space are generally found to be irrelevant to a
Policy ¶ 4(a)(i) analysis.
Accordingly, the Panel finds that the disputed domain names are each
identical to the ALL AUBURN ALL ORANGE mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that
the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is
irrelevant to a Policy ¶ 4(a)(i) analysis); see also Bond & Co. Jewelers, Inc. v.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii), and
then the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in the
subject domain names, which burden is light.
If Complainant satisfies its burden, then the burden shifts to
Respondent to show that it does have rights or legitimate interests in the
subject domain names.”).
Complainant contends that there is nothing
in the record that indicates that Respondent is or ever was commonly known by
the disputed domain names. Moreover,
Respondent presents no opposition to Complainant’s assertions that Respondent
is not commonly known by the disputed domain names.
Therefore the Panel finds that Respondent is
not commonly known by either the <allauburnallorange.com>, <allauburnallorange.net>
or <allauburnallorange.org> domain names 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); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172
(Nat. Arb. Forum Apr. 18, 2007) (concluding that the
respondent was not commonly known by the <thirteen.com> domain name based
on all evidence in the record, and the respondent did not counter this argument
in its response).
Complainant also argues that no use is being
made of the disputed domain names and likewise highlights that they are
identical to Complainant’s mark.
Complainant states that the disputed domain names do not resolve to any
website.
Accordingly, the Panel finds that this does
not constitute either 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 Hewlett-Packard Co. & Hewlett-Packard Dev.
Co., L.P. v. Shemesh, FA 434145
(Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the
[inactive use] of a domain name that is identical to Complainant’s mark is not
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶
4(c)(iii).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum
Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is
not using the <bloomberg.ro> domain name in connection with an active
website. The Panel finds that the
[inactive use] of a domain name that is identical to Complainant’s mark is not
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii).”).
Respondent argues that although it has made
no active use of the disputed domain names yet, this does not demonstrate a
lack of rights or legitimate interests in the disputed domain names, because
Respondent plans to develop a fan site with them. However, Complainant argues in its Additional
Submission that this is not sufficient.
Complainant concedes that use as a fan site may create a legitimate
interest in a disputed domain name, but that in this case, since no fan site
yet exists, but rather only the interest in developing a future fan site, and
it has been over two years since Respondent first registered one of the
disputed domain names, this is insufficient to demonstrate rights or legitimate
interests in a disputed domain name.
The Panel considers that Respondent’s
arguments relating to its intended use of the disputed domain names as a fan
site are insufficient to establish he has a legitimate right or interest in the
domain names. See Mondich v. Brown, D2000-0004 (WIPO Feb.
16, 2000) (holding that the respondent’s failure to develop its website in a
two year period raises the inference of registration in bad faith); see also Fielding v. Corbert, D2000-1000 (WIPO Sept. 25, 2000) (finding the
respondent’s ‘demonstrable preparations to use’ a disputed domain name as a fan
website to be insufficient to establish rights and legitimate interests under
Policy ¶ 4(a)(ii) since the respondent had waited over two years to begin to
enact such plans, and beyond bold assertions, did not supply the panel with any
concrete evidence of the plans).
And finally, Complainant states that it offered to purchase the disputed domain names for Respondent’s out-of-pocket costs, but that Respondent found such an offer to be insufficient and indicated that it expected more.
The Panel finds that
Respondent’s willingness to dispose of the disputed domain names at greater
than out-of-pocket costs demonstrates a lack of Respondent’s rights or
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the
respondent’s willingness to sell a contested domain name for more than its
out-of-pocket costs provided additional evidence that Respondent had no rights
or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a
respondent’s willingness to sell a domain name to the complainant suggests that
a respondent has no rights or legitimate interests in that domain name under
Policy ¶ 4(a)(ii)).
Complainant states that Respondent declined Complainant’s offer to purchase the domain name for an amount equal to the documented out-of-pock expenses associated with Respondent’s registrations of the disputed domain names. Complainant argues that Respondent’s following correspondence demonstrates that Respondent’s motive in registering the disputed domain names was to sell them for financial compensation to Complainant in considerable excess of Respondent’s out-of-pocket expenses. In Complainant’s Additional Submission, Complainant asserts that the circumstance can be used to infer Respondent’s intent to sell the disputed domain names. In the Additional Submission, Complainant cites “Respondent’s preoccupation with ‘value’ evidences [Respondent’s] true motives.”
The circumstances of the case
demonstrate Respondent’s intent to sell the disputed domain names, which accordingly
establish Respondent’s bad faith registration and use of the disputed domain
names pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO
Nov. 27, 2000) (finding that a failure to use the domain name in any context
other than to offer it for sale to the complainant amounts to a use of the
domain name in bad faith); see also Am. Online, Inc. v. Prijic, FA
112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent
has sought consideration in excess of its out-of-pocket costs, the Policy makes
clear that only costs related to the domain name are to be considered, and not
those related to the creation or maintenance of the connected website”); see also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000)
(stating that a panel should not “put much weight on the fact that it was the
Complainant who contacted Respondent to see if it was interested in selling the
domain name”).
Complainant also contends that Respondent has engaged in a pattern of registering disputed domain names for the purpose of preventing Complainant from reflecting its mark in a corresponding domain name. Complainant states that Respondent was informed initially of its infringing <allauburnallorange.com> domain name through a cease-and-desist letter sent by Complainant’s representative dated June 3, 2008. Shortly thereafter, Complainant contends that Respondent proceeded to register the <allauburnallorange.net> or <allauburnallorange.org> domain names. Previous panels have found that one incident of registering multiple infringing domain names may be sufficient to constitute bad faith under Policy ¶ 4(b)(ii). See, e.g., Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
As a consequence, the Panel finds
that this is additional evidence of Respondent’s bad faith registration and use
of the disputed domain names pursuant to Policy ¶ 4(b)(ii). See Albertson's, Inc. v. Bennett, FA
117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(ii)
in the respondent’s registration of the <albertsonscoupons.com>
and <albertsons-coupons.com> domain names because
the respondent “registered
the domain names in order to prevent Complainant from registering its common
law ALBERTSON’S COUPON mark in a corresponding domain name”).
Complainant also argues that Respondent has full knowledge or at least should have been aware of Complainant’s rights in the ALL AUBURN ALL ORANGE mark prior to its registration of the disputed domain names. Complainant argues in its Additional Submission that even though it had not registered the mark with the USPTO nor indicated prior to Respondent’s initial registration of the <allauburnallorange.com> domain name on its official University website or its official literature that the ALL AUBURN ALL ORANGE phrase was to become an official mark for sporting events, Respondent could have called “Complainant’s Office of Trademark Management and Licensing” and they would have “cleared up Respondent’s confusion.”
Complainant does proceed to point
out though that the disputed domain names are identical to Complainant’s mark
and that in the case of the <allauburnallorange.net> or <allauburnallorange.org> domain names, Respondent was
necessarily aware of Complainant’s mark, as it had already engaged in
correspondence with Complainant in regards to the <allauburnallorange.com> domain name.
The Panel finds that if Respondent had either actual or constructive
notice in Complainant’s rights to the ALL AUBURN ALL ORANGE mark, that this is
further evidence of Respondent’s bad faith registration and use of the disputed
domain names pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see
also Yahoo! Inc. v.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allauburnallorange.com>, <allauburnallorange.net>
and <allauburnallorange.org>
domain names be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: October 1, 2008
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