Rotobrush International LLC v. vacbrush a/k/a ming liu
Claim Number: FA0903001253370
Complainant is Rotobrush International LLC (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <real-rotobrush.com>, <used-rotobrush.com>,
and <rotobrush-online.com>, registered with Netfirms, Inc.,
and <rotobrush.org>, registered with
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2009.
On March 20, 2009, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <real-rotobrush.com>, <used-rotobrush.com>, and <rotobrush-online.com> domain names are registered with Netfirms, Inc. and that Respondent is the current registrant of the names. Netfirms, Inc. has verified that Respondent is bound by the Netfirms, 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 March 23, 2009, Melbourne IT, Ltd. confirmed by e-mail to the National Arbitration Forum that the <rotobrush.org> domain name is registered with Melbourne IT, Ltd. and that Respondent is the current registrant of the name. Melbourne IT, Ltd. has verified that Respondent is bound by the Melbourne IT, Ltd. 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 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 2009 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@real-rotobrush.com postmaster@used-rotobrush.com, postmaster@rotobrush-online.com, and postmaster@rotobrush.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2009, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant uses its ROTOBRUSH in connection with the manufacturing and distribution of an air duct cleaning system and parts.
Complainant holds a registration of its ROTOBRUSH trademark with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,021,581, issued December 10, 1996).
Respondent registered the <real-rotobrush.com>, <used-rotobrush.com>, and <rotobrush-online.com> domain names on August 14, 2008, and registered the <rotobrush.org> domain name on July 17, 2008.
Respondent’s domain names <real-rotobrush.com>, <used-rotobrush.com>, <rotobrush-online.com>, and <rotobrush.org> are confusingly similar to Complainant’s ROTOBRUSH mark.
Respondent does not have any rights to or legitimate interests in the domain names <real-rotobrush.com>, <used-rotobrush.com>, <rotobrush-online.com>, and <rotobrush.org>.
Respondent registered and uses the <real-rotobrush.com>, <used-rotobrush.com>, <rotobrush-online.com>, and <rotobrush.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. The domain names registered by Respondent are identical or confusingly similar to a trademark in which Complainant has rights; and
2. Complainant has failed to demonstrate that Respondent has no rights to or legitimate interests in respect of the subject domain names; and
3. Complainant has failed to demonstrate that the domain names were registered and are being used 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 a 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.
The Panel finds that Complainant has sufficiently
established rights in the ROTOBRUSH trademark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the
USPTO. See Miller Brewing
All of the disputed domain names contain Complainant’s
entire mark and add the generic top-level domains (“gTLDs”) “.com” or
“.org.” The <rotobrush.org> domain name contains
Complainant’s entire mark and merely adds the “.org” gTLD. Accordingly, this domain name is
substantivley identical to Complainant’s mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000)
(finding the domain name <microsoft.org> identical to a complainant’s
mark); see also Sea World, Inc. v.
JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he
top-level gTLD is merely a functional element required of every domain name,
the <shamu.org> domain name is identical to the SHAMU mark under a Policy
¶ 4(a)(i).”).
As to the remaining domains, the <real-rotobrush.com>, <used-rotobrush.com>, and <rotobrush-online.com> domain names merely add the generic terms “real,” “used,” or “online” to Complainant’s mark and separate each generic term from Complainant’s mark by a hyphen. Neither the addition of these gTLDs nor the addition of any of the identified generic terms and the accompanying hyphen, distinguishes the disputed domain names from Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.
See also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in
the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Further see Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to a complainant’s HARRY POTTER mark in a respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
For
the reasons indicated above, the Panel finds that the <rotobrush.org> domain
name is identical to, and the <real-rotobrush.com>, <used-rotobrush.com>,
<rotobrush-online.com> domain names are confusingly similar
to, Complainant’s trademark under Policy ¶ 4(a)(i).
Complainant must initially make out a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names. The burden then shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain names. However, Complainant has failed to allege any facts whatever in support of its bald assertion that Respondent lacks rights to or legitimate interests in the disputed domain names, including as to the specifics of Respondent’s use or nonuse of the domain names. Thus we are forced to conclude that Complainant has failed to make out a prima facie showing under Policy ¶ (a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that, whether or not a respondent files a response to a complaint made under the Policy, a complainant must allege facts, which if true, would establish that the named respondent does not have any rights to or legitimate interests in a disputed domain name); see also Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003):
Complainant
has not alleged any facts related to Respondent's use of the disputed domain
name. The Complaint merely asserts a legal conclusion. Thus, the Panel has no
knowledge of Respondent's use of the domain name upon which to base a decision
under Policy ¶ 4(a)(ii) and (iii).
The Panel therefore finds that Policy ¶ 4(a)(ii) has not been satisfied.
As with our analysis under Policy ¶ 4(a)(ii), Complainant has failed to allege any facts to establish that Respondent’s registration and use of any of the domain names here in issue was or is in bad faith. The mere assertion of bad faith without any supporting evidence is insufficient to justify a finding of bad faith registration and use of contested domain names under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that a complainant failed to establish that a respondent registered and used a disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to satisfy Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that the assertion of general allegations of bad faith without supporting facts or specific examples does not supply a sufficient basis upon which a panel may conclude that a respondent has acted in bad faith).
The Panel thus finds that Policy ¶ 4(a)(iii)
has not been satisfied.
Complainant having failed to establish two of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, DENIED.
Terry F. Peppard, Panelist
Dated: May 8, 2009
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