Duck Commander, Inc. v. Robert Dillard / Dillard Design
Claim Number: FA1608001691375
Complainant is Duck Commander, Inc. (“Complainant”), represented by Zachary A.P. Oubre of McAfee & Taft A Professional Corporation, Oklahoma, United States. Respondent is Robert Dillard / Dillard Design (“Respondent”), Arkansas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fincommander.com>, registered with Tucows Domains Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2016; the Forum received payment on August 26, 2016.
On August 29, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <fincommander.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fincommander.com. Also on September 2, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Complainant has used the FIN COMMANDER mark in connection with its business of providing goods and services to those interested in outdoor pursuits. Complainant has registered the FIN COMMANDER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,601,670, registered September 9, 2014), which demonstrates Complainant’s rights in its mark.[1] The <fincommander.com> domain is identical to Complainant’s mark, save for the affixation of the generic top-level domain (“gTLD” ) “.com.”
2. Respondent lacks any rights or legitimate interests in the domain. Respondent is not commonly known by the terms of the domain, and it is not authorized or licensed by Complainant to use the FIN COMMANDER mark or any derivative mark for any purpose.
3. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent has failed to make any active use of the domain. The website that resolves from the disputed domain displays this message: “fincommander.com is a totally awesome idea still being worked on. Check back later.”
4. Finally, Respondent offered to sell the domain to Complainant for an amount in excess of the out-of-pocket costs associated with acquiring the domain (“We’d be happy to let it go in the $12,000 range.”).
5. Respondent registered and is using the domain in bad faith. First, Respondent offered to sell the domain to Complainant for an amount in excess of its out-of-pocket costs in violation of Policy ¶ 4(b)(i). Second, Respondent has failed to make any active use of the domain, conduct proscribed in Policy ¶ 4(a)(iii). Finally, because Respondent registered a domain that incorporates the FIN COMMANDER mark without any distinguishing features and then failed to use the domain in good faith, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FIN COMMANDER mark. Respondent’s domain name is confusingly similar to Complainant’s FIN COMMANDER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <fincommander.com> domain name, and that Respondent registered and uses the domain name 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."
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.
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(f), 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 (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.”).
Complainant has used the FIN COMMANDER mark in connection with its business of providing goods and services to those interested in outdoor pursuits. Complainant has registered the FIN COMMANDER mark with the USPTO (e.g., Reg. No. 4,601,670, registered September 9, 2014), which demonstrates its rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (FORUM June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <fincommander.com> domain is identical to its FIN COMMANDER mark, save for the affixation of the gTLD “.com.” The Panel notes that Respondent eliminates the space between the words of Complainant’s mark. The elimination of the spacing between the words of a complainant’s mark and the affixation of the “.com” gTLD do not adequately differentiate a respondent’s domain from a complainant’s mark per Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (FORUM Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). As such, the Panel finds that Respondent’s domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the <fincommander.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”). The Panel holds that Complainant has made a prima facie case.
Complainant maintains that Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Complainant argues that Respondent has failed to make any active use of the domain. The records reflects that the website that resolves from the domain displays this message: “fincommander.com is a totally awesome idea still being worked on. Check back later.” A respondent’s failure to make any active use of a domain 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (FORUM Sept. 2, 2004) (“The Panel finds that the [failure to make an active 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).”). Therefore, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Finally, Complainant has shown that Respondent offered to sell the domain to Complainant for an amount in excess of the out-of-pocket costs associated with acquiring the domain (“We’d be happy to let it go in the $12,000 range.”). Specifically, Complainant attempted to contact Respondent by sending an e-mail to fincommander.com@contactprivacy.com, the e-mail address provided in the WHOIS contact information. In that e-mail, Complainant asked whether the domain was for sale, and that Respondent responded, stating: “I’m a bit reluctant to let it go. I would be happy to listen to an offer if you have one in mind. Let me Know! Robbie.” Complainant then offered Respondent $250 in exchange for the transfer of the domain, and Respondent said: “We’d be happy to let it go in the $12,000 range.” A respondent lacks rights and legitimate interests in a domain where it attempts to sell the domain for an amount that exceeds the respondent’s cost to acquire the domain. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (FORUM Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”). For this reason, the Panel finds that Respondent lacks rights and legitimate interests in the <fincommander.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has shown that Respondent offered to sell the domain to Complainant for an amount in excess of its out-of-pocket costs in violation of Policy ¶ 4(b)(i). A respondent’s attempt to sell a domain for an amount in excess of its out-of-pockets costs to acquire the domain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (FORUM Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Furthermore, a respondent demonstrates bad faith where it rejects a complainant’s nominal offer in lieu of greater consideration. See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration). Accordingly, the Panel finds that Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(i).
Complainant has established that Respondent has failed to make any active use of the domain, conduct proscribed in Policy ¶ 4(a)(iii). A respondent’s failure to make any active use of a domain constitutes bad faith registration and use per Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). As such, the Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant claims that because Respondent registered a domain that incorporates the FIN COMMANDER mark entirely without any distinguishing features and then failed to use the domain in good faith, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and rights therein. The Panel concludes it is obvious that Respondent had actual knowledge of Complainant’s mark and therefore determines that Respondent registered the domain in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (FORUM Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (FORUM Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has 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 <fincommander.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: September 29, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page