DECISION

 

Alexander Hughes International v. Rick Fogle

Claim Number: FA0501000410002

 

PARTIES

Complainant is Alexander Hughes International (“Complainant”), represented by Nathalie Dreyfus, of Cabinet DREYFUS & associés, 35, rue des Mathurins, 75008 Paris, France. Respondent is Rick Fogle (“Respondent”), 3201 E. Market Street, Apt 109, York, PA 17402.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alexanderhughes.us>, registered with Schlund + Partner AG.

 

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.

 

James A. Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 2, 2005.

 

On January 28, 2005, Schlund + Partner AG confirmed by e-mail to the National Arbitration Forum that the domain name <alexanderhughes.us> is registered with Schlund + Partner AG and that Respondent is the current registrant of the name. Schlund + Partner AG has verified that Respondent is bound by the Schlund + Partner AG registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 9, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 1, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 6, 2005, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

 

1.      Respondent’s <alexanderhughes.us> domain name is identical to Complainant’s ALEXANDER HUGHES mark.

 

2.      Respondent does not have any rights or legitimate interests in the <alexanderhughes.us> domain name.

 

3.      Respondent registered or used the <alexanderhughes.us> domain name in bad faith.

 

B. Respondent failed to submit a response in this proceeding.

 

FINDINGS

Complainant and its predecessors have provided executive search and recruitment services under the ALEXANDER HUGHES mark since at least as early as 1990. Complainant operates 23 offices throughout Europe, and its reputation of providing high-quality executive search services is well known. Complainant holds numerous worldwide trademark registrations for the ALEXANDER HUGHES mark, including French Reg. No. 98,735,163 (filed June 3, 1998). Complainant also operates a website at the <alexanderhughes.com> domain name.

 

Respondent registered the <alexanderhughes.us> domain name on August 6, 2004. The domain name resolves to a parking page created by Respondent’s domain name registrar. On December 22, 2004, Respondent received a cease-and-desist letter from Complainant demanding that Respondent immediately transfer the disputed domain name. On December 24, 2004, Respondent replied to Complainant’s letter by offering to sell the domain name registration to Complainant for 5,000 €. Respondent is not licensed or authorized to use Complainant’s mark for any purpose.

 

DISCUSSION

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 the 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.

 

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; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the ALEXANDER HUGHES mark through registration with government authorities and through use of the mark in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and that a respondent has the burden of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a respondent operates and that a complainant’s demonstration of trademark rights in any jurisdiction suffices); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter under Policy ¶ 4(a)(i) whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).

 

Complainant argues that Respondent’s <alexanderhughes.us> domain name is identical to Complainant’s mark because the domain name simply adds the country-code top-level domain (“ccTLD”) “.us” to the end of the mark and removes a space from the mark. The addition of the “.us” ccTLD and the removal of a space fail to distinguish the domain name from the mark. Thus, the Panel finds that the domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” failed to add any distinguishing characteristic to the domain name, the <tropar.us> domain name was identical to the complainant’s TROPAR mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. 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”).

 

Rights or Legitimate Interests

 

Complainant is able to establish a prima facie case by showing that Respondent does not qualify for the four “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iv). Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element. In this case, Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name under 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 . . . . [I]t is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted [to the] Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where a complainant has asserted that a respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

Because Respondent has failed to submit a response in this proceeding, the Panel may accept as true all reasonable allegations submitted by Complainant in the Complaint. Furthermore, since Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, the burden is shifted to Respondent to demonstrate that it has rights or legitimate interests in the domain name. In this proceeding, Respondent has not submitted a response. Thus, Respondent has failed to present any circumstances under which it could substantiate rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent had no rights or legitimate interests in the domain name because it never submitted a response or provided the panel with evidence to suggest otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a response the panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

 

Respondent is not using the <alexanderhughes.us> domain name for any purpose. Respondent’s passive holding of the domain name does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iv). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also 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 made no use of the domain name in question); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that a respondent has not established any rights or legitimate interests in the disputed domain name).

 

No evidence in the record indicates that Respondent owns a trademark identical to the disputed domain name. Furthermore, the <alexanderhughes.us> domain name’s WHOIS information indicates that Respondent is known as “Rick Fogle” and is not known by the second-level domain name that is identical to Complainant’s ALEXANDER HUGHES mark. Thus, Respondent has failed to demonstrate any rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting UDRP ¶ 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”).

 

Furthermore, Respondent offered to sell the disputed domain name registration to Complainant. Respondent’s offer to sell the registration for the domain name, which is identical to Complainant’s well-known mark, evidences its lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

 

Registration or Use in Bad Faith

 

While there is no evidence in the record of Respondent’s costs directly related to the disputed domain name, Respondent’s failure to use the domain name indicates that Respondent offered to sell the <alexanderhughes.us> domain name registration to Complainant for more than its out-of-pocket costs directly related to the domain name. Thus, the Panel finds that Respondent acquired the domain name for the purpose of selling the domain name registration to the owner of the trademark reflected in the domain name, which evidences registration or use in bad faith under Policy ¶ 4(b)(i). See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the domain name to the complainant for $10,000 and where the respondent was contacted by the complainant); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding bad faith use or registration where the respondent offered to sell a domain name to the owner of the trademark that was the source of the domain name’s value).

 

Respondent registered the <alexanderhughes.us> domain name to prevent Complainant from reflecting its ALEXANDER HUGHES mark in a corresponding domain name, which is evidence of registration or use in bad faith pursuant to Policy ¶ 4(b)(ii). See UGG Holdings, Inc. v. Barclay, FA 216873 (Nat. Arb. Forum Feb. 5, 2004) (finding that the respondent’s registration of a domain name identical to the complainant’s mark evidenced bad faith registration or use under Policy ¶ 4(b)(ii)); cf. Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the respondent engaged in the practice of registering domain names containing the trademarks of others).

 

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use or registration of the domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Respondent’s registration of the disputed domain name, a domain name identical to Complainant’s well-known mark, suggests that Respondent knew of Complainant’s rights in the ALEXANDER HUGHES mark. Additionally, Complainant’s trademark registrations on file at the trademark office in France gave Respondent constructive notice of Complainant’s mark. Thus, the Panel finds that Respondent chose the <alexanderhughes.us> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration or use pursuant to Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name and was aware of the deception and confusion that would inevitably follow if it used the domain name); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); cf. Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <alexanderhughes.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Crary, Panelist

Dated: March 21, 2005

 

 

 

 

 

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