Dransfield and Ross Ltd. v. N.S. Wolf & Assoc. c/o Nathan Wolf
Claim Number: FA0708001058767
Complainant is Dransfield and Ross Ltd. (“Complainant”), represented by John
Berryhill,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dransfieldandross.com>, <dransfieldross.com>, and <dransfield-ross.com>, registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 2007 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@dransfieldandross.com, postmaster@dransfieldross.com, and postmaster@dransfield-ross.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
1. Respondent’s <dransfieldandross.com> domain name is identical to Complainant’s DRANSFIELD AND ROSS mark. Respondent’s <dransfieldross.com> and <dransfield-ross.com> domain names are confusingly similar to Complainant’s DRANSFIELD AND ROSS mark.
2. Respondent does not have any rights or legitimate interests in the <dransfieldandross.com>, <dransfieldross.com>, and <dransfield-ross.com> domain names.
3. Respondent registered and used the <dransfieldandross.com>, <dransfieldross.com>, and <dransfield-ross.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dransfield and
Ross Ltd., is in the business of selling living room, bedroom, and dining room
furniture. Complainant holds a
registered trademark with the United States Patent and Trademark Office
(“USPTO”) for the DRANSFIELD AND ROSS mark (Reg. No. 2,400,078 issued
Respondent, N.S. Wolf &
Assoc. c/o Nathan Wolf, registered the <dransfieldandross.com>, <dransfieldross.com>, and <dransfield-ross.com>
domain names on
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 holds a valid USPTO trademark registration for
the DRANSFIELD AND ROSS mark. The Panel
therefore finds that Complainant holds rights to the mark pursuant to Policy ¶
4(a)(i). See Expedia, Inc. v. Emmerson,
FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark
registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA]
mark pursuant to Policy ¶ 4(a)(i).”); see
also Mattel, Inc. v. KPF, Inc.,
FA 244073 (Nat. Arb. Forum
Respondent’s <dransfieldandross.com> domain name contains Complainant’s DRANSFIELD AND ROSS mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.” The disputed domain name is therefore identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i) since the addition of a gTLD is irrelevant under the Policy. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <dransfieldross.com> and <dransfield-ross.com>
domain names contain the dominant portion of Complainant’s mark – namely the
“Dransfield” and “Ross” names. The first
disputed domain name removes the “and” from Complainant’s mark and puts the two
names together. The second disputed
domain name also removes the “and,” and combines the names with a hyphen. Removing the “and” does not distinguish the
disputed domain names from Complainant’s mark.
Furthermore, the addition of the hyphen is irrelevant under an analysis
of the Policy. As a result, the Panel
concludes that Respondent’s <dransfieldross.com>, and <dransfield-ross.com>
domain names are confusingly similar to Complainant’s DRANSFIELD AND ROSS mark
pursuant to Policy ¶ 4(a)(i). See Saul Zaentz Co. v. Dodds, FA
233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the
definite article “the” and the preposition “of” from the complainant’s mark and
thus, failed to “sufficiently distinguish the domain name from the mark
pursuant to Policy ¶ 4(a)(i)”); see also Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <dransfieldandross.com>, <dransfieldross.com>, and <dransfield-ross.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). The Panel reaches this conclusion because the WHOIS information identifies Respondent as “N.S. Wolf & Assoc. c/o Nathan Wolf,” and based upon the fact that Complainant has not licensed or authorized Respondent to use its mark in a domain name. Furthermore, the Panel can find no other evidence in the record indicating that Respondent is commonly known by the disputed domain names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not making any use of the disputed domain names. Previous panels have found that a respondent’s failure to use disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not 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)). In this case, Respondent first registered the disputed domain names in March 2002, and there is no evidence in the record indicating that Respondent has made any attempt to use them since that time. Therefore, the Panel concludes that Respondent’s failure to use the disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also alleges that Respondent offered to sell the
disputed domain names to Complainant.
Respondent did not demand a specific dollar amount, but encouraged
Complainant to make a “reasonable offer.”
The Panel finds this offer to sell the disputed domain names to
Complainant as further evidence that Respondent lacks rights and legitimate
interests in the disputed domain names pursuant to 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
Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent failed to use the disputed domain names for over
five years, and then attempted to sell the disputed domain names to
Complainant. Thus, the Panel infers that
Respondent registered the disputed domain names with the primary intention of
selling them. Consequently, the Panel
finds that Respondent’s registration and use of the disputed domain names
constitutes bad faith pursuant to Policy ¶ 4(b)(i). See
Universal City Studios, Inc. v. Meeting
Point Co., D2000-1245 (WIPO
The Panel also finds
that Respondent’s failure to use the disputed domain names for over five years
constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dransfieldandross.com>, <dransfieldross.com>, and <dransfield-ross.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY
Dated: Sept. 25, 2007
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