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Generic Top Level Domain Name (gTLD) Decisions |
Rexam PLC v. Meys, Inc. c/o Serge
Yassievich
Claim Number: FA0311000211942
PARTIES
Complainant
is Rexam PLC, London, United Kingdom
(“Complainant”) represented by John E.
Slaughter, of Moore & Van Allen,
PLLC, P.O. Box 3843, Durham, NC 27702-3843. Respondent is Meys, Inc. c/o Serge Yassievich (“Respondent”), P.O.
Box 705, New York, NY 10040.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <rexam.us>,
registered with Go Daddy Software, Inc.
PANEL
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.
Rodney
C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 14, 2003; the Forum received
a hard copy of the
Complaint on November 17, 2003.
On
November 17, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <rexam.us>
is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, Inc. 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
November 18, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 8, 2002 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent
in compliance with ¶ 2(a) of the Rules for usTLD
Dispute Resolution Policy (the “Rules”).
A
timely Response was received and determined to be complete on December 8, 2003.
An
Additional Submission was timely received from Complainant and was determined
to be complete on December 12, 2003.
An
Additional Submission was timely received from Respondent and was determined to
be complete on December 15, 2003.
On December 22, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Rodney C. Kyle as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
Respondent
seeks a finding of Reverse Domain Name Hijacking.
PARTIES’ CONTENTIONS
A.
Complainant
Basically,
in the Complaint, Complainant makes three main sets of contentions, including
to submit evidence contended to support aspects
of them.
FIRST MAIN SET
In
the first main set of contentions, Complainant basically makes contentions by
way of four points as to Policy ¶ 4(a)(i).
The
first point is that the domain name at issue is registered by Respondent.
The second
point is that Complainant owns, and therefore has rights in, trademarks of
REXAM , as follows:
Serial # (U.S.) |
Registration # (U.S.) |
Goods & Services |
78141823 |
|
·
containers
of metal; cans of metal; metal fragrance and cosmetic pumps; metal spray
containers; metal lipstick cases; metal compacts
and cosmetic closures; metal
bottles; bottle caps; bottle closures; bottle seals; bottle fasteners;
capsules of metal for bottles;
metal ends and closures for attachment to cans
and other containers; dispensers of metal; pumps of metal for attachment to
aerosol
cans and other containers; dispensers or spray attachments of metal
for attachment to containers for dispensing the contents of
those containers ·
cellulose
acetate film used as an industrial or commercial packaging material;
packaging, containers, seals, lids and closures
made from film; laminates;
plastic fibers; plastic film; insulating materials for packaging, containers,
seals, lids and closures;
latex, films, packaging, containers, seals, lids
and closures for medical, surgical, pharmaceutical and healthcare use;
packaging
materials for forming seals |
74733356 |
2191704 |
·
paper for
industrial or commercial packaging or wrapping; paper for the manufacture of
books, stationery or stationery items;
paper for drafting, plotting, tracing,
printing or reproduction; security paper for the manufacture of checks,
passports and
the like; metallized paper for the manufacture of labels,
packaging or giftwrap; coated paper for use in the manufacture of products
such as labels, pressure sensitive adhesive products and transdermal patches;
paper bags, pouches and envelopes for packaging;
blister cards; labels;
containers made of paperboard or cardboard; paper paint color cards; paper or
cardboard point of sale
displays and materials; plastic films and laminates
of plastic films for commercial, medical or industrial packaging or wrapping ·
containers
not made of metal for commercial or industrial use ·
printing
to the specification of others; design of packages and packaging material for
others |
74674309 |
2129700 |
·
printing
to the specification of others; design of packages and packaging material for
others ·
paper for
industrial or commercial packaging or wrapping; paper for the manufacture of
books, stationery; paper for drafting,
plotting, tracing printing or
reproduction; security paper for the manufacture of checks, passports and the
like; metalized paper
for the manufacture of labels, packaging or giftwrap;
coated paper for use in the manufacture of products such as labels, pressure
sensitive adhesive products and transdermal patches; paper bags, pouches and
envelopes for packaging; blister cards; labels;
containers made of paperboard
or cardboard; paper paint color cards; paper or cardboard point of sale
displays and materials;
plastic films and laminates of plastic films for
commercial, medical or industrial packaging or wrapping ·
containers
not made of metal for commercial or industrial use |
The
third point is that Complaint Annex C includes a true and correct copy of U.S.
Patent and Trademark Office web site printouts
for said trademarks and which
evidence said trademarks and Complainant’s ownership thereof.
The
fourth point is that the domain name at issue is identical to said trademarks.
SECOND MAIN SET
In
the second main set of contentions, Complainant basically contends by way of
three points that within the meaning of Policy ¶ 4(a)(ii)
Respondent has no
“rights or legitimate interests” in respect of the domain name at issue.
The first point has three sub-points and
is to the effect that (i) prior to contact by
Complainant, Respondent had commercial
advertising, not associated either with said
trademarks or with Complainant products,
present at the website or other on-line location
that resolves through the domain name at
issue; (ii) currently, since contact by
Complainant, Respondent provides no
indication of use or intent to use the domain name
at issue in connection with a bona fide
offering of goods and services, and indeed
Respondent is doing just the opposite by
leaving the domain name inactive and making
no use of the domain name at issue; and
(iii) such commercial advertising and lack of
indication is evidenced by the affidavit
of Mr. John Slaughter that is Complaint Annex A.
The
second point has two sub-points and is to the effect that (i) there is no
indication that Respondent has been commonly known by
the domain name, as an
individual, business, or other organization; and (ii) such lack of indication
is evidenced by the affidavit
of Mr. John Slaughter that is Complaint Annex A.
The
third point has four sub-points and is to the effect that (i) Complainant has
not licensed Respondent to use Complainant’s trademarks;
(ii) Respondent does
not have any relationship with Complainant that would entitle Respondent to use
Complainant’s trademarks; (iii)
Complainant is the owner of the
<rexam.com> and <rexam.net> domain names, which are directed to
Complainant’s main corporate
website; and (iv) the first three sub-points of
this third point are evidenced by the affidavit of Mr. Frank Brown that is
Complaint
Annex B and by the true and correct copy of the Whois database
printouts for the <rexam.com> and <rexam.net> domain names
as of
September 15, 2003 that are Complaint Annex F.
THIRD MAIN SET
In
the third main set of contentions, Complainant basically contends by way of
several points that within the meaning of Policy ¶
4(a)(iii) Respondent either
or both of registered, or is using, the domain name at issue in “bad faith”.
One
of those points is to the effect that (in view of constructive notice by U.S.C.
Title 15, Chapter 22, Subchapter I, Section 1072
and of the reference thereto
in Barney’s Inc. v. BNY Bulletin Board,
D2000-0059 WIPO (Apr. 2, 2000)) the basis for Respondent’s use of the domain
name at issue was to create confusion as to one or
more of the source,
sponsorship, affiliation, or endorsement of the website that resolves through
the domain name at issue with that
of Complainant, with the intent to exploit
Complainant’s goodwill in its trademarks.
B.
Respondent
Basically,
in the Response, Respondent makes three main sets of contentions, including to
submit evidence contended to support aspects
of them.
FIRST MAIN SET
In
the first main set of contentions, Respondent does not dispute what is set out
above as Complainant’s first main set of contentions.
SECOND MAIN SET
In the second main set of contentions,
Respondent basically makes contentions by way of
five points as to Complainant’s second
main set of contentions; Respondent’s second
main set of contentions does not include
evidence.
In Respondent’s first point, Respondent
does not dispute the first of Complainant’s three
sub-points of Complainant’s first point
(i.e. Complainant’s sub-point that prior to contact
by Complainant, Respondent had commercial
advertising, not associated either with said
trademarks or with Complainant products,
present at the website or other on-line location
that resolves through the domain name at
issue). Respondent instead contends that said
first of Complainant’s three sub-points
is “true by itself” but that said sub-point “can only
be used to show good faith of
[Respondent’s] intentions.”
In Respondent’s second point, Respondent
disputes the second of Complainant’s three
sub-points of Complainant’s first point
(i.e. Complainant’s sub-point that currently, since
contact by Complainant, Respondent
provides no indication of use or intent to use the
domain name at issue in connection with a
bona fide offering of goods and services, and
indeed Respondent is doing just the opposite
by leaving the domain name inactive and
making no use of the domain name at
issue).
In Respondent’s third point, Respondent
disputes the second point of Complainant’s
second main set of contentions (i.e.
Complainant’s point that there is no indication that
Respondent has been commonly known by the
domain name, as an individual, business,
or other organization). As part of doing
so, Respondent contends in effect (and as exemplified by Respondent’s using the
phrase “first
come – first served”), that Respondent’s registration of the
domain name at issue per se confers
or evidences “rights or legitimate interests” within the meaning of that
expression as it appears in Policy ¶ 4(a)(ii).
In Respondent’s fourth point, Respondent
does not dispute the third point of
Complainant’s second main set of
contentions (i.e. Complainant’s point comprised of
four sub-points that (i) Complainant has
not licensed Respondent to use Complainant’s
trademarks; (ii) Respondent does not have
any relationship with Complainant that would
entitle Respondent to use Complainant’s
trademarks; (iii) Complainant is the owner of
the <rexam.com> and
<rexam.net> domain names, which are directed to Complainant’s
main corporate website; and (iv) the
first three sub-points of this third point are
evidenced by the affidavit of Mr. Frank
Brown that is Complaint Annex B and
by the true and correct copy of the Whois
database printouts for the <rexam.com> and
<rexam.net> domain names as of
September 15, 2003 that are Complaint Annex F).
Respondent instead contends that said
third point is “true” but that said third point is
“irrelevant” in that Respondent “did not
and do[es] not use [Complainant’s] trademarks.”
In Respondent’s fifth point, Respondent
disputes Complainant’s general Policy ¶ 4(a)(ii)
contention (i.e. Complainant’s contention
that in respect of the domain name at issue
Respondent has no rights or legitimate
interests) by contending that the domain name at
issue “has been taken in memory of [a]
pet known under [the] Russian name
<<PeKcaMac>> which sounds very similar to
Rexamus [in] English.” As part of doing so,
Respondent repeats the contention
described in the next to immediately preceding
paragraph hereof, that Respondent’s
registration of the domain name at issue per
se
confers or evidences “rights or
legitimate interests” within the meaning of that expression
as it appears in Policy ¶ 4(a)(ii).
THIRD MAIN SET
In
the third main set of contentions, Respondent basically does two things.
First,
with at least one exception, Respondent basically denies Complainant’s third
main set of contentions.
One
exception is as to the Complainant contention of bad-faith use in which
Complainant relies on U.S.C. Title 15, Chapter 22, Subchapter
I, Section 1072
constructive notice and on the reference thereto in Barney’s Inc., supra. In
response to Complainant’s contention, Respondent contends that “[t]he facts
demonstrated that [Respondent] did not use [the domain
name at issue] at all …
[a]nd we both agreed about it” as well as that “[Respondent] do[es] not violate
any trademark in any sense”
and so, Respondent contends, that neither that
section nor Barney’s Inc., supra, is applicable.
Second,
Respondent contends that by this proceeding Complainant has attempted Reverse
Domain Name Hijacking.
C.
Additional Submissions
Neither Party’s Additional Submission
appears to permissibly provide anything pertinent
that, in view of the Complaint and the
Response, was not already apparent to the Panel as
being at issue in this proceeding or as
being the responsibility of the Panel.
FINDINGS
The Panel finds
(i) the
domain name at issue is registered by Respondent, there are at least U.S.
trademark registrations 2191704 and 2129700 as to REXAM
and in which
Complainant has rights, and the domain name at issue is identical thereto;
(ii)
Respondent
has no rights or legitimate interests in respect of the domain name at issue;
and
(iii)
bad-faith
use of the domain name at issue.
DISCUSSION
Rules ¶
15(a) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted and in
accordance with the
Policy, these Rules and any rules and principles of law
that it deems applicable.”
Policy
¶ 4(a) requires that Complainant must prove each of the following three elements
to obtain an order that a domain name should
be transferred:
(i)
the domain
name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights;
(ii)
Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii)
the domain
name has been registered, or is being used, in bad faith.
Especially
in view thereof, the summaries of each Party’s contentions, set out above, are
basically as to those three requirements.[i]
Also,
especially in view of Rules ¶ 15(a), the Panel notes four rules and principles of law that it especially
deems applicable to ascertaining whether each of those three elements
has been proven. First, that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. “real evidence”);
4. By judicial
inference (what is ascertained by reasoning from facts already ascertained by
one or more of the four methods here
outlined).[ii]
Second,
especially as to mode “3”, that Rules ¶ 10(d) provides that “The Panel shall
determine the admissibility, relevance, materiality
and weight of the
evidence.” Third, as to construing and applying Rules ¶ 10(d), especially as to
whether mode “1” rather than mode
“3” applies: a complainant’s pleading of fact
that is not disputed (or, phrased differently, not “put in issue”) by a
respondent
against whom it is contended, is an admission by that respondent,[iii]
so evidence tendered as being rationally probative of (i.e. as being “relevant
to”) establishing that fact becomes immaterial, and
hence inadmissible, as to
establishing that fact.[iv]
Fourth, as to whether mode “2” rather than either of mode “1” or mode “3”
applies, a canvassing of law and commentary shows that
It
was not desirable, nor indeed possible, to foreclose the trier’s use of background
information but should the matter noticed be
in the forefront of the
controversy, should the fact be determinative, the law protected the adversary
by insisting that the matter
be so commonly known, and hence indisputable, that
its notice could not prejudice the opponent.[v]
and
that “The party who has the burden of proof on the issue may have to call on
the trier to judicially notice the fact when it comes
time to analyze the
question.”[vi]
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 or Confusingly Similar
The third of the four rules and
principles of law set out in the next to immediately preceding paragraph hereof
is applicable to the
Parties’ contentions on this topic. Specifically, the
Panel finds that Respondent admits Complainant’s contentions on this topic
(i.e. the four points of Complainant’s first main set of contentions) and that
consequently, on this topic, Complaint Annex C is
immaterial.
In view especially of the immediately
preceding paragraph hereof, Policy ¶ 4(a)(i) is proven as to the domain name at
issue.
Rights or Legitimate Interests
The context in which this part of this
discussion occurs includes (i) Policy ¶ 4(c); and (ii) administrative panel
decisions as to
burden of production.
Policy
Paragraph 4(c)
Policy ¶ 4(c) is basically directed from
a domain name registrar to a domain name registrant and prospective mandatory
administrative
proceeding respondent, and includes that
When you receive a complaint, you should
refer to the Rules in determining how your response should be prepared. Any of
the following
circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation of all evidence presented,
shall
demonstrate your rights or legitimate interests to the domain name for purposes
of [Policy] Paragraph 4(a)(ii):
(i) You are the owner or beneficiary of a
trade or service mark that is identical to the domain name; or
(ii) Before any notice to you of the
dispute, your use of, or demonstrable preparations to use, the domain name or a
name corresponding
to the domain name in connection with a bona fide offering
of goods or services; or
(iii) You (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired
no trademark or service mark rights; or
(iv) You are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly
divert consumers or to tarnish the trademark or service
mark at issue.
(See endnote 3 hereof for some provisions
of the Rules.)
Neither Policy ¶ 4(c)(i) nor Policy ¶
4(c)(iv) appear to be contended for in this
proceeding.
Instead, (i) Complainant’s second main
set of contentions amount to contentions of
Policy ¶ 4(a)(ii) generally and of
negatives of Policy ¶¶ 4(c)(ii) and 4(c)(iii) particularly;
and (ii) in response, two aspects of
Complainant’s second main set of contentions are not
put in issue (i.e. by the first and
fourth points of Respondent’s second main set of
contentions) and are therefore admitted
by Respondent, whereas three aspects are put in
issue (i.e. by the second, third, and
fifth points of Respondent’s second main set of
contentions).
The first aspect not in issue is that,
prior to contact by Complainant, Respondent had
commercial advertising, not associated
either with said trademarks or with Complainant
products, present at the website or other
on-line location that resolves through the
domain name at issue. (On this topic, the
commercial advertising aspect of Complaint
Annex A is therefore immaterial.)
Respondent’s contention that such advertising can only
be used to show good faith of
Respondent’s intentions is wrong. Instead, (i) there is the
fact that the registration dates of the
trademark registrations precede the registration date
of the domain name
at issue;[vii]
(ii) the advertising to which Respondent admits proves
Respondent’s use
of the domain name at issue for commercial gain (in an intentional attempt to
attract Internet users thereto through
confusion with Complainant’s mark as to
the source, sponsorship, affiliation, or endorsement of said website or other
on-line location
or of products or services thereon) but points away from
Respondent having made a bona fide offering of goods or services and therefore
points away from Policy ¶ 4(c)(ii) availing Respondent; and (iii) the
advertising does not point towards Policy ¶ 4(c)(iii) availing
Respondent.
The second aspect not in issue is that
(i) Complainant has not licensed Respondent to use
Complainant’s trademarks; (ii) Respondent
does not have any relationship with
Complainant that would entitle Respondent
to use Complainant’s trademarks; (iii)
Complainant is the owner of the
<rexam.com> and <rexam.net> domain names, which
are directed to Complainant’s main
corporate website; and (iv) those first three sub-
points are evidenced by the affidavit of
Mr. Frank Brown that is Complaint Annex B and
by the true and correct copy of the Whois
database printouts for the <rexam.com> and
<rexam.net> domain names as of
September 15, 2003 that are Complaint Annex F. (On
this topic, those first three sub-point
aspects of Complaint Annexes B and F are therefore
immaterial). Respondent’s contention that
said four sub-points are irrelevant, in that
purportedly Respondent did not and does
not use Complainant’s trademarks, is wrong in
two respects. First, (i)
Respondent admits that the domain name at issue is registered by
Respondent;[viii]
and (ii) Complainant’s trademark legal interests were registered since
September
29, 1998 and January 20, 1998
and the registration of the domain name at
issue occurred on May 8, 2002;[ix]
so (iii) to effect registration of the domain name at
issue, Respondent used the
character-string that then was (and still is) subject to
Complainant’s trademark legal interests. Second,
(i) as indicated by the immediately
preceding paragraph hereof, Respondent
admits to use of that character-string as part of
the domain name at issue, for resolution
to the above-mentioned advertising; and (ii) such
character-string use is use of said
trademarks, and it is use that does not avail Respondent
under either of Policy ¶¶ 4(c)(ii) and
4(c)(iii) since it is use for which Respondent admits
Respondent is neither licensed by
Complainant nor otherwise entitled by a relationship
with Complainant.
As for the three aspects in issue, the
Complaint provides evidence on two of the three of
them and the Response provides no
evidence at all. As to the first aspect in issue,
Complaint Annex A is indeed as contended
by Complainant: it includes evidence by ¶ 2
of an affidavit from Mr. John Slaughter
that currently, since contact by Complainant,
Respondent provides no indication of use
or intent to use the domain name at issue in
connection with a bona fide offering of
goods or services, and that indeed Respondent is
doing just the opposite by leaving the
domain name inactive and making no use of the
domain name at issue. As to the second
aspect in issue, Complaint Annex A is indeed as
contended by Complainant: it includes
evidence by ¶ 3 of an affidavit from Mr. John
Slaughter that there is no indication
that Respondent has been commonly known by the
domain name, as an individual, business,
or other organization. As to the third aspect in
issue,
there is Respondent’s repeated contention that Respondent’s registration of the
domain name at issue per se confers
or evidences “rights or legitimate interests” within the meaning of that
expression as it appears in Policy ¶ 4(a)(ii), but
Respondent’s contention is
wrong. It is wrong because, (i) if a respondent’s domain name registration that
is the very subject-matter
of a mandatory administrative proceeding under the
Policy could, per se, confer or
evidence “rights or legitimate interests” within the meaning of that expression
as it appears in Policy ¶ 4(a)(ii) then
the Policy would basically be rendered
a nullity; (ii) analogously, it has long been well and clearly established by
mandatory administrative
proceeding decisions under the UDRP that such
registrations do not confer or evidence UDRP ¶ 4(a)(ii) “rights or legitimate
interests”;[x] and (iii) in
those respects, the same reasoning applies under the Policy as under the UDRP.
Administrative
Panel Decisions As To Burden of Production
In view especially of the six immediately
preceding paragraphs hereof, Complainant has made a prima facie showing.
Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) includes that when, as in this case, “the complainant has made a prima facie showing, the burden of
production shifts to the respondent to show by providing concrete evidence that
it has rights to or legitimate
interests in the domain name at issue” (emphasis
in original). (To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002)
and Twentieth Century Fox Film Corp. v.
Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).)
Respondent has not met that burden:
Respondent’s contentions do not include concrete evidence that Respondent has
rights to or legitimate
interests in the domain name at issue.
Summary
In view especially of the ten immediately
preceding paragraphs hereof, Policy ¶ 4(a)(ii) is proven as to the domain name
at issue.
Registration, or Use, in Bad Faith
The context in which this part of this
discussion occurs includes Policy ¶ 4(b).
Policy ¶ 4(b) is basically directed from
a domain name registrar to a domain name registrant and prospective mandatory
administrative
proceeding respondent, and includes that
For the purposes of [Policy paragraph
4(a)(iii)], the following circumstances, in particular but without limitation,
if found by the
Panel to be present, shall be evidence of the registration or
use of a domain name in bad faith:
(i) Circumstances indicating that you
have registered or you have acquired the domain name primarily for the purpose
of selling, renting,
or otherwise transferring the domain name registration to
the Complainant who is the owner of the trademark or service mark or to
a
competitor of that Complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to
the domain name; or
(ii) You have registered the domain name
in order to prevent the owner of the trademark or service mark from reflecting
the mark in
a corresponding domain name; or
(iii) You have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv)
By using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or
other on-line location, by
creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation,
or endorsement of your web site or location
or of a product or service on your web site or location.
As for each of Policy ¶¶ 4(b)(i), (ii)
and (iii), they basically define respective types of bad-faith registration and
provide that
if any one of such types of registration has been ascertained by a
panel then at least bad-faith registration is in turn evidenced
via application
of the respective one of those three provisions.
As for Policy ¶ 4(b)(iv), it basically
defines a type of bad-faith use and provides that if such type of use is
ascertained by a panel
then at least bad-faith use is in turn evidenced via
application of that provision.
In view of the Panel’s disposition of the
Policy ¶ 4(b)(iv) issue, the Panel need not
address other Policy ¶ 4(b) issues. Specifically,
in view of the fact that the registration
dates of the trademark registrations
precede the registration date of the domain name at
issue,[xi]
both of U.S.C. Title 15, Chapter 22, Subchapter I, Section 1072 and the
constructive notice reference in Barney’s Inc., supra, are applicable. More specifically, it
is worth setting out, here, Complainant’s
reference to that legislation and to that decision.
Complainant’s reference quotes Barney’s Inc., supra, by including the following
(wherein expressions specific to that
case having been replaced by bracketed
expressions):
Under Section 22 of the United States
Trademark Act, the Respondent is charged with knowledge of Complainant’s rights
in its trademark. Section 22 of the
Trademark Act states that “(r)egistration of a mark on the principal register .
. . shall be constructive notice
of the registrant’s claim of ownership
thereof.” As a matter of the United
States trademark law, it must therefore be presumed that Respondent was on
notice of Complainant’s [trademark
rights] prior to registering the domain name
[at issue].
Respondent’s registration of the domain
name at issue necessarily preceded Respondent’s
use of the domain name at issue and it is
completely inapposite for Respondent to
contend that the facts demonstrated (i)
Respondent did not use the domain name at issue
at all, and Complainant and Respondent
agreed about such non-use; and (ii) Respondent
does not violate any trademark in any
sense. Instead, (i) Respondent used the domain
name at issue;[xii]
and (ii) such use of the domain name at issue does indeed
violate Complainant’s trademarks and
occurred after Respondent had constructive notice
of Complainant’s trademark rights.[xiii]
As a result, Complainant’s Policy ¶ 4(b)(iv)
contention of bad-faith use (which
contention relies on U.S.C. Title 15, Chapter 22,
Subchapter I, Section 1072 and on the
constructive notice reference in Barney’s
Inc.,
supra) is therefore entirely apposite:
Respondent’s use of the domain name at issue is
bad-faith use, contrary to Policy ¶
4(b)(iv).
In view especially of the six immediately
preceding paragraphs hereof, Policy ¶ 4(a)(iii) is proven as to the domain name
at issue.
DECISION
Having established all three elements
under the usTLD Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, (i) it is Ordered that the <rexam.us>
domain name be TRANSFERRED from Respondent to Complainant; and (ii)
Respondent’s request for a finding of Reverse Domain Name Hijacking is
dismissed.
Rodney C. Kyle, Panelist
Dated: January 5, 2004
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