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Generic Top Level Domain Name (gTLD) Decisions |
Bob Jones University v. Simon Dickinson
Claim
Number: FA0411000360649
Complainant is Bob Jones University (“Complainant”), represented
by James M. Bagarazzi, of Dority & Manning,
Post Office Box 1449, Greenville, SC 29602-1449. Respondent is Simon Dickinson (“Respondent”), Flat 1,
Hillcrest, Woodville Road, Altrincham, Cheshire, Great Britain.
The
domain name at issue is <soundforth.net>, registered with Computer
Services Langenbach Gmbh d/b/a Joker.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
2, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 4, 2004.
On
November 3, 2004, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed
by e-mail to the National Arbitration Forum that
the domain name <soundforth.net>
is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that
Respondent is the current registrant of the name. Computer
Services Langenbach
Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer
Services Langenbach Gmbh d/b/a Joker.com
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
November 5, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 25, 2004 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@soundforth.net by
e-mail.
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
December 8, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Louis E.
Condon 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <soundforth.net>
domain name is identical to Complainant’s SOUNDFORTH mark.
2. Respondent does not have any rights or
legitimate interests in the <soundforth.net> domain name.
3. Respondent registered and used the <soundforth.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Bob
Jones University, was established in 1927 and is well known as Bob Jones
University as an institution of higher learning.
Complainant holds registration
of the SOUNDFORTH mark with the United States Patent and Trademark Office (Reg.
No. 2,522,138, issued
December 25, 2001). Complainant’s first use of the mark
in commerce was in 1992 for goods and services relating to Christian and
classical sheet music. Complainant has used its mark extensively and
continuously since that time. Complainant also operates a website
at the
<soundforth.com> domain name.
Respondent
registered the <soundforth.net> domain name on April 29, 2004.
Respondent has not used the disputed domain name for any purpose since
Respondent registered the
<soundforth.net> domain name more than
seven months ago. The disputed domain name resolves to a placeholder default
page created by Respondent’s
domain name registrar.
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.
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 has
established that it has rights in the SOUNDFORTH mark through registration with
the United States Patent and Trademark
Office and through the use of the mark
in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently
distinctive and have acquired secondary
meaning.”); see also 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. Respondent has the burden
of refuting this assumption).
The <soundforth.net>
domain name is identical to Complainant’s SOUNDFORTH trademark because the
domain name fully incorporates the mark and merely
adds the generic top-level
domain (“gTLD”) “.net” to the mark. A domain name that adds a gTLD does not
distinguish the domain name
from the trademark. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> is plainly identical to
Complainant’s MYSTIC LAKE
trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO
Nov. 6, 2000) (finding that the domain name <nike.net> is identical to
Complainant’s famous NIKE mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June
27, 2000) (finding that the domain name <toshiba.net> is identical to
Complainant’s trademark TOSHIBA).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶ 4(c)(i)-(iii). 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 <soundforth.net>
domain name. See Compagnie Generale
des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001)
(“[p]roving that the Respondent has no rights or legitimate interests in respect
of the [d]omain
[n]ame requires the Complainant to prove a negative. 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
[R]espondents 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”);
see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where Complainant has asserted that
Respondent has no rights or legitimate
interests with respect to the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion
because this information is “uniquely within the
knowledge and control of the respondent”).
Since
Complainant has made a prima facie showing that Respondent does not have any
rights or legitimate interests in the <soundforth.net> domain
name, the burden is shifted to Respondent to demonstrate that it has rights or
legitimate interests in the disputed 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 <soundforth.net> domain name. Furthermore, 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.
See Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent
never
submitted a response or provided the Panel with evidence to suggest otherwise);
see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (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 has
made no use of the <soundforth.net> domain name; as such, it
cannot be said to be making a bona fide offering of goods or services under the
domain name, nor can it
be said to be making a legitimate noncommercial or fair
use of the domain name. In these circumstances, Policy ¶¶ 4(c)(i) and (iii)
are
inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“merely 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 Respondent failed to submit a Response to the Complaint
and had
made no use of the domain name in question).
Furthermore, no
evidence in the record suggests that Respondent is commonly known by the <soundforth.net>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the
domain name in
question).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has not used the <soundforth.net> domain name since its
registration over seven months ago. Notwithstanding the possibility that
Respondent initially registered the
domain name in good faith, such passive
holding amounts to bad faith use and registration under Policy ¶
4(a)(iii). See Phat Fashions v.
Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) even though Respondent has not used the domain
name because
“It makes no sense whatever to wait until it actually ‘uses’ the name, when
inevitably, when there is such use, it will
create the confusion described in
the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour
Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
Respondent made no use of the domain name in question and there are no
other
indications that Respondent could have registered and used the domain name in
question for any non-infringing purpose).
Furthermore,
Respondent’s registration of the disputed domain name, a domain name that
incorporates Complainant’s well-known mark
in its entirety, suggests that
Respondent knew of Complainant’s rights in the SOUNDFORTH mark. Additionally,
Complainant’s trademark
registration on file at the United States Patent and
Trademark Office gave Respondent constructive notice of Complainant’s mark.
Therefore, the Panel finds that Respondent likely chose the <soundforth.net>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use
pursuant to Policy ¶
4(a)(iii). See 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); see also Orange Glo Int’l v. Jeff
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”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <soundforth.net> domain name be transferred
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
December 22, 2004
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