DECISION

Top Layer Networks, Inc. v. Xinet

Claim Number:  FA0312000220028

PARTIES

Complainant is Top Layer Networks, Inc., Westboro, MA (“Complainant”) represented by Scott M. Soloway, 47 Sherburn Circle, Weston, MA 02493.  Respondent is Xinet, 1112 Boylston St., PM 456, Boston, MA 02215 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <toplayernetworks.com>, <toplayernetworks.net>, and <toplayernetworks.org>, registered with Tucows, Inc.

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 (the "Forum") electronically on December 16, 2003; the Forum received a hard copy of the Complaint on December 22, 2003.

On December 18, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <toplayernetworks.com>, <toplayernetworks.net>, and <toplayernetworks.org> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 December 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 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@toplayernetworks.com, postmaster@toplayernetworks.net, and postmaster@toplayernetworks.org by e-mail.

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

On January 26, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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."  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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <toplayernetworks.com>, <toplayernetworks.net>, and <toplayernetworks.org> domain names are identical to Complainant’s TOP LAYER NETWORKS mark.

2. Respondent does not have any rights or legitimate interests in the <toplayernetworks.com>, <toplayernetworks.net>, and <toplayernetworks.org> domain names.

3. Respondent registered and used the <toplayernetworks.com>, <toplayernetworks.net>, and <toplayernetworks.org> domain names in bad faith.

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

FINDINGS

Complainant filed an application for the TOP LAYER NETWORKS mark with the United States Patent and Trademark Office (“USPTO”) on April 22, 1999 and was granted registration on July 8, 2003 (Reg. No. 2733648).  Complainant has used the TOP LAYER NETWORKS mark since January 19, 1999 in connection with its worldwide network security solutions, enabling enterprises to protect against cyber threats and to scale their infrastructure to meet new, ever-increasing security demands. 

Complainant has asserted that the TOP LAYER NETWORKS mark is universally recognized and has acquired substantial goodwill and is an extremely valuable commercial asset.

Complainant allegedly sent Respondent a cease and desist letter on September 23, 2003 by certified mail return receipt, but Respondent failed to respond.  In addition, Complainant has asserted that Respondent contacted Complainant’s employee requesting substantial consideration in return for the transfer of the domain names’ registrations.

Respondent, on the other hand, registered the disputed domain names on November 7, 2004. 

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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the TOP LAYER NETWORKS mark through registration with the USPTO and continuous use since 1999.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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”).

Respondent’s domain names incorporate Complainant’s mark in its entirety and merely add various top-level domain names.  Such additions fail to create distinctiveness.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy”); 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Policy ¶ 4(a)(i) is established.

Rights or Legitimate Interests

The fact that Respondent has failed to respond to the complaint can be construed as evidence that it, in fact, lacks rights to and legitimate interests in the disputed domain names.  Likewise, Respondent has failed to advance evidence to dispute Complainant’s assertion that Respondent lacks rights to or legitimate interests in the disputed domain name.   See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Furthermore, there is no evidence to show that Respondent has ever been commonly known by the disputed domain names.  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 interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Moreover, Respondent’s offer to sell the domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Nat’l Red Cross v. Barry, 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).

Therefore, based on the fact that Respondent has failed to provide any evidence to rebut the assertions contained within the complaint, Complainant has successfully established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent should have known of Complainant’s rights in the TOP LAYER NETWORKS mark because Complainant registered its mark with the USPTO and the mark has acquired goodwill and a certain level of distinctiveness in the public’s mind. 

See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

In addition, Complainant has asserted that Respondent has attempted to sell the disputed domain names for substantial profit, evidencing bad faith registration and use.  See Pocatello Idaho Auditorium Dist. v. CES Mkt’g Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the domain names for sale).

Moreover, Respondent has not provided any evidence that would controvert Complainant’s allegations of bad faith registration and use and that would support a finding to the contrary.  Also, it is hard to imagine that any future use of the names would not cause confusion in the mind of the public.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide evidence to controvert Complainant's allegation that Respondent registered the name in bad faith and any future use of the name would only cause confusion with Complainant’s mark); see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue.”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding bad faith registration and use where Respondent registered a domain name incorporating Complainant’s mark and Respondent failed to show circumstances in which such a registration could be done in good faith).

Therefore, Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <toplayernetworks.com>, <toplayernetworks.net>, and <toplayernetworks.org> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  February 9,2004

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