|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Donald T. Runge v. Marcus Tovar
Claim
Number: FA0405000275414
Complainant is Donald T. Runge (“Complainant”), represented
by George R. Katosic, 3321 Bonniebrook Dr., Plano, TX
75075. Respondent is Marcus Tovar (“Respondent”), 213 W. Wisconsin Ave., Oconomowoc, WI 53066.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <leadguru.com>, registered with Tucows
Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict
in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 21, 2004; the Forum
received a hard copy of the Complaint
on May 26, 2004.
On
May 25, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name
<leadguru.com> is registered with Tucows Inc. and that Respondent
is the current registrant of the name. 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
June 2, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 22, 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@leadguru.com 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
June 25, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra
Franklin 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <leadguru.com>
domain name is identical to Complainant’s LEAD GURU mark.
2. Respondent does not have any rights or
legitimate interests in the <leadguru.com> domain name.
3. Respondent registered and used the <leadguru.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
registered the LEAD GURU service mark with the United States Patent and
Trademark Office on August 8, 2000 (Reg. No. 2,374,575).
The LEAD GURU mark has been used in commerce
since September 19, 1994 in connection with “educational services for insurance
agents,
namely conducting classes, seminars, conferences and workshops in the
field of insurance effectively using leads and the names of
prospective
insurance applicants to obtain insurance business.”
Respondent
registered the disputed domain name <leadguru.com> on May 15,
2002. Respondent is not using the
domain name in connection with an active website. Rather, the domain name resolves to a placeholder website,
presumably sponsored by the registrar Tucows Inc.
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.
Registering a
mark with an appropriate governing authority is sufficient under the Policy to
confer rights in the mark. Complainant
registered the LEAD GURU service mark with the appropriate governing authority
within the United States, specifically
the Patent and Trademark Office, which
confers rights in the mark to Complainant. 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 Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Reproducing an
entire and complete version of a third-party’s mark within a domain name is
sufficient to establish that a domain name
is identical to the mark pursuant to
paragraph 4(a)(i) of the Policy. The
fact that a domain name includes a generic top-level domain, such as “.com,” is
irrelevant under the Policy. In the
instant case, the disputed domain name <leadguru.com> contains a
complete copy of Complainant’s LEAD GURU mark and has merely added the
top-level domain “.com” to the mark. As
a result, the Panel finds that the disputed domain name is identical to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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 Nikon, Inc. v. Technilab, Inc.,
D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark
in the domain name); see also
Daedong-USA, Inc., Kioti Tractor Div. 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).”); see also Nevada
State Bank v. Modern Ltd. – Cayman Web Dev.,
FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level
domain is irrelevant when considering whether a domain name is identical
or
confusingly similar under the Policy.”).
Complainant
has established Policy ¶ 4(a)(i).
Respondent has
not provided the Panel with a Response to the Complaint. The failure to respond may function as an implicit
admission that Respondent lacks rights to and legitimate interests in the
disputed
domain name and the lack of a Response allows the Panel to accept the
facts and all reasonable inferences set forth in the Complaint
as true. 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 Bloomberg L.P. v. GAF, FA
190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not
come forward to explain what legitimate use it
may have had in the domain
names, the panel could “presume that
Respondent lacks rights and legitimate interests in the domain names at
issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond
allows a presumption that Complainant's allegations are true unless
clearly
contradicted by the evidence); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true); see also Am. Online, Inc. v. Clowers, FA 199821 (Nat.
Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a
complainant’s allegations allows a panel to accept
all of the complainant’s
reasonable allegations and inferences as true).
The evidence
before the Panel indicates that Respondent has not used the disputed domain
name in connection with an active website
since registering the domain name
over two years ago. Respondent has not
forwarded evidence to the Panel that would suggest any preparations to use the
domain name, which is identical
to Complainant’s LEAD GURU mark. It is reasonable, therefore, to interpret
Respondent’s passive holding of the domain name as evidence that Respondent is
not using
the domain name in connection with 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).
See 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); see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent
merely passively held
the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA
204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain
name does not establish rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii).”).
Moreover, the
facts in evidence do not suggest that Respondent is commonly known by the
disputed domain name <leadguru.com>. On the contrary, the WHOIS registration information lists “Marcus
Tovar” as the registrant and administrative contact for the disputed
domain
name. “Domain, Direct” is listed as the
technical contact for the domain name.
Therefore, the Panel finds that the evidence fails to indicate that Respondent
is commonly known by the domain name <leadguru.com> pursuant to
Policy ¶ 4(c)(ii). See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the notion
that a respondent is commonly known by a domain name, the notion
must be
rejected); see also Am. W. Airlines, Inc. v. Paik, FA
206396 (Nat. Arb. Forum Dec. 22, 2003) (finding that since Respondent listed its name as being “Ilyoup Paik a/k/a David
Sanders” in the WHOIS domain name registration information, Respondent
was not
commonly known by the domain name <awvacations.com>); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given
the WHOIS contact information for the disputed domain, one can infer that
Respondent, Onlyne Corporate Services11, is not
commonly known by the name
‘welsfargo’ in any derivation.”); see also WV Educ.
Broad. Auth. v. Thompson, FA 196011 (Nat. Arb. Forum Oct. 27, 2003) (finding that the WHOIS information failed to establish that
Respondent was commonly known by the <wvpbs.org> domain name and
did not
evidence rights or legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii)).
Complainant has established
Policy ¶ 4(a)(ii).
To prevail under
Policy ¶ 4(a)(iii) a complainant must prove that a respondent registered and
used a domain name in bad faith. Panels
have developed two types of domain name “use” under the Policy. These types involve both “active” and
“passive” use. In the instant case,
Respondent is passively using the disputed domain name because it has failed to
use the name in connection with
a developed website for over two years. Passive holding of a domain name that is
identical to a third-party mark has been found to be evidence of bad faith
under Policy ¶
4(a)(iii). The Panel
follows this line of reasoning in the instant case and finds that Respondent
registered and used the disputed domain name,
which is identical to
Complainant’s mark, in bad faith pursuant to Policy ¶ 4(a)(iii). The fact that Respondent failed to respond
to the Complaint and did not reveal facts or circumstances that would lead the
Panel to
a different conclusion is a factor in this determination. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that Respondent’s passive holding of the domain name satisfies the
requirement of ¶
4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without
active use can constitute use in
bad faith); see also Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain
circumstances, for inactivity by the Respondent to amount
to the domain name
being used in bad faith”); see also Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <leadguru.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
July 9, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/921.html