|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Digital-Logic AG v. Jordano Daemonti
Claim Number: FA0405000273488
PARTIES
Complainant
is Digital-Logic AG (“Complainant”),
represented by James A. Newmark, of Hayman & Baldi,
Zeltweg 44, Postfach 1622, Zurich, 8032, CH, Switzerland. Respondent is Jordano Daemonti (“Respondent”), 4350 N. Nellis BLV #255, Las
Vegas, NV 89115.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <digitallogic.com>,
registered with Bulkregister, Llc.
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 17, 2004; the Forum received
a hard copy of the Complaint
on May 18, 2004.
On
May 25, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the
domain name <digitallogic.com>
is registered with Bulkregister, Llc. and that Respondent is the current
registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc.
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
May 26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 15,
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@digitallogic.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 24, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed John J. Upchurch
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. Respondent’s <digitallogic.com> domain name is confusingly similar to
Complainant’s DIGITAL-LOGIC mark.
2. Respondent does not have any rights or
legitimate interests in the <digitallogic.com>
domain name.
3. Respondent registered and used the <digitallogic.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Digital-Logic AG, is the
owner of the DIGITAL-LOGIC mark, which it registered in the United States on
the Supplemental
Register of the U.S. Patent and Trademark Office (“USPTO”) on
April 2, 2002 (U.S. Reg. No. 2,557,420 filed on April 8, 1999). Under the DIGITAL-LOGIC mark, Complainant
develops, produces and distributes computer hardware and software for use as an
embedded
operating system. Complainant
claims to have made continual use of the mark since 1992.
On December 29, 1996, Complainant
registered the <digitallogic.ch> domain name for use with its
business. After over a year of
negotiations, Complainant was then able to purchase the domain name
registration for the <digitallogic.com>
domain name from MicroScientific, Inc., owner of the domain name registration
since January of 1999, for $10,000. The
transfer of this sum was made to EchoStar Network Solutions, Inc., one of the
administrative and technical contacts for the <digitallogic.com> domain name, on July 11, 2000. The domain name was consequently transferred
to BulkRegister as the new registrar, and Dr. Emad Krechan (the second
administrative
and technical contact for the <digitallogic.com> domain name) made the domain name
available for Complainant’s use.
Complainant then proceeded to use the domain name for its business for
the next three and a half years.
On January 14, 2004, Complainant was
informed by BulkRegister that the <digitallogic.com>
domain name registration had been renewed (without Complainant’s knowledge or
authorization) on January 13, 2004, and that the only
available contact listed
for the domain name registration was forlease@digitallogic.com. Complainant was subsequently informed by
BulkRegister that Network Division, Inc., an entity of which Complainant had
never heard
of or dealt with prior to this incident, had made the renewal on
behalf of Complainant.
Complainant attempted to contact Network
Division, Inc., without success, and soon noticed that the DNS entries for the <digitallogic.com> domain name
had been changed to <networkdivision.com> on January 22, 2004, again
without Complainant’s approval.
By January 24, 2004, Complainant’s
website at the <digitallogic.com>
domain name had been deactivated and was no longer accessible by Internet
users. All of Complainant’s e-mail
communications, which had been running through the domain, were also blocked.
Respondent, Jordano Daemonti, is listed
as sole registrant/contact for the <digitallogic.com>
domain name. Jordano Daemonti uses the
same P.O. Box address (#360335) in Brooklyn, NY as Dr. Emad Krechan, the
administrative and technical contact
for the domain name registration when it
was owned by MicroScientific, Inc., and Malik Krechman, respondent in an
earlier complaint
filed with the Forum concerning the domain name.
The WHOIS information for the <digitallogic.com> domain name
states that Respondent registered the domain name on January 20, 1999.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the 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.
Before
addressing the merits of the parties' contentions, the Panel finds it necessary
to determine whether it may even consider the
Complaint. The domain name in
dispute in this case was the subject of an identical dispute between
Complainant and a different named
Respondent. In a prior decision, earlier this
year, a panel decided the dispute in favor of Respondent, refusing to transfer
the
domain name to Complainant. Digital-Logic AG v. Krechman FA 235827
(Nat. Arb. Forum April 8, 2004). Panels
have been split as to whether principles of claim or issue preclusion apply in
proceedings under the Policy.
The
Panel finds that common law principles should not be applied in this relatively
new and developing area. Furthermore,
the Panel finds that preclusion is inapplicable where, as here, a previous
Panel has reserved the right for Complainant
to refile. See High Speed Prod., Inc. v. Thrasher Magazine, Ltd, FA 97008 (Nat.
Arb. Forum June 20, 2001) (declining to apply principles of issue and claim
preclusion where the area of law is so
new and the dispute resolution process
is still evolving); see also Cluett, Peabody & Co., Inc. v. Sanford Bus
Writing Serv., FA 95842 (Nat. Arb. Forum Dec. 12, 2000) (allowing a
Complaint to be refiled because the previous Panelist had “expressly reserved
the right of Complainant to recharge bad faith registration and use of the
domain name in or [at] issue”); see also Jones Apparel Group Inc. v.
Jones Apparel Group.com, D2001-1041 (WIPO Oct. 16, 2001) (allowing refiling
as the previous Panelist gave the “green light in the clearest possible
way to refiling the Complaint”).
Complainant asserts that after a decision
was made in the prior proceeding, the respondent in that proceeding transferred
the <digitallogic.com> domain name to the current Respondent
within the fifteen-day waiting period required under Policy ¶ 8(a). Complainant further argues that Respondent
in this proceeding is a related entity of the prior respondent. Thus, the Panel may find that any actions of
the prior respondent, Malik Krechman, transfer to the current named Respondent. See Miles D., Ltd v. Tokaido
Shosha, AF-0318 (eResolution Sept. 28, 2000) (“[I]n certain circumstances,
illegitimacy and bad faith of a prior domain name owner may ‘attach
to’ the
domain name, and pass with the transfer to a subsequent domain name owner. This would be the case, for example, where
the transfer was a sham or to a related entity.”).
Complainant asserts that it has established rights
in the DIGITAL-LOGIC mark by registering it with the Supplemental Register of
the
United States Patent and Trademark Office on April 2, 2002 (Reg. No.
2,557,420 filed on April 8, 1999). The
Panel finds that Complainant’s registration of the mark makes the mark
inherently distinctive. 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).
Furthermore,
Complainant asserts that prior to its trademark rights in the DIGITAL-LOGIC
mark, it has had common law rights in the
mark since at least 1995. Complainant further asserts that it has used
the mark at trade shows in the United States and has operated under the
DIGITAL-LOGIC
mark in Switzerland since at least as early as 1995. Complainant asserts that it registered the
<digitallogic.ch> domain name on December 29, 1996. Thus, the Panel finds that Complainant has
established common law rights in its mark through secondary meaning. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy
does not require “that a
trademark be registered by a governmental authority for
such rights to exist”); see also Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that
Complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark).
Complainant
argues that the <digitallogic.com>
domain name is confusingly similar to Complainant’s DIGITAL-LOGIC mark because
the domain name fully incorporates the mark, deleting
only a hyphen. The Panel finds that merely deleting a
hyphen from Complainant’s trademark fails to distinguish the disputed domain
name from Complainant’s
mark. See BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (finding that the domain name,
<tippex.com> is confusingly similar to Complainant’s mark,
TIPP-EX and
that use of a hyphen does not negate likelihood of confusion); see also Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June
19, 2000) (holding that the domain name <cspan.net>, which omitted the
hyphen from the trademark spelling,
C-SPAN, is confusingly similar to
Complainant's mark); see also Ritz-Carlton
Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding
that removing a hyphen in the domain names is not sufficient to differentiate
the domain
names from the mark).
The Panel
finds that Respondent is not commonly known by the disputed domain name and
therefore lacks rights and legitimate interests
in the 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).
Complainant asserts that, while it used
the domain name in association with its business for three and a half years,
Respondent shut
down Complainant’s website and has not made any use of the
domain name. Thus, the Panel finds that
passively holding the disputed domain name does not constitute a bona fide
offering of goods or services
by Respondent pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001)
(finding that no rights or legitimate interest can be found when Respondent
fails to use
disputed domain names in any way); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that Respondents
have not established
any rights or legitimate interests in the domain name); see also Flor-Jon Films, Inc. v. Larson, FA 94974
(Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop
the site demonstrates a lack of legitimate
interest in the domain name).
Additionally, once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights or legitimate interests pursuant
to Policy ¶
4(a)(ii). See 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”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with
respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate
interests in the domain name).
Finally, because Respondent has not
submitted a Response, the Panel accepts all reasonable allegations and
inferences in the Complaint
as true. See
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.”);
see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in
the allegations of Complainant to be
deemed true).
While
each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences
bad faith use and registration of a domain name,
the Panel may consider
additional factors in determining if there is bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Complainant
asserts that Respondent has not developed a website in connection with the <digitallogic.com>
domain name. The Panel finds that
passive holding of a domain name is evidence of bad faith registration and use
on the part of Respondent. 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 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).
Furthermore, Complainant asserts that its
DIGITAL-LOGIC mark has been heavily promoted in the United States and
Switzerland to purchasers
of embedded operating systems equipment. The Panel finds that Respondent’s
registration of a domain name that incorporates Complainant’s registered mark,
deviating only by
the deletion of a hyphen, suggests that Respondent knew of
Complainant’s rights in the DIGITAL-LOGIC mark. Thus, the Panel finds that Respondent chose the disputed domain
name based on the distinctive and well-known qualities of Complainant’s
mark
and that this evidences bad faith registration. 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 Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that
Respondent’s registration and use of an identical and/or confusingly similar
domain
name was in bad faith where Complainant’s BEANIE BABIES mark was famous
and Respondent should have been aware of it); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual
or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted
bad faith).
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 <digitallogic.com>
domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated:
July 9, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/923.html