WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Computer Products, Co. Inc. v. Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc
Case No. D2008-0017
1. The Parties
Complainant is United Computer Products, Co. Inc., Altoona, Pennsylvania, United States of America, represented by Buchanan Ingersoll & Rooney, PC, United States of America.
Respondent is Domain Name Proxy, Inc Domain Name Proxy, Inc, Domain Name Proxy, Inc, Domain Name Proxy, Inc, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2008. On January 8, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On January 8, 2008, GoD, Inc. transmitted by email to the Center its verification response indicating that Respondent initially identified by Complainant was not the registrant of the disputed domain name but that the registrant is rather “Domain Name Proxy, Inc Domain Name Proxy, Inc, Domain Name Proxy, Inc, Domain Name Proxy, Inc” (as also identified in the whois data). In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 11, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 5, 2008.
The Center appointed Andrew Mansfield as the sole panelist in this matter on February 12, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Parties’ Contentions
A. Complainant
Complainant alleges that it has sold computer hardware and related goods under the trademark UCP (which stands for its corporate name, United Computer Products, Co., Inc.) since 1989. Complainant further alleges that it registered the disputed domain name in 1993. Complainant alleges that it advertised and conducted business under the UCP trademark at the disputed domain name from 1993 until March 8, 2006, at which point the domain name was transferred to Respondent without Complainant’s permission.
Complainant indicates that an unauthorized third party accessed its e-mail account on or about March 5, 2006. Further, Complainant alleges that someone used its e-mail account to fraudulently transfer the disputed domain name from Complainant to Respondent between March 5, 2006 and the date Complainant recovered access and control over its e-mail account, March 8, 2006. Complainant alleges that it was first notified of the unauthorized transfer of the disputed domain name on March 10, 2006 and that it unsuccessfully sought relief from the fraudulent transfer through the Registrar, GoD, Inc. Complainant alleges that it notified the United States Federal Bureau of Investigation of the unauthorized transfer and that the investigative agency preliminarily concluded that some unauthorized third party had obtained access to Complainant’s e-mail account and fraudulently transferred ownership of the disputed domain name to Respondent.
Complainant contends that while the website has been inactive and has recently been suspended by the Registrar, the lack of active use of the domain name does not necessarily prevent a finding of bad faith. (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003)
Complainant alleges that it has acquired common law trademark rights to UCP through the use of the trademark to identify computer goods since 1989 and through the use of the trademark in the disputed domain name, , since 1993. Complainant alleges that the disputed domain name and its trademark are identical.
Complainant alleges that it is aware of no rights or legitimate interests that Respondent may have to the domain name. Complainant alleges that it entered no contract to sell or transfer the domain name or authorize a third party to use the trademark UCP or otherwise operate a website at the disputed domain name.
Finally, Complainant alleges that the disputed domain name was obtained through fraud and deception and that the manner by which Respondent obtained the disputed domain name evidences bad faith.
B. Respondent
Although the Panel is satisfied that the Center has undertaken all reasonable steps calculated to achieve actual notification, Respondent did not reply to Complainant’s contentions.
5. Discussion and Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, Complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The Panel finds that Complainant has common law trademark rights to the trademark UCP in the sale of computer goods and equipment. It has long been held that a complainant may present common law trademark rights as the basis for a claim of rights in a trademark at issue under the Policy. See, e.g., Uitgeverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575); Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. Complainant has presented adequate evidence that the trademark UCP has acquired secondary meaning based on its use of the UCP trademark in both online and offline commercial activities over a period of approximately nineteen years. Respondent did not reply to Complainant’s contentions or challenge this factual assertion and the Panel finds that Complainant has the indicated rights to the trademark UCP.
The disputed domain name is identical to Complainant’s trademark UCP. For purposes of such comparison, the Panel does not include the top level domain identifier “.com.” The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant asserts that it is aware of no rights or legitimate interests that Respondent has in the disputed domain name. The disputed domain name is not, to the best of Complainant’s knowledge, the name of Respondent. Complainant asserts that it has not authorized Respondent to use the mark. The Panel is satisfied that Complainant has made out an initial prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of 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 and 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 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, provided that you have engaged in a pattern of such conduct; 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 website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Respondent has engaged in the practice of domain name “hijacking.” As is often the case in situations as this one, especially in the absence of an explanation by Respondent, it is not clear how Respondent gained control of the disputed domain name. It is clear that the disputed domain name was transferred without the permission of the Complainant and through improper means. It is well-settled that the practice of hijacking a domain name — that is wrongfully taking control of a domain name from the rightful name — is of itself evidence of the bad faith use and registration of a domain name (see, e.g., CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies,WIPO Case No. D2005-0609; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; JAI A/S v. Site Services International, Richard Sorensen,WIPO Case No. D2007-1685; see also Domain Name Hijacking: Incidents, Threats, Risks, and Remedial Action, Report from the ICANN Security and Stability Advisory Committee, July 12, 2005).
Furthermore, the Panel having visited the disputed domain name notes that whoever may be responsible for the current posting of sponsored links on the apparently Registrar provided parking page, such use presumably generates revenues at least in part resulting from confusion with Complainant’s mark.
The Panel finds, taking account of all of the circumstances of the case, that Respondent has registered and is using the disputed domain in bad faith based on the uncontroverted facts presented by Complainant concerning the hijacking of the domain name by Respondent. Complainant has therefore satisfied Paragraph 4(a)(iii) of the Policy.
6. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Andrew Mansfield
Sole Panelist
Date: February 22, 2008
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