WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Dr. Mehmet Kahveci, HyperLink International LTD. v. Joseph Cabier Case No. D2010-0280 1. The Parties
Complainant is Dr. Mehmet Kahveci, HyperLink International LTD. of Boston, Massachusetts, United States of America, represented by Ugur&Gög, Turkey.
Respondent is Joseph Cabier of Blackstone, Virginia, 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 February 23, 2010. On February 24, 2010, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 24, 2010, GoD, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 1, 2010. 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” or ”UDRP”), 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 March 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 30, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 7, 2010. 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.
Following its preliminary review of the case file in this matter, the Panel issued Administrative Procedural Order No. 1 on April 13, 2010, requesting Complainant to provide information concerning the date on which it asserts that Respondent registered the disputed domain name. By e-mail of April 16, 2010, Complainant transmitted a supplemental filing in response to the Administrative Order. 4. Factual Background
Complainant is the owner of registration of the word service mark SHOWTV.COM on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,525,928, dated October 28, 2008, in international class 35, covering “promoting, advertising, and marketing of the on-line websites of dental websites”. The application for the aforesaid registration was filed on July 10, 2006, asserting first use of February 15, 2006, and first use in commerce of March 1, 2006.
Complainant states that it has established and maintained a network of websites for e-commerce in the United States of America and Turkey, although it has not furnished evidence of use of the service mark in commerce in this proceeding.
The Panel reviewed the USPTO TARR database regarding the trademark application filed by Complainant. The Panel determined that the application was filed as an “intent to use” application, that a statement of use was filed on August 27, 2008, and accepted by the USPTO on September 19, 2008. The specimen of use provided by Complainant to the USPTO consisted of a GoD, Inc. hosted “free” webpage at Internet address (URL) “/showtv”, with screenshot dated August 18, 2008, on which a few photographs from a dental office were posted, along with an advertisement for a “Whitening Special”.
Complainant has provided substantial evidence in the form of invoices from Network Solutions that it registered the disputed domain name on January 23, 1998 and that it paid to maintain that registration through January 24, 2006. Complainant has further provided substantial evidence that the disputed domain name was misappropriated by a party (or parties) gaining unauthorized access to its domain name registration account in 2003, and that thereafter the identity of the registrant of the disputed domain name was changed without the consent of Complainant. Complainant's evidence includes exchanges of e-mail correspondence with the party that undertook the misappropriation and that confirms the misappropriation; correspondence from Complainant's legal representative to government authorities in Turkey regarding prosecution of the misappropriating party (or parties); and correspondence confirming the voluntary “re-transfer” by that party of several other domain names included in the misappropriation. Correspondence with the misappropriating party indicates that the disputed domain name (along with a few others) was not voluntarily re-transferred for reasons that are not entirely clear.
According to the Registrar's verification report, Respondent is registrant of the disputed domain name. According to that report, the disputed domain name was registered to Respondent on April 6, 2007.
According to Complainant, and confirmed by the express courier engaged by the Center to deliver the Written Notice to Respondent in Boston, Massachusetts, United States, the address for Respondent included in its registration of the disputed domain name does not correspond to an actual physical address. Also, while the physical address in Respondent's registration is in Boston, the telefax contact number uses the country code prefix for Austria (43). The Center was unable to complete telefax transmissions to the listed number.
Complainant did not provide evidence of use by Respondent of the disputed domain name. As of the date of this decision, the disputed domain name directs Internet users to a link farm parking page hosted by Sedo.1 The parking page offers “sponsored links” principally to websites offering television programming, and includes a “Buy this domain” link stating “The domain may be for sale by its owner!” Clicking through the “for sale” link directs Internet users to a webpage soliciting offers for purchase of the disputed domain name.
The Registration Agreement in effect between Respondent and GoD, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant alleges rights in the trademark SHOWTV.COM as evidenced by registration at the USPTO. Complainant states that it has “spent considerable manpower and funds to maintain and establish a network of websites for e-commerce in The United States of America and Turkey”.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent or its predecessor used unlawful means to transfer the disputed domain name (among others) from Complainant's account at Network Solutions in 2003, and re-registered the disputed domain name using false contact information.
Complainant alleges that the disputed domain name was registered in bad faith following its misappropriation, including by listing false contact information. Complainant contends that the disputed domain name is currently not being used by Respondent.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center attempted to transmit the Complaint and notification of commencement of the proceeding to Respondent by express courier, telefax and e-mail. The courier used by the Center reported that there is no physical address in Boston corresponding to the address in the registration of Respondent. The listed telefax is inoperative, and e-mail messages to Respondent's listed addresses did not transmit successfully. The Center has used the means prescribed by the Rules for fairly providing notice to Respondent. If Respondent did not receive notice, this was because of steps deliberately taken by it. The Panel determines that the Center took those steps prescribed under paragraph 2(a) of the Rules for establishing notice to Respondent.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's 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 domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the service mark SHOWTV.COM on the Principal Register of the USPTO. Such registration establishes a presumption of rights in the service mark under the U.S. Lanham Act (15 U.S.C. §1057(b)).
Respondent has not challenged Complainant's rights in the service mark.
The disputed domain name is identical to Complainant's service mark.
The Panel determines that Complainant has rights in the service mark SHOWTV.COM and that the disputed domain name is identical to the service mark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name, and Respondent has not rebutted that prima facie showing”.
Complainant has provided substantial evidence that the disputed domain name was misappropriated from its domain name registration account in 2003. Thereafter the party (or parties) that misappropriated the disputed domain name specifically refused to voluntarily re-transfer the disputed domain name to Complainant. Respondent subsequently became registrant of the disputed domain name. It provided false contact information when registering the disputed domain name in April 2007. The Panel infers from the foregoing that Respondent became registrant of the disputed with knowledge of its misappropriation.
Respondent has not rebutted Complainant's allegation that it came to register the disputed domain name as part of a series of acts involving unlawful misappropriation. Respondent has not demonstrated that it became registrant of the disputed domain name in consequence of its own good faith conduct. It has not demonstrated that it acquired rights or legitimate interests in the disputed domain name. The Panel need not speculate regarding circumstances that might have established rights or legitimate interests for Respondent.
Under these circumstances, Respondent's use of the disputed domain name merely to direct Internet users to a standard form Sedo link farm parking page is not sufficient to establish rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name”; “(ii) [respondent has] 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 [respondent has] engaged in a pattern of such conduct; and “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or of a product or service on your web site or location”.
Complainant has provided substantial evidence that the disputed domain name was misappropriated in 2003 from its domain name account with Network Solutions. Following an exchange of e-mails through much of 2005 with the party (or parties) that misappropriated the disputed domain name, that party elected not to voluntarily re-transfer the disputed domain name to Complainant, although it did voluntarily re-transfer a number of other domain names that it had misappropriated. In 2007, the disputed domain name was registered by Respondent. Respondent provided false contact information in its registration. The Panel infers from these facts that Respondent registered the disputed domain name using false contact information in order to disguise its association with the misappropriation. Registration under these circumstances is in bad faith.
Complainant is presumed to have rights in the SHOWTV.COM service mark as from the date it filed its intent to use (ITU) application at the USPTO, i.e. on July 10, 2006. The filing of an ITU application establishes constructive use from the date of filing, contingent on registration of the service mark (15 U.S.C. §1057(c)). Such constructive use confers nationwide exclusive rights in the mark from the date of application. Respondent registered the disputed domain name on April 6, 2007, subsequent to the date upon which Complainant established exclusive rights in its service mark.
Respondent's only apparent use of the disputed domain name is in connection with a link farm parking page that includes a solicitation for an offer to purchase the disputed domain name. In light of the foregoing circumstances, the Panel concludes that Respondent registered the misappropriated disputed domain name for the purpose of offering it for sale to a third party. The Panel determines that such registration and use constitutes bad faith within the meaning of paragraph 4(b) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to Complainant.
Frederick M. Abbott
Sole Panelist
Dated: April 20, 2010
Full & Egal Universal Law Academy