WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sommerpine Books LLC v. Henton Enterprises, Hank Roberts Case No. D2010-0805 1. The Parties
Complainant is Sommerpine Books LLC of Chicago, Illinois, United States of America.
Respondent is Henton Enterprises, Hank Roberts of Leander, Texas, United States. 2. The Domain Names and Registrar
The disputed domain names, , , , , , and , are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2010. On May 20, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On May 20, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 May 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 15, 2010.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 18, 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.
On June 30, 2010, the Panel issued the following Panel Order No. 1:
“The Panel requests that no later than July 20, 2010, Complainant produce the following documents referenced in the Affidavit of John E. LePine (Complaint, Annex 4) or state why such documents cannot be produced:
1) The agreement between Complainant's predecessor and Respondent referenced in Annex 4, paragraph 4;
2) Any written communications between Complainant and the general manager of Respondent concerning the matters alleged in Annex 4, paragraphs 20 and 21;
3) The proposed written agreement prepared by Respondent referenced in Annex 4, paragraphs 21 and 22;
4) The revised draft agreement prepared by Complainant referenced in Annex 4, paragraph 22.
The Panel will issue its decision within ten days of the receipt of the requested information.”
On July 6, 2010, the Panel received Complainant's response to this order. 4. Factual Background
Complainant submitted evidence in the form of advertisements and newspaper articles sufficient to establish that, at least as early as the filing of the Complaint, the marks PRINTERS ROW BOOKS and CHICAGO RARE BOOKS had acquired secondary meaning. Complaint, Annex 4, 10-17, and Exhibits B, C, D, E, F, and G.
The disputed domain names were registered on November 15 and 17, 2000 in the name of Respondent Henton Enterprises. Complainant's predecessor directed Henton Enterprises to register the disputed domain names in the name of the business. Complaint, Annex 4, Affidavit of John E. LePine, at 5 and 19. The General Manger of Respondent Henton Enterprises, Respondent Hank Roberts, admitted that the registration of the names in the name of Henton Enterprises was done in order to facilitate Respondents' management and control of the web sites Respondent had been retained to develop and Respondent acknowledged that the owner of the business Printer's Row Fine and Rare Books was the actual owner of the domain name registrations. Respondent stated in emails that Henton held the domain names in trust for Complainant, because the disputed domain names were hosted on Respondent's server. Complaint, Supplemental Submissions in response to Panel Order No. 1. Complainant first learned that the disputed domain names had been registered in Respondent's name in December 2008, and demanded that the registrations be transferred to Complainant. Complaint, Annex 4, at 18.
Respondent demurred, insisting on the execution of some form of hold harmless agreement. The parties' disagreed on whether Respondent had any intellectual property rights in the content of the web sites, Respondent insisting that it had such rights and demanding that Complainant recognize the existence of such rights. Ultimately, Respondent refused to co-operate in the voluntary transfer of the disputed domain names. Complaint, Supplemental Submissions in response to Panel Order No. 1. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names are confusingly similar or identical to common law trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that Respondent has registered and is using the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that complainant must prove each of the following:
1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and,
2) that respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names consist of Complainant's common law marks PRINTERS ROW BOOKS and CHICAGO RARE BOOKS, to each of which have been appended the gTLD suffix , , and . Accordingly, the Panel finds that the disputed domain names are identical to trademarks in which Complainant has rights. B. Rights or Legitimate Interests
The consensus view of UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain names and Respondent has failed to assert any such rights. Accordingly, based on the record before it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant's predecessor instructed Respondent to register the disputed domain names in the name of the business. Respondent admits that the disputed domain names are held in trust for the business, and asserts that the disputed domain names were registered in Respondent's name, either as security for monies which might be owed to Respondent by Complainant, or for the convenience and ease of management of the web site by Respondent, or because the web site was hosted on servers owned by Respondent. Complainant did not learn that the disputed domain names were registered in Respondent's name until December 2008 and demanded that the disputed domain names be transferred to Complainant. Respondent has refused to effectuate the transfer unless Complainant acknowledges that Respondent has intellectual property rights in the content posted on Complainant's web site which Respondent is hosting on its server.
In cases where respondent has registered the domain name in its own name contrary to instructions received from complainant, panels have consistently held such a practice to constitute bad faith registration and use. Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM),WIPO Case No. D2006-0991. Accordingly, the Panel finds that the disputed domain names should be transferred to Complainant. 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 names, , , , , , and be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: July 7, 2010
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