Complainant is Old Time Pottery, Inc. of Murfreesboro, Tennessee, United States of America, represented by Stites & Harbison PLLC, United States of America.
Respondent is ACSCredco and Jason Black of Gibsonville, North Carolina, 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 August 13, 2010. On August 13, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 14, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 27, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 27, 2010. On the same day, Respondent sent an email to the Center indicating its willingness to settle the dispute.1 On August 30, 2010, the Center acknowledged receipt of this email.
On September 17, 2010, Complainant requested suspension of the proceedings to permit a possible settlement between the parties. On the same day, the Center notified the suspension. On October 13, 2010, Complainant requested that the proceedings be reinstituted.
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 ACSCredco of the Complaint, and the proceedings commenced on October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2010.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on November 10, 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. 4. Factual Background
Complainant is owner of the mark OLD TIME POTTERY, United States Patent and Trademark Office Registration No. 2,389,128, registered September 26, 2000 in International Class 35, with first use dating to 1986. Complainant also owns the domain name .
The disputed domain name was registered on March 8, 2010 and currently routes to a parking page provided by GoD, Inc.2 5. Parties’ Contentions A. Complainant
Complainant, a Tennessee corporation, avers that it has been using its OLD TIME POTTERY mark since 1986 for retail stores providing home décor, general goods and collectibles in the Southern United States. Complainant annexes a list of thirty store locations to its Complaint.
Complainant alleges that it received a letter from Respondent on August 12, 2010, offering to sell the disputed domain name to Complainant. Excerpts from Respondent’s first communication of August 12, 2010 are set forth below:3
“[. . .] please call me [. . .] or email me [. . .] and we'll get this domain name back to you [. . .] “.
“I had a retail giant pay in excess of: $50k to get their name back from me. All I want is: $3,000 for the domain name, it will save your company a lot of time and money. The domain name is dormant right now and is not being used online and no profits are currently being made from the domain name that I own.”
Complainant also attaches the email Complainant received from Respondent on the same day, August 12, 2010, containing the following language:
“[T]he WIPO charges $1,500 for arbitration, legal fees will be very excessive (internally and or externally through attorney costs), I am flexible, bottom dollar is: $1,500.00. God will allow me to sell you the domain name for like $10 or something ridiculously cheap like that, in other words, it's like a broker fee. I do not represent god, I'm just disclosing that the 'releasing' of the Domain name can take place in less than five minutes. Your legal department is going to want to know what my intent for purchasing the domain name was for, so they can try to establish motivation to see if my intent was for ill gain, my intent was to purchase the domain name and establish a website so I can sell pottery, I have not established the website yet because I don't want to infringe on any of your copy right enactments nor do I wish to astray any profits from your company plus I wanted to give you the opportunity to purchase the domain name from me before I sell it to someone else that you may find harder to reach than myself to obtain it from. The purchasing of the domain name: was a legal transaction, as domain names are purchased legally everyday and a lot of folks like me who purchase domain names also like to re-sell them to others, kinda like trading stocks. I lost my last domain name to a major retail corporation and after meeting with my attorney multiple times, he figured that this other retailer had spent in excess of $50,000 on attorney fees to fight me for the domain name. Unfortunately with this other company, they never offered me a dime, I could have saved them a ton of money by buying it from me for like the same scenario here. This is America, the land of a free market place, buying, selling, trading, you know the freedom of commerce, I am not violating any copy right acts because I am not using a website to 'steer' your customers away from you. So relax there. Let me know how I can be of further assistance to you. Have you done any research on the .mobi trend and how fast it's being swept up by smart phone technology? Someone really dropped the ball there on purchasing the domain name . all of your competitors own their .mobi names. I will give you till tomorrow to purchase the name from me or I will sell it to another buyer who might find it far more valuable than me. Please let me know. Thanks . . . , I am not going to make the same mistake as last time and hold on to this domain name just to have to give it over to you after you spend 50k on legal fees while I sit waiting. Time is of the essence. Thanks and I hope you find me to be reasonable, I am not asking for much if you analyze this rationally. And I am excersing good faith by lowering my asking price by 50%. So, let's keep this simple, take 10 minutes . . . and call God, ask them the logisitics of purchasing a domain name from another individual, and you'll see that it's not as complex as what you might have thought. Don't waste your company's time and money on legal fees, it'll cost you way more than what I am asking for.”
Complainant contends that it was “forced” immediately to file the instant proceeding, owing to the threatening nature of Respondent’s email.4
Complainant contends that the disputed domain name is virtually identical and confusingly similar to a trademark in which Complainant has rights; that Respondent has no rights or legitimate interests in use of the disputed domain name; and that the disputed domain name was registered and is used in bad faith under the Policy.
On the basis of the above allegations, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is identical to the OLD TIME POTTERY mark in which Complainant has rights.
Panels generally disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5. A domain name is considered identical even if the spaces between the words that form the complainant's mark are deleted. See Ann Coulter v. Mark Vadnais, NAF Claim No. 137221; Daddy's Junky Music Stores, Inc. v. Amjad Kausar, NAF Claim No. 140598.
The Panel concludes, therefore, that Complainant establishes the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers [ . . .]” . Policy, paragraphs 4(c)(i)–(iii).
Complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant avers that Respondent is not commonly known by the disputed domain name, does not operate a business under the name “Old Time Pottery”, and that Respondent has no trademark registration to use the OLD TIME POTTERY mark. In the absence of a response, the Panel accepts these undisputed facts as true.
Complainant also alleges that Respondent does not use the disputed domain name for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use, but that “Respondent appears to be using Complainant's registered trademark in an effort to extort money from Complainant”.
The Panel agrees. Despite Respondent’s email to the Center stating that “[t]he only reason why I buy domain names as such is to help special needs kids if I am able to sell the domain name,” Respondent’s attempts to sell the domain name to Complainant for USD 3,000 (or alternatively USD 1,500) establishes that there is no fair use and that Respondent’s interest is in fact commercial.
This Panel agrees with the conclusions of the panel in another recent proceeding against Respondent involving a well-known trademark registered as a “.mobi” domain name. Tractor Supply Co. of Texas, LP and Tractor Supply Company v. ACSCredco,WIPO Case No. D2010-0745. Similar to its position in the present proceeding, Respondent in that proceeding alleged that he would use the moneys from sales related to the disputed domain name to build handicap walkways for special needs young adults. In response, the panel found, “Clearly, this is for commercial gain. It does not matter for what purpose the Respondent might use those proceeds.” Id.
This Panel also finds that Respondent is not actively offering any goods or services, or making use of the site for any sort of other information or commentary that might support a finding of bona fide or fair use. Therefore the Panel rules that Respondent is not making a legitimate noncommercial, bona fide, or fair use of the disputed domain name.
Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in use of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Panel also concludes that Respondent registered and is using the disputed domain name in bad faith, as explained below.
The Policy sets out four illustrative circumstances which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. The first two circumstances are germane here:
“(i) circumstances indicating that the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name;
“(ii) the 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 the respondent has engaged in a pattern of such conduct [ . . .]”.
Policy, paragraph 4(b).
The Panel finds that the record establishes beyond any doubt that Respondent registered the disputed domain name in bad faith. This case falls squarely within paragraphs 4(b)(i) and 4(b)(ii) of the Policy. It is clear from Respondent’s attempts to sell the disputed domain name to Complainant that Respondent, when registering the disputed domain name, knew of Complainant’s well-established, registered trademark, business, and Complainant’s domain name. 5
It remains for the Panel to determine whether, in addition to registering in bad faith, Respondent is also using the disputed domain name in bad faith. E.g., E. & J. Gallo Winery v. Hanna Law Firm,WIPO Case No. D2000-0615. The Panel concludes that Respondent is also using the disputed domain name in bad faith, as elaborated below.
The Panel finds that Respondent’s offer to sell the disputed domain name for more than out-of-pocket expenses falls directly within the rule of Policy paragraph 4(b)(i). In addition, however, the inactive use or passive holding of the disputed domain name in these circumstances also constitutes use in bad faith by Respondent.
Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In many decisions involving inactive websites or so-called “passive holding”, UDRP panels have adhered to the approach outlined in Telstra Corporation Limited v. Nuclear Marshmallows, supra. In Telstra, the panel explored the question of which circumstances of inaction, or passive holding, beyond those identified in paragraph 4(b) of the Policy, constituted use of a domain name in bad faith.
The Telstra panel explained that:
“[t]his question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”
In the present circumstances, the Panel holds that Respondent’s conduct supports a finding of bad faith use. First, although experienced and familiar with the issues and procedures involved in domain name dispute proceedings, Respondent has chosen to refrain from filing a response to the Complaint. Respondent’s letters, describing the legal fees allegedly paid by a prior complainant against Respondent, also show that Respondent is aware of the high transaction costs to trademark holders that Respondent causes through its abusive registration and use of domain names.
Second, Respondent had plans to “cash in”, by selling to Complainant or its competitors a domain name that was clearly and deliberately based on the well-established mark belonging to Complainant. Respondent’s statement that “my intent was to purchase the domain name and establish a website so I can sell pottery” (Complaint Annex 7 (Respondent’s email to Complainant of August 12, 2010)) lacks credibility. This statement contradicts other statements by Respondent, for example, “The only reason why I buy domain names as such is to help special needs kids if I am able to sell the domain name”. (Respondent’s email to the Center of August 27, 2010).
Given the self-serving and contradictory nature of these statements, the Panel finds that Respondent was motivated to “cash in” improperly on the disputed domain name. This motivation is also clearly apparent from other correspondence from Respondent with Complainant.
The Panel concludes that the requirements of the Policy paragraph 4(a)(iii) are fulfilled. 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.
Jeffrey D. Steinhardt
Sole Panelist
Dated: November 18, 2010
1 Earlier offers to sell the disputed domain name to Complainant were signed by Jason Black, the Respondent named in the original Complaint (see discussion below). The registrar verification, however, informed the Center that the registrant was ACSCredco. The Complaint was amended accordingly. Respondent’s August 27, 2010 email respecting settlement began with the statement, “ACSCredco is me: Jason Black, it's registered under my name [. . .]”. Consequently, this decision refers to Respondent in the singular, meant to indicate both ACSCredco and Jason Black.
2 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
3 All emails and letters between the parties quoted in this Decision are annexed to the Complaint.
4 As noted above, the proceedings were suspended temporarily following, among other things, Respondent’s August 27, 2010 email to the Center, in which he wrote that he would “give the domain name back with no strings attached.”
5 Even if Respondent’s letters had been insufficient to support the Panel’s finding that circumstances described in Policy, paragraphs 4(b)(i) and (ii) are present, in the words of another panel, “It seems [highly] unlikely [. . .] that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A.,WIPO Case No. D2007-1236.
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