1.1 The Complainant is Wendy Sue Ansel, Owner- Rocks and Runes of Hondo, New Mexico, United States of America, self-represented.
1.2 The Respondent is Jerome Lacharite of Fresnes, France. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2015. On December 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 31, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2016.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 26, 2016. 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
4.1 The Complainant is an individual based in the United States of America who has for a number of years traded under the name “Rocks and Runes”.
4.2 On September 26, 2013 the Complainant filed a trade mark application for the term “Rocks and Runes” as a standard character mark in classes 14 and 35. The mark proceeded to registration on May 20, 2014. The class 14 registration covers “jewelry” and the class 35 registration “retail store services featuring jewelry, gemstones, stone and crystal specimens, candle holders, bookends, elixirs, and metaphysical-related goods”. The first use claimed in respect of each class is March 1, 2001.
4.3 The Complainant registered the Domain Name on June 22, 2003. It was then used from at least late 2004 to promote the Complainant’s business.
4.4 At some point between June 20, 2015 and August 17, 2015 the Domain Name was transferred into the name of the Respondent.
4.5 The Respondent according to the publicly available WhoIs registration details for the Domain Name is an individual located in France.
4.6 At some time prior to the commencement of these proceedings an alternate website appeared from the Domain Name. At the date of this decision the website takes the following form:
(i) Each page on the website has the following heading
“Rocks And Runes Gemstones, Precious Stones And Jewelry Online”.
(ii) The home page of the website appears to take the form of an article about tungsten jewellery and there are also links to separate pages with the names “Solitaire Diamond Ring”, “Rubies And Sapphires”, “Events” and “Newsletter”.
(iii) At the bottom of each page there is a copyright notice that reads:
“2015 © Powered by Theme-Vision. Rocks And Runes Inc.” 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is identical to her registered trade mark.
5.2 The Complainant further contends that the Respondent has “no rights to the use of the name Rocks and Runes” and claims that no other entity has previously used that name for its business.
5.3 The Complainant appears to maintain that the Respondent managed to obtain the Domain Name because it was not renewed by the Complainant, which in turn lead to the Domain Name being put up for auction by her Registrar. Her explanation as to why the Domain Name was not renewed is as follows:
“The complainant had all intentions of renewing her domain registration. The contact information held by the registrar for renewal was non operative. This was very unfortunate and has caused the complainant great distress”.
5.4 In a statement appended to the Complaint the Complainant states:
“I lost my domain name due to a technicality being that I did not receive the email notifications in respect to the renewal of the domain name registration”.
5.5 The Complainant further appears to contend that the Domain Name has been registered and used in bad faith. In this respect she claims that the website now operating from the Domain Name competes with the Complainant and is likely to create confusion with her customers. The Complainant also asserts that she has taught various classes including to the Weeblos (said to be a branch of the boy scouts) to help them obtain their geology badge. The Complainant claims that the website operating from the Domain Name makes reference to one of those classes. Although the relevant page is not exhibited to the Complaint, the Panel notes that at the time of this decision the following text appears on the “Events” page of the website currently operating from the Domain Name:
“Rocks and Runes Supports Local Kids
Rocks and Runes celebrates spiritual education through the means of earth science at Roosevelt Elementary. Congratulations to all the 4th grade kids! You have great teachers, an awesome school and a fabulous environment for learning!
Rocks and Runes also hosted a Sunday morning event for the Webelos. What a pleasurable experience to see such love and enthusiasm for the earth, the sciences and the spiritual thoughts that create the gemstones”. B. Respondent
5.6 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the only sensible reading of the Domain Name is as the term “Rocks and Runes” without spaces in combination with the “.com” Top-Level Domain. The Panel also accepts that the Complainant has a registered trade mark for the term “Rocks and Runes” as a word mark. In the circumstances, the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. The Claimant contends the Domain Name is identical. In the Panel’s opinion it is not, for the reasons explained in greater detail in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh, WIPO Case No. D2014-1398. However, it does not matter as a finding of confusing similarity is sufficient.
6.5 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 For the reasons that are explained in greater detail in the context of the Panel’s assessment of bad faith, the Panel has formed the view that the Domain Name has been registered and held with knowledge of and with the intention of taking unfair advantage of the reputation of the Complainant’s business and ROCKS AND RUNES mark.
6.7 The registration and use of a Domain Name for such a purpose does not provide a right or legitimate interest for the purposes of the Policy. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.8 This appears to be a case where a domain name has been registered by a registrant as a result of a complainant’s failure to renew that domain name. The Complainant claims that this was because she did not receive email reminders. Whose fault this was is not entirely clear, but what is clear is that this failure was unintentional.
6.9 The Respondent then registered the Domain Name as a part of a process that must have involved at the very least knowledge of the fact that he was registering a domain name that had not been renewed by some other person or entity. The WhoIs record for the Domain Name to this day records an initial creation date of June 22, 2003. Therefore, when the Respondent acquired the Domain Name that acquisition appears to have taken the form of a transfer rather than a fresh registration.
6.10 Further, there is the nature of the Domain Name itself. Both “Rocks” and “Runes” are ordinary English words and since it is a matter of common general knowledge that “runes” might be carved on rocks or stone it is not an entirely unnatural combination of words. Nevertheless the phrase “Rocks and Runes” is an unusual one and there is uncontested evidence from the Complainant that there is no other business that has adopted that term.
6.11 Finally and most compellingly, there is the Complainant’s allegation that on the website now operating from the Domain Name, there is a reference to the Complainant’s own classes. This allegation is not only uncontested in these proceedings but appears to be borne out by the material that continues to be displayed on that website to this day.
6.12 In the Panel’s view this website material not only shows that the Complainant knew that the term “Rocks and Runes” was one that was associated with the Complainant, but also makes it clear that the Respondent has attempted to use the Domain Name to impersonate the Complainant.
6.13 The Complainant claims that the Domain Name has been used in this manner to promote a competing business. The Panel is not so sure. Unfortunately, the Complainant did not provide a copy of the website at the time the Complaint was filed. However, if the website has always taken the form that it does at the time of this decision, the Panel is sceptical that there is any real business being promoted from that website. As far as the Panel can tell there are no actual services or products offered for sale, save perhaps for a link in the text of one of the page on that website to another website.
6.14 However, ultimately this does not matter as the Panel believes that the only sensible conclusion that can be reached from the material before it is that the Domain Name was acquired and has been held by the Respondent with the intention of in some manner or other taking unfair advantage of the reputation of the Complainant’s business name and ROCKS AND RUNES mark. That is sufficient for a finding of bad faith registration and use (see for example, M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
6.15 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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 the Complainant.
Matthew S. Harris
Sole Panelist
Date: February 4, 2016
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