|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Everett W. "Tad" James v.
Lucora Corporation Limited
Claim Number: FA0304000154146
PARTIES
Complainant is Everett W James,
Honolulu, HI, USA (“Complainant”) represented by Martin E. Hsia, of
Cades Schutte A Limited Liability Law Partnership. Respondent is Mel Gill Lucora Corporation
Ltd, Singapore, II, Singapore (“Respondent”).
The domain name at issue is <timelinetherapy.com>,
registered with Domaindiscover.
PANEL
The undersigned certifies that they have
acted independently and impartially and to the best of their knowledge have no
known conflict
in serving as Panelists in this proceeding.
Robert T. Pfeuffer as Chair, David E.
Sorkin and Bruce E. Meyerson as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on April 10, 2003; the
Forum received
a hard copy of the Complaint on April 16, 2003.
On April 11, 2003, Domaindiscover
confirmed by e-mail to the Forum that the domain name <timelinetherapy.com>
is registered with Domaindiscover and that the Respondent is the current
registrant of the name. Domaindiscover has verified that
Respondent is bound by
the Domaindiscover registration agreement and has thereby agreed to resolve
domain-name disputes brought by
third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 23, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of May 13, 2003 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts,
and to
postmaster@timelinetherapy.com by e-mail.
On May 30, 2003, pursuant to
Complainant’s request to have the dispute decided by a three-member Panel, the
Forum appointed Robert
T. Pfeuffer, Chair; David E. Sorkin and Bruce E.
Meyerson as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant makes allegations against the
Respondent alleging that Respondent’s registry of the domain name <timelinetherapy.com>
is confusingly similar to a mark that he has used for many years, that
Respondent has no rights or legitimate interests and that
the registration by
the Respondent was a bad faith registration.
In the Complaint, it is alleged that the
TIME LINE THERAPY is a mark which Complainant has continually used in
connection with its
“particular self-improvement and personal growth techniques
in the field of neuro-linguistic programming (NLP)” which use began in
1987.
The Complainant further alleges that the TIME LINE THERAPY mark belongs to them
because of its federal registration on the
Principal Register of the U.S.
Patent and Trademark Office, which was registered January 25, 1994 and April
18, 1995, respectively.
Complainant further alleges that
Respondent’s <timelinetherapy.com> domain name is identical to its
TIME LINE THERAPY mark. Complainant
further asserts that Respondent has no rights or legitimate interests in
respect to the domain name and further alleges
that the Respondent is guilty of
registration and use of the domain name in bad faith.
B. Respondent
Although Respondent was properly notified
of the filing of the complaint, it did not file a response within the allotted
time. A Memorandum was received from Dr.
Mel Gill on Tuesday, May 27, 2003 asserting that he would submit an affidavit
in respect to the
complaint but none was ever received. As late as June 9, 2003, Panelist David E.
Sorkin contacted the National Arbitration Forum after the decision process had
begun to
determine whether or not such affidavit and/or late filing of a
response had occurred. The National
Arbitration Forum acting through its case coordinator, Mr. Steve Lewis,
affirmed on June 9, 2003 that no further documents
had been received from the
Respondent or from Dr. Mel Gill.
Accordingly, the Panel finds that the
Respondent failed to respond to the complaint in all things and therefore, it
will accept all
of the Complainant’s reasonable and factually substantiated
assertions as valid and draw all appropriate inferences in favor of
Complainant. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) wherein it was found that “In the absence of a
response, it is appropriate to accept as true all
allegations of the
Complaint”.
FINDINGS
The Panel finds that registered domain
name <timelinetherapy.com> is identical or confusingly similar to
the mark owned by Complainant in violation of Policy ¶ 4(a)(i).
The Panel further finds that the
Respondent has no rights or legitimate interests in the domain name <timelinetherapy.com> Policy ¶ 4(a)(ii).
The Panel further finds that the
registration and use of the disputed domain name by the Respondent was a
registration and use in
bad faith in violation of Policy ¶ 4(a)(iii).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform
Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to
“decide a complaint
on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of
law
that it deems applicable.”
Paragraph 4(a) of the Policy requires
that the Complainant must prove each of the following three elements to obtain
an order that
a domain name should be cancelled or transferred:
(1) the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant
has rights;
(2) the Respondent has no
rights or legitimate interests in respect of the domain name; and
(3) the domain name has been
registered and is being used in bad faith.
Complainant has used the mark TIME LINE
THERAPY continuously in connection with its self-improvement and personal
growth techniques
in the field of neuro-linguistic programming. The Complainant began using this mark in
1987 and subsequently, the Panel finds, registered this mark with the U.S.
Patent and Trademark
Office on January 25, 1994 and April 18, 1995. The Panel further finds that the Respondent has
in fact registered a domain name that is identical to Complainant’s TIME LINE
THERAPY
mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain
(gTLD) “.com” after the
name POMELLATO is not relevant).
The Complainant has the burden of proving
that the Respondent has no rights or legitimate interests in the disputed
domain name. Upon the filing of the
complaint it became incumbent upon the Respondent to demonstrate that it has
rights or legitimate interests
in the domain name. Because the Respondent failed to file a formal response, the
Panel finds that the Complainant has met its burden of proof, that Respondent
has no rights or legitimate interests by demonstrating that the Respondent
could not rely on the provisions of Policy ¶ 4(c)(i)-(iii)
in response to the
complaint. Since the burden of proof
had shifted to the Respondent, its failure to respond renders Respondent unable
to demonstrate any rights
or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding where Complainant has asserted that Respondent has no rights or
legitimate interests
with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because
this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with
respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate
interests in the domain name).
Because Respondent failed to formally
respond to the complaint, the Panel will accept all of Complainant’s reasonable
and factually
substantiated assertions as valid and will draw all appropriate
inferences in favor of the complaint. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”);
see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in
the allegations of Complainant to be
deemed true).
The Panel finds that the Respondent’s
failure to submit a response is sufficient evidence that Respondent lacks
rights or legitimate
interests in the disputed domain name. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no
legitimate interest in the domain names); see also Boeing
Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or
legitimate interests where Respondent has advanced no basis on which the Panel
could conclude that it has a right or legitimate interest in the domain names,
and no use of the domain names has been established).
After being contacted by Complainant, Respondent
altered its web site to indicate that the domain name was currently “under
construction”
as a webpage which previously had stated that the domain name was
“reserved”. The Panel so finds and
determines that this is insufficient evidence of a bona fide offering of goods
and services or a legitimate
noncommercial or fair use of the domain name. The Panel therefore concludes that Policy ¶
4(c)(i) and (iii) do not apply to the Respondent in this matter. See Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate
interests for purposes of paragraph 4(a)(ii) of
the Policy”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039
(WIPO Mar. 14, 2000) (finding that failure to provide a product or service or
develop the site demonstrates that Respondents
have not established any rights
or legitimate interests in the domain name).
An exchange of email between the parties through
the Respondent’s Administrative Contact, Dr. Mel Gill, indicated that if
Complainant
was “THE Tad James,” then “the Domain is yours to begin with¼I just
wanted to get your attention so that we can work together”. The Panel concludes that this evidence
demonstrates Respondent’s lack of rights and legitimate interests in the domain
name. It is
clear to the Panel by Respondent’s statement that Respondent
registered the domain name reflecting Complainant’s trademark in an
effort to
pressure Complainant to enter into a joint venture with Respondent. The Panel finds that this is not evidence of
a legitimate noncommercial or fair use of the domain name. See Kinko’s Inc.
v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that
Respondent has no rights or legitimate interests in the domain name where
it
appeared that the domain name was registered for ultimate use by Complainant); see
also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6,
2000) (finding that rights or legitimate interests do not exist when one holds
a domain name primarily
for the purpose of marketing it to the owner of a
corresponding trademark).
Registration and Use in
Bad Faith
Complainant alleges that Respondent has
made no use of the domain name since its registration on September 30, 2001 and
its passive
holding of the domain name equates to bad faith use and
registration. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003
(WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances,
for inactivity by the Respondent to amount
to the domain name being used in bad
faith”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum
Aug. 30, 2000) (finding that Respondent made no use of the domain name or
website that connects with the
domain name, and that passive holding of a
domain name permits an inference of registration and use in bad faith). The
Panel finds
the passive use sustains registration and use in bad faith.
Complainant alleges that Respondent’s
actual knowledge of Complainant’s TIME LINE THERAPY mark, along with
Respondent’s Administrative
Contact’s statement that “the Domain is yours to
begin with,” evidence that Respondent registered the domain name in bad faith. See
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)
(finding that "[w]here an alleged infringer chooses a mark he knows to be
similar to another, one can
infer an intent to confuse"); see also
Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding
registration in bad faith based where there is no reasonable possibility, and
no evidence from which to infer that the domain name was selected at random
since it entirely incorporated Complainant’s name). This evidence further convinces the
Panel that Respondent’s action was in fact registration and use in bad faith.
DECISION
Having established all three
elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED..
Accordingly, it is Ordered
that the <timelinetherapy.com> domain name be TRANSFERRED
from Respondent to Complainant.
Robert T. Pfeuffer, Chair
David E. Sorkin, Panelist
Bruce E. Meyerson, Panelist
Dated: June 11, 2003
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/602.html