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Generic Top Level Domain Name (gTLD) Decisions |
Barbara Black d/b/a Black and White
Consulting v. T1 Communications Company a/k/a Collectionproof.com LLC
Claim Number: FA0304000154144
PARTIES
Complainant
is Barbara Black d/b/a Black and White Consulting, Naples, FL (“Complainant”). Respondent is T1 Communications Company a/k/a
Collectionproof.com, LLC,
Vanderbilt Beach, FL (“Respondent”) represented by Dan Enright.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <collectionproof.com>, registered with Tucows, Inc., and <collectionproof.biz>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Louis
E. Condon as Panelist.
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 14, 2003.
On
April 21, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <collectionproof.com> is registered with Tucows, Inc. and
that Respondent is the current registrant of the name. On April 23, 2003, Go
Daddy Software, Inc.
confirmed by e-mail to the Forum that the domain name <collectionproof.biz> is registered with Go Daddy Software,
Inc. and that Respondent is the current registrant of the name. Tucows, Inc.
and Go Daddy Software,
Inc.have verified that Respondent is bound by the Tucows,
Inc. and Go Daddy Software, Inc. registration agreements 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@collectionproof.com and postmaster@collectionproof.biz
by e-mail.
A
timely Response was received and determined to be complete on May 27, 2003.
On June 5, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Louis E. Condon
as Panelist.
Complainant
filed an additional submission on June 6, 2003, which was after the deadline.
While it did not add anything new to the
Complaint, this material contained a
brief statement of the allegations and included a copy of the Complaint filed
in the Federal
District Court. As the Rules permit, it was considered by the
Panel for assistance in stating the Complainant’s position.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Daniel
Enright is the owner and authorized representative of T1 Communications Company,
and the Respondent herein. Complainant states
that Enright worked for her when
she started as a consultant for Asset Protection Group, Inc. Since Enright did
not want to pay the
the $9,800 fee to become a licensed consultant for the
parent company himself, Complainant and Respondent agreed that Respondent
would
work under Complainant’s license as an independent contractor. According to
Complainant, there never was a partnership agreement,
neither in writing nor
verbally. Complainant says the agreement was for the Complainant to pay
Respondent 50% of the total commission
for the sale to any client he brought to
Complainant’s business. Further, Complainant says Respondent made one sale and
was paid
in accordance with the policy.
Complainant
states she took Respondent on board as a contractor under her because
Respondent professed to be an expert in the Internet
and in sales. In the
beginning, when Respondent offered to get the domain name
<collectionproof.com> registered Complainant
allowed him to do so because
Complainant didn’t know how to do it. However, Complainant says she did not
fully realize that registering
the name would give Respondent ownership of the
domain. Complainant placed her website at the domain. Respondent worked under
the
Complainant for six months during which time he made only one sale.
Complainant says Respondent did not follow up leads and appointments
paid for
and provided by Complainant. Because of his unsatisfactory performance,
Complainant let Respondent go.
Complainant
says she heard nothing from Respondent for a year, until one day in February,
2003, when he notified Complainant via e-mail
that he “was back in my
business.” Prior to sending Complainant the e-mail Respondent transferred the
domain registration of <collectionproof.com>
to another hosting provider, thereby locking Complainant out of access to
the site. Respondent then substituted his own contact information
on to his
copy of Complainant’s site, and has since offered the company products and
services under Respondent’s own name.
Complainant’s operating website is <collectionproof.net>. One of the disputed domains is <collectionproof.com>. The
respondent is using <collectionproof.com>
for the sole purpose of offering identical services to Complainant’s. In fact,
Respondent lifted Complainant’s entire website and
placed a copy at this
domain. Upon investigation of Complainant’s copyright and trademark claims, the
original ISP and registrant,
GoDaddy Software, redirected the site. But
Respondent has now re-registered the domain <collectionproof.com> in Canada, and once again is offering
Complainant’s products and services under his own name and contact information,
using an exact
copy of Complainant’s website. Many of Complainant’s customers
have reported confusion about the address and have mistakenly gone
to <collectionproof.com> expecting
to find Complainant’s company.
At
this time, the Respondent has not yet placed a site at the other disputed
domain name of <collectionproof.biz>.
Respondent is not licensed with the parent company, Asset
Protection Group, Inc., to offer these asset protection services at <collectionproof.com>, whereas Complainant is licensed with the parent company. Asset
Protection Group offers its services and products strictly through licensed
consultants.
Marketing/advertising of these services/products is the sole
responsibility of the licensed consultant. The parent company does not
maintain
a website or market its services itself. Respondent does not hold the trademark
to use this domain name of <collectionproof.com>
or <collectionproof.biz>.
Respondent does not hold the copyright on the website material that he has
placed at <collectionproof.com>.
Respondent did not create the website material that he has placed at <collectionproof.com> whereas
Complainant holds both the source files for this website material and the
copyright/trademark on this material.
The Respondent is using an identical copy of
Complainant’s copyrighted website
material in its entirety as well as Complainant’s trademarked domain name
‘collectionproof’ for the sole purpose
of offering identical services and
products, playing on Complainant company’s extensive and good reputation, essentially posing as the Complainant.
Previously, Respondent lifted Complainant’s entire website, word for word and
placed it at
the <collectionproof.com>
domain when it was registered with GoDaddy Software. At Complainant’s request,
and upon investigating their copyright and trademark
claim, GoDaddy redirected
the site. Respondent then re-registered <collectionproof.com>
in Canada with registrar Tucows, Inc. and got new hosting with the Canadian ISP
‘AHB dba Telligent Corporation.
Respondent is misleading Complainant’s customers who mistakenly go to <collectionproof.com> into
thinking that he is Complainant’s company and can provide them the same
services.
Respondent is using these domain names and the copy of
Complainant’s website for the sole purpose of commercial and financial gain
off
Complainant’s good name and business reputation. Complainant states it has lost an estimated $22,000 in revenue
from customers who gave Respondent money thinking they were
dealing with Complainant. This represents bad faith on the part of the Respondent.
Complainant alleges that right
after the Respondent copied Complainant’s website and placed it at <collectionpfoof.com> he offered
to sell the domain names of <collectionproof.com>
and <collectionproof.biz> to
Complainant for an exorbitant fee, well in excess of the fee required to obtain
the domain names. Complainant refused to pay.
Complainant’s business, Black and
White Consulting, is licensed in Collier County, Florida solely to Barbara
Black, license number
002711.
Complainant stated in her
original submission to NAF that: her attorney had sent a letter of warning to
Respondent that he is in copyright
and trademark violation of Complainant’s
copyrighted website. Respondent was given 10 days to respond and did not; the
time period
has passed. Complainant is considering filing a lawsuit in federal
district court on copyright violation, but had not done so at
the time of
filing this proceeding.
B.
Respondent
Respondent
and Complainant started a business called “Black & White Consulting”. The
venture revolved around the sale of business
consulting services, books and
corporations. These products were sold in person, via telephone, via radio and
via the web. Complainant
has a paid for sales relationship with a corporate
services provider in Las Vegas, Nevada. (Asset Protection Group, Inc.)
Respondent
owns all web related aspects except for the joint venture copyright.
All revenue were to be shared 50/50 minus some shared expenses.
Complainant
and Respondent broke off their business relationship in mid February, 2003.
Complainant filed for a new Florida Fictitious
Name Registration “Black and
White Consulting” on February 28, 2003, which Respondent says was an attempt at
subterfuge. Complainant
caused the dissolution of the jointly filed Florida
Fictitious Name registration, “Black & White Consulting,” on April 17,
2003.
Respondent filed Criminal Forgery-Alter of Public Record with the Collier
County Sheriff’s Office on April 26, 2003, for forgery
of Respondent’s
signature on the dissolution certificate.
On
April 3, 2001, Respondent filed and paid for domain registration and hosting of
<Collectionproof.com> at “GoDaddy Software, Inc.
Respondent has maintained the hosted domain name in good standing from its date
of inception. The site
and domain has not changed its primary ownership or
basic site/business concept from its inception. Respondent has changed “ISP”
hosting company and “DNS” several times over the last two years for practical
business and financial purposes. Respondent moved the
domain from “GoDaddy
Software, Inc.” to “Tucows, Inc.” in defense of ownership. “GoDaddy Software,
Inc.” and “Tucows, Inc.” maintain
slightly modified and different registration
policies.
Respondent
has personally responded to inquiries and calls generated by this hosted
domain, earned income, paid for advertising and
hosting the site and the domain
name known as <collectionproof.com>.
Respondent is not licensed with the “Asset Protection Group, Inc.” as is
indicated by Complainant. Respondent operates under the
auspices of another
legal sales representative of that company. Through that relationship comes
fair use of Asset Protection Group,
Inc.’s copyrights.
FINDINGS
(1)
The domain
names registered by the Respondent, to wit: collectionproof.com>
and <collectionproof.biz>
are identical or confusingly similar to a trademark or
servicemark in which the Complainant has rights;
(2)
The
Respondent has no rights or legitimate interests in respect of the domain
name <collectionproof.com> or <collectionproof.biz>, and
(3) The domain names
have been registered and are being used in bad faith.
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 maintains that it has established rights in the COLLECTION
PROOF mark through application for registration of the mark
on the Principal
Register of the U.S. Patent and Trademark Office, as well as through use of the
mark in connection with its provision
of asset protection and preservation
services. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the Complainant's trademark or
service mark be registered
by a government authority or agency for such rights
to exist. Rights in the mark can be
established by pending trademark applications); see also British
Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)
(noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks
in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
Complainant argues that the <collectionproof.com> and <collectionproof.biz> domain names
are identical to its COLLECTION PROOF mark. See 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); see also 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”).
Respondent is using the <collectionproof.com> domain name to host a website that is an
exact copy of Complainant’s website at the <collectionproof.net> domain
name. Complainant
argues that Respondent’s use of Complainant’s source code and
copyrighted materials are evidence that Respondent lacks rights or
legitimate
interests in the domain name. See Monsanto Co. v. Decepticons,
FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of
<monsantos.com> to misrepresent itself as Complainant
and to provide
misleading information to the public supported a finding of bad faith); See
also Vivendi Universal Games and Davidson &
Associates, Inc. v. Ronald A. Ballard,
FA 146621 (Nat. Arb. Forum March 13,
2002) (stating that “the wholesale copying of the source code underlying
Complainant’s website . . . including Complainant’s
copyrighted works and
registered trademarks” operated as prima facie evidence that Respondent
lacked rights or legitimate interests in the disputed domain name).
Respondent’s
failure to use the <collectionproof.biz> domain name is
evidence that it lacks rights or legitimate interests in the domain name. 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 Chanel, Inc. v. Heyward, D2000-1802
(WIPO Feb. 23, 2001) (finding no rights or legitimate interests where
“Respondent registered the domain name and did
nothing with it”).
Complainant
contends that Respondent’s use of the domain name has intentionally attracted
consumers away from Complainant by capitalizing
on a likelihood of confusion
between the <collectionproof.com> domain name and Complainant’s COLLECTION
PROOF mark, evidence that the domain name was registered and used in bad faith
pursuant to
Policy ¶ 4(b)(iv). See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that Respondent intentionally attempted to attract Internet users to
his website for commercial
gain by creating a likelihood of confusion with
Complainant’s mark and offering the same chat services via his website as
Complainant);
see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers
is not required for a finding of trademark infringement,
intent to deceive is
strong evidence of a likelihood of confusion").
Respondent’s passive holding of
the <collectionproof.biz> domain name
amounts to bad faith use and registration of this domain name. 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 Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that merely holding an infringing domain name without active use
can constitute use in
bad faith).
Complainant
argues that Respondent’s offer to sell the <collectionproof.com>
and <collectionproof.biz>
domain name registrations to Complainant for costs exceeding Respondent’s
out-of-pocket expenses evidence bad faith use and registration
of the domain
names pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entmt., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the
domain name in bad faith because he offered to sell the domain name
for
valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated
bad faith when he requested monetary compensation
beyond out-of-pocket costs in
exchange for the registered domain name). Complainant offered no proof of this
allegation; however,
it is of no consequences since the Panel found bad faith
by the Respondent on other grounds.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <collectionproof.com> and <collectionproof.biz>
domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 17, 2003
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