DECISION

Polaner, Inc. v. DNS Service a/k/a Polaner.com

Claim Number:  FA0402000237522

PARTIES

Complainant is Polaner, Inc. (“Complainant”), represented by Sana Hakim of Bell Boyd & Lloyd PLLC, 70 West Madison, Suite 3300, Chicago, IL 60602. Respondent is DNS Services a/k/a Polaner.com (“Respondent”), 2 Townsend, Bldg. 1-500, San Francisco, CA 97104.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <polaner.com>, registered with Enom, 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 18, 2004; the Forum received a hard copy of the Complaint on February 18, 2004.

On February 23, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <polaner.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 February 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 2004 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@polaner.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 31, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <polaner.com> domain name is identical to Complainant’s POLANER mark.

2. Respondent does not have any rights or legitimate interests in the <polaner.com> domain name.

3. Respondent registered and used the <polaner.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Polaner, Inc., has used its POLANER mark since as early as 1896 for jams, jelly, marmalade, fruit preserves, fruit spreads and other food products. Complainant holds numerous trademark registrations incorporating the POLANER mark, including several for the POLANER mark itself (eg. United States Patent Trademark Office Reg. No. 596,870, issued on October 12, 1954).

Respondent, DNS Service a/k/a Polaner.com, registered the <polaner.com> domain name on July 3, 2001, without license or authorization from Complainant to use the POLANER mark for any purpose.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the POLANER mark through its registration with the United States Patent and Trademark Office and through the use of its mark in commerce for the last 108 years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

Respondent’s <polaner.com> domain name is identical to Complainant’s POLANER mark because the domain name incorporates Complainant’s mark in its entirety and only adds the top level domain name “.com.” The mere addition of a top level domain name to Complainant’s mark does not remove the domain name from the realm of confusingly similarity with regard to Policy ¶ 4(a)(i). 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar);  see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to Complainant’s mark) Koninklijke Philips Elec. NV v. Ramazan Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to Complainant’s PHILIPS mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to Complainant’s well-known and registered BMW trademarks).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant urges that Respondent has no rights or legitimate interests in the disputed domain name. Based on Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. 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).

However, Respondent’s failure to respond does not necessarily elicit an automatic finding for Complainant. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent’s default does not automatically lead to a ruling for Complainant).          

Respondent has offered no proof and there is no evidence in the record suggesting that Respondent is commonly known by the <polaner.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration of Complainant’s mark in its entirety suggests that Respondent had knowledge of Complainant’s charitable services and associated reputation. Thus Respondent likely knew Complainant had rights in the POLANER mark and chose the <polaner.com> domain name based on its distinctive qualities. Furthermore, Complainant’s registration of its mark with the United States Patent and Trademark Office confers constructive knowledge of Complainant’s rights in the mark on Respondent. Constructive knowledge of rights in a mark at the time of registration evidences bad faith registration. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

Despite the fact that Complainant has established that Respondent registered the domain name in bad faith, Complainant has not proven that Respondent used the domain name in bad faith. Although Complainant argued that Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name, Complainant has failed to show that Respondent has engaged in a pattern of such conduct, thus no evidence exists before the panel showing that respondent has used the domain name in bad faith. Absent a showing of factual evidence of how Respondent used the disputed domain name, the Panel declines to transfer the disputed domain name. See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr. 29, 2002) (finding that because Complainant failed to provide any factual allegations as to the nature of use of the disputed domain name, Complainant failed to prove that Respondent’s domain names were being used in bad faith); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith).

The Panel thus finds Policy ¶ 4(a)(iii) has not been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <polaner.com> domain name shall NOT be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr.,, Panelist

Dated:  April 12, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/477.html