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Generic Top Level Domain Name (gTLD) Decisions |
DBTEL Incorporated v. K Hsu
Claim
Number: FA0402000237441
Complainant is DBTEL Incorporated (“Complainant”), represented
by Paul D. McGrady Jr. of Ladas & Parry,
224 South Michigan Avenue, Chicago, IL 60604.
Respondent is K Hsu (“Respondent”),
205 Santa Maria, Irvine, CA 92604.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dbtel.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically February 13, 2004; the
Forum received a hard copy of the
Complaint February 16, 2004.
On
February 16, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <dbtel.com> is registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the
current registrant of the name. Iholdings.com,
Inc. d/b/a Dotregistrar.com
verified that Respondent is bound by the Iholdings.com, Inc. d/b/a
Dotregistrar.com registration agreement
and thereby has 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 19, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 10, 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@dbtel.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 23, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<dbtel.com>, is confusingly similar to Complainant’s DBTEL mark.
2. Respondent has no rights to or legitimate
interests in the <dbtel.com> domain name.
3. Respondent registered and used the <dbtel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
leading manufacturer of high-tech innovative communication and computer
peripherals. Complainant markets its
goods and services worldwide through its DBTEL mark. Complainant holds several registrations for the DBTEL mark with
the U.S. Patent and Trademark Office (“USPTO”), including Reg. No.
2,223,006
(filed on July 11, 1995 and registered on February 9, 1999).
Respondent
registered the <dbtel.com> domain name July 30, 1998. The domain name does not resolve to a
developed website.
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
will draw such inferences as the Panel considers
appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant has
established with extrinsic proof in this proceeding that it has legal and
common law rights in the DBTEL mark by registering
it with the USPTO and by use
in commerce before that time. 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 Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Complainant’s
rights in the DBTEL mark revert to the date Complainant’s application was filed
with the USPTO. Hence, Complainant’s
rights in the mark were effective as of July 11, 1995. See FDNY Fire Safety Educ. Fund, Inc. v.
Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that
Complainant’s rights in the FDNY mark relate back to the date that its
successful
trademark registration was filed with the U.S. Patent and Trademark
Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal
Register is prima facie proof of continual use of the mark, dating back to the
filing
date of the application for registration).
Complainant
asserts that the domain name registered by Respondent, <dbtel.com>,
is confusingly similar to Complainant’s DBTEL mark. The Panel finds that the domain name is not confusingly similar
but instead is identical to Complainant’s DBTEL mark because the domain
name
fully incorporates the mark and merely adds the generic top-level domain
“.com.” Respondent’s addition of “.com”
to the mark is irrelevant and does not distinguish the domain name; the domain
name containing in
its entirety Complainant’s protected mark with the addition
of the generic top-level domain “.com” is identical to Complainant’s 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 Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to Complainant's registered
trademark
GAY GAMES).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to provide a Response in this proceeding; therefore, the Panel may
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).
Due to
Respondent’s failure to refute the allegations of the Complaint, the Panel may
presume that Respondent lacks rights and legitimate
interests in the <dbtel.com>
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 BIC
Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate,
pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <dbtel.com>
domain name. Therefore, the Panel finds
that Respondent lacks rights and legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
In addition,
Complainant asserts that Respondent has not developed a website for the <dbtel.com>
domain name. The Panel accepts
Complainant’s assertion as true.
Respondent’s passive holding of the domain name does not constitute a
bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is
not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint
and had made no use of the domain name in
question); see also Melbourne IT
Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or
legitimate interests in the domain name where there is no proof that Respondent
made preparations to use the domain name or one like it in connection with a
bona fide offering of goods and services before notice
of the domain name
dispute, the domain name did not resolve to a website, and Respondent is not
commonly known by the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Although the
totality of the circumstances suggest other ways in which Respondent’s
registration and passive holding of the disputed
domain name would constitute
bad faith, the Panel finds that Respondent’s passive holding of the <dbtel.com>
domain name alone is sufficient evidence to find bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); 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); see also Mondich & Am.
Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000)
(holding that Respondent’s failure to develop its website in a two year period
raises the inference
of registration in bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dbtel.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 6, 2004
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