WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spencer Douglass MGA v. Absolute Bonding Corporation
Case No. D2001-0904
1. The Parties
The Complainant in this administrative proceeding is Spencer Douglass MGA of Carlsbad, California, USA ("Spencer"). The Respondent is Absolute Bonding Corporation of Lancaster, California, USA ("Absolute").
2. The Domain Name and Registrar
The domain names involved in this proceeding are as follows:
Unless otherwise referred to separately, these domain names shall be referred to collectively as the aladdinbailbonds domain names.
The Registrar with whom all of the domain names are registered is Network Solutions, Inc. of Herndon, Virginia ("NSI").
3. Procedural History
On July 16, 2001, Spencerís Complaint was filed in hardcopy and by e-mail with the WIPO Arbitration and Mediation Center ("the Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). See Rules, paragraph 3(b).
On July 20, 2001, the Center notified Spencer of certain deficiencies in its Complaint. These deficiencies were cured by Spencerís subsequent filing received by the Center on July 23, 2001 (by e-mail) and July 25, 2001 (in hardcopy).
Otherwise, it appears that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that payment was properly made, and that Spencer has complied with the formal filing requirements. On July 23, 2001, NSI verified that it is the Registrar for the three contested domain names, that Version 5 of its service agreement with Absolute is in effect, and that the contested domain names are in active status.
On July 13, 2001, Spencerís counsel served the Complaint by mail. The Center has not been notified that Spencerís service was unsuccessful. On July 27, 2001, through August 1, 2001, the Center attempted delivery of its Notification of this administrative proceeding by courier, e-mail and facsimile to the addresses listed for Absolute, as well as the technical contact for the domain names. E-mail delivery attempts also were made to the "postmaster" for the contested domain names. The courier and facsimile deliveries appear to have reached their destinations. There is no indication that the e-mail notifications to Absolute and its technical contact did not reach their destinations. The "postmaster" e-mail deliveries were returned with "fatal delivery errors". NSI acknowledged receipt of the Complaint from Spencer.
The Panel deems that Absolute was properly notified in accordance with the Rules, paragraph 2(a). However, it appears that a Response has not been filed. On August 17, 2001, a Notice of Respondent Default was sent by the Center to the parties by e-mail.
In its Complaint, Spencer elected to have this proceeding decided by a Single Member Panel. On August 22, 2001, the Center contacted the undersigned to solicit interest in being the Sole Panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on August 24, 2001, of the ability and availability to serve as the Sole Panelist for this matter. On August 27, 2001, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the Administrative Panel for this proceeding was properly constituted.
Also on August 27, 2001, the Center forwarded to the undersigned the case file for this proceeding. On that same date, a Notice of Appointment of Administrative Panel and Projected Decision Date was sent by the Center to the Parties. The Center notified the parties that the undersigned would be the Sole Panelist to decide this matter.
4. Factual Background
Spencer asserts that it is the owner of the service marks ALADDIN and ALADDIN BAIL BONDS for use in connection with bail bonding services. Spencer alleges that the marks have been used continuously since March 1, 1996, in connection with Spencerís bail bonding services throughout the states of California, Nevada, Idaho and Connecticut. Samples of how Spencer uses its trademarks have been submitted with the Complaint. In addition, Spencer asserts that it uses the marks as part of its posting network, which allows Spencer to post bonds in almost every one of the 50 United States and Puerto Rico through independent bail agents.
Additionally, on September 26, 2000, Complainant filed a service mark application with the United States Patent and Trademark Office for registration of the ALADDIN mark on the Principal Register. A copy of the application filing receipt was submitted with the Complaint.
Absolute is alleged by Spencer to be a bail bonding company in direct competition with Spencer. Absolute is alleged to have been in the bail bonding business since 1986 and to the best of Spencerís knowledge has never been known by the name "Aladdin". Results of a search of the fictitious business names owned by Absolute, submitted with the Complaint, reveal registrations for several different business names, but none for the names ALADDIN or ALADDIN BAIL BONDS. Absolute is not a licensee of Spencer nor does Absolute have permission to use Spencerís service marks in connection with its business. As Absolute is alleged to be a direct competitor of Spencer, Absolute is claimed to be well aware of Spencerís business and the service marks that represent that business.
Absolute maintains a website under the URL http://www.cabail.com. A copy of the home page for Absoluteís website was submitted with the Complaint. The aladdinbailbonds domain names do not point to this website. Submitted with the Complaint were error messages obtained in response to attempts to access websites under the three disputed domain name addresses. Spencer does not appear to have developed websites for any of the three disputed domain names.
Absolute is alleged to have engaged in a pattern of registering other competitorsí company names as domain names. As shown by attachments to the Complaint, Absolute has registered seventeen (17) domain names that correspond to the names of seven (7) other bail bonding businesses. At least four of these businesses are known by Spencer to operate in competition with Absolute. All of these businesses are bail bonding companies doing business in California as shown by search results attached to the Complaint. Additional evidence submitted by Spencer reveals that none of the business names that correspond to the 17 domain names is a registered fictitious business name for Absolute.
On March 8, 2001, counsel for Spencer wrote to Absolute, advising Absolute of its alleged violation of Spencerís service mark rights. Spencerís counsel mailed a certified letter to Absolute requesting that Absolute execute a Name Change Agreement transferring the aladdinbailbonds domain names to Spencer. Absolute signed for the letter on March 12, 2001, but did not otherwise respond to Spencerís letter.
On April 13, 2001, Spencerís counsel sent a second copy of the letter via e-mail to the administrative contact for all three domain names that are the subject of this dispute. Spencer reminded Absolute that a letter had previously been sent and requested an immediate response. Absolute did not respond to this communication.
On April 19, 2001, Spencerís counsel telephoned Respondent and inquired whether it would be responding to the March 8, 2001 letter. A written record of the telephone conversation was submitted with the Complaint. Spencer asserts that Absolute has never replied to Spencerís letter, e-mail or telephone call.
5. Partiesí Contentions
Spencer asserts that (i) the three contested domain names are identical or confusingly similar to service marks in which it has rights; (ii) Absolute has no rights or legitimate interests in respect of the domain names; and (iii) that the domain names were registered and are being used by Absolute in bad faith.
Absolute has not made its position known in this administrative proceeding.
6. Discussion and Findings
Paragraph 15(a) of the ICANN 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:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the contested domain name has been registered and is being used in bad faith.
In an Administrative Proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements are present. ICANN Policy, Paragraph 4(a)
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrantís documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it is shown that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or location or of a product or service on his web site or location. ICANN Policy, Paragraph 4(b).
On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrantís rights or legitimate interests to the domain name:
(i) before any notice to the registrant of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. ICANN Policy, Paragraph 4(c)
Absolute had the opportunity to respond and present evidence that it had rights or legitimate interests in respect of the contested domain names. It chose not to do so. Spencer is not entitled to relief simply by reason of the default, however, but the Panel can and does draw evidentiary inferences from the failure to respond. See Miles D., Ltd. d/b/a Jazz Alley v. Shosha, Case No. AF-00318 (eResolution, August 29, 2000), citing, Royal Bank of Canada v. D3M Domain Sales, Case No. AF-0147 (eResolution, May 1, 2000).
For example, Paragraph 14 of the Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
The Domain Names are Identical and/or Confusingly Similar to Service Marks in which Complainant has Rights
The mere fact that Spencer has filed an application to register one of its common law marks with the U.S. Patent and Trademark Office does not establish that Spencer has service mark rights therein until the application matures into a registration. J. L. Wilson Co., Inc. d/b/a Suntan Supply v. Ultraviolet Resources Intl, Claim No. FA0105000097148 (NAF June 18, 2001). However, where the evidence of record supports the Complainantís assertions of common law service mark rights, the Panel can conclude that the Complainant has such rights. Tall Oaks Publishing, Inc. and Slejko v. National Trade Publications, Inc., Claim No. FA0003000094346 (NAF May 5, 2000); Judy Larson v. Judy Larson Club, Claim No. FA0101000096488 (NAF March 12, 2001). The Panel concludes from the evidence submitted by Spencer that it has common law service mark rights in the marks ALADDIN and ALADDIN BAIL BONDS.
The Panel also finds that the contested aladdinbailbonds domain names are identical to Spencerís ALADDIN BAIL BONDS mark, and are confusingly similar to both of Complainantís ALADDIN BAIL BONDS and ALADDIN marks. Therefore, paragraph 4(a)(i) of the Policy has been satisfied.
Respondent Has Not Shown that it Has Rights or Legitimate Interests in Respect of the Contested Domain Names
Absolute has not come forward to produce any evidence that it has rights or legitimate interests in respect of the contested domain names. Further, the evidence submitted shows that no websites have been developed in connection with these domain names. Based upon the foregoing, the Panel finds that Absolute has no rights or legitimate interests in the contested domain names within the meaning of paragraph 4(a)(ii) of the Policy.
Respondent has Registered and Used the Contested Domain Names in Bad Faith
The Panel also infers from the evidence of record that Absolute registered the aladdinbailbonds domain names for the purpose of preventing Spencer from reflecting its service marks in the corresponding domain names. Because Absolute registered three such domain names corresponding to Spencerís service marks, and because Absolute has registered the company names of other competitors as domain names, Absolute has engaged in a pattern of such conduct. Policy paragraph 4(b)(ii); AutoNation, Inc. v. Schaefer, WIPO Case No. D2001-0289. The Panel also finds that Absolute registered the contested domain names to disrupt the business of Spencer ó who is a competitor. Policy paragraph 4(b)(iii).
The Panel also finds that Absoluteís failure to respond to Spencerís correspondence relating to the contested domain names is additional evidence of Absoluteís bad faith. See, eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633; see also, Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
Finally, the Panel finds Absoluteís registration of the contested domain names combined with its subsequent inaction ó failure to develop website(s) in connection with the domain names ó to be further evidence of Absoluteís bad faith. See, eBay Inc. v. Sunho Hong, supra. Therefore, paragraph 4(a)(iii) of the Policy has been satisfied.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs the TRANSFER of the <aladdinbailbonds.com> <aladdinbailbonds.net> and <aladdinbailbonds.org> to Complainant, Spencer Douglass MGA.
Dated: September 5, 2001