Complainant is Paragon Micro, Inc. of Lake Zurich, Illinois, United States of America, represented by Levin Ginsburg, United States of America.
Respondent is Julian Pretto of Arlington Heights, Illinois, United States of America.
The disputed domain name, <paragonmicro.com>, is registered with Nameview, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on May 5, 2010. On May 6, 2010, the Center transmitted by email to Nameview a request for registrar verification in connection with the disputed domain name. On May 10, 2010, Nameview transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from that provided in the Complaint. The Center advised Complainant, in an email communication on May 11, 2010, of the newly-disclosed information and invited Complainant to submit an amendment to the Complaint, if it wished to do so. Complainant submitted an amended Complaint on May 14, 2010. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 8, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on June 21, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant was formed in 2003 and asserts that it began using the mark PARAGON MICRO in connection with the sales of computer-related products and services in 2006. The disputed domain name, <paragonmicro.com> was registered in 2001; it does not resolve to an active website.
Complainant owns the trademark PARAGON MICRO, which it uses in connection with its business of selling and distributing computing products, software, and information technology services and for related professional services.
Complainant was formed in 2003 and began using its mark in 2006.
The disputed domain name is identical to Complainant's mark in sight, sound, and appearance.
The disputed domain name is not being used for an active website; instead, an error message is displayed. Therefore, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making legitimate commercial, noncommercial or fair use of the disputed domain name.
Complainant has never licensed or otherwise permitted Respondent to apply for any domain name incorporating its mark and there is no relationship between Complainant and Respondent; Respondent's use of Complainant's mark in the disputed domain name is without Complainant's permission.
Respondent incorporated on March 12, 2007 in Illinois as Techzone Inc. and does business as Chicagomico [sic]; Respondent has registered the <chicagomicro.com> domain name for a business that sells and distributes computing products and software and information technology services in direct competition with Complainant.
Respondent is a direct competitor of Complainant who has registered the disputed domain name in order to prevent Complainant from registering a name that corresponds to its mark.
The fact that Respondent does not use the disputed domain name to sell or provide any goods or services evidences bad faith; the disputed domain name does not resolve to an active website.
Respondent could commence such activity at any time which would disrupt Complainant's business and cause confusion as to the source of the goods and/or services.
Complainant's attempts to contact Respondent through the registrar – when the disputed domain name was registered under the registrar's identity shield – were unsuccessful. The WhoIs information is incomplete and the email address provided was a scrambled address that changed each day.
Respondent did not utilize a security shield to hide its identity from the public for the <chicagomicro.com> domain name it uses to conduct its business.
The fact that Respondent has taken Complainant's mark in its entirety as Respondent's domain name is also evidence of bad faith.
Respondent did not reply to Complainant's contentions.
The Rules define “respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent”. Based on the record, it appears that the Complaint correctly named as Respondent, Paragonmicro.com c/o Nameview, Inc. Whois Identity Shield, the registrant of record for the domain name at issue at the time that the Complaint was filed. It was only after this proceeding was filed and commenced that the registrar changed the registration records and identified as the “registrant” the individual who was using its privacy service. However, as Complainant thereafter amended its Complaint to identify that individual, Respondent Julian Pretto, the Panel deems the only Respondent in this matter to be that individual.
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent's default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent's failure to respond is that it has not offered any of the types of evidence set forth in paragraph 4(c) of the Policy, such as using (or preparing to use) the domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Nor has Respondent provided any evidence on the issue of bad faith.
Complainant must establish that the disputed domain name is either identical or confusingly similar to its PARAGON MICRO mark.
Complainant does not own any registrations for its mark and must therefore establish rights in its unregistered mark.
Whether Complainant has established common law rights in its mark presents a close question. Complainant has not provided any evidence of the type that establishes rights in a mark that has not been registered. The Complaint merely asserts in a conclusory fashion that Complainant has used the mark since 2006 and has “established goodwill and a substantial business reputation” under the mark. Apart from printouts showing that Complainant incorporated in 2003 and of apparently current pages from Complainant's website at “www.paragronmicro.net”1, the Complainant does not provide any other evidence regarding length of use and provides no information concerning sales, nature and extent of advertising, consumer surveys, or media recognition that would establish rights in a mark that is not registered. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7 (consensus view requires assertion of rights in unregistered mark by showing mark has become a distinctive identifier for party or its goods and services, such as by evidence of length of use, amount of sales, nature and extent of advertising, consumer surveys, and media recognition of mark). The Complaint is signed by Complainant's counsel; no information is provided that would indicate that any of the information is based on her personal knowledge.
Although Complainant's showing is quite minimal, the web pages do show some use of the term as a trademark.
The disputed domain name is identical to Complainant's mark.2
The Panel concludes that Complainant has established that the disputed domain name is identical or confusingly similar to its PARAGON MICRO mark.
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests, which is not rebutted by the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy. On this record, it appears that Respondent has not used the disputed domain name at all, much less in connection with a bona fide offering. There is no evidence that Respondent, an individual is or has been known by the name “Paragon Micro.” There is no evidence that Respondent is making a legitimate noncommercial or fair use of the domain name.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.
Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent's web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or a product or service on respondent's web site or location, (see Policy, paragraph 4(b)(iv)).
There is no evidence that Respondent registered the domain name in order to sell it. Further, as Respondent is not actually using the domain name for any active website, it cannot presently be said that it is using the disputed domain name to attract visitors for commercial gain.
Complainant argues that Respondent could “at any time” begin using the disputed domain name in a manner that would disrupt its business and cause confusion as to the source of the parties' respective goods and services. Notably, Complainant provides no evidence that Respondent has actually used the domain name in such a manner. The Panel declines to find bad faith simply because a disruptive or confusing use is possible.
Complainant also contends that Respondent is a direct competitor who has registered the disputed domain name in order to prevent Complainant from registering a name that corresponds to its mark. The evidence on this point is somewhat confused. Complainant asserts that Respondent, an individual, has “incorporated” as a corporation that operates as “ChicagoMicro”, offering competing products and services through its own website (at “www.chicagomicro.com”). In support, Complainant provides evidence from the website of the State of Illinois' Office of the Secretary of State Corporations Division, which shows that the president and secretary of the corporation shares the same last name as Respondent and that the registered office is located at the same address as that provided for Respondent.
The foregoing, combined with the use of an identity shield and the adverse inference raised by Respondent's failure to respond to the Complaint, cast some doubt on Respondent's good faith. Regardless of any connection between Respondent and Complainant's competitor, paragraph 4(b)(ii) of the Policy refers to registering a domain name to prevent the mark's owner from reflecting the mark in a domain name “where there is a pattern of such conduct.” There is no evidence of such a pattern here.
Complainant next asserts that Respondent is engaged in “passive holding” of the disputed domain name as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In support, Complainant points to the fact that Respondent does not use the disputed domain name to sell or provide any goods or services evidences bad faith; the domain name does not resolve to an active website but instead displays an error message. However, in Telstra, the Panel had already concluded that the complainant had shown that the domain name had been registered in bad faith. The Panel then considered whether, where the domain name was not being used, such non-use or “passive holding” could nonetheless establish bad faith use of the domain name, satisfying paragraph 4(a)(iii) of the Policy, which requires that the domain name at issue “has been registered and is being used in bad faith.”
Here, however, there is no evidence regarding the circumstances of the registration of the disputed domain name. Further, the consensus view, and the view of the Panel, is that as a general matter, a domain name that is registered before a trademark right has been established cannot be found to have been made in bad faith. The registrant would have been aware of the complainant's trademark rights, because those rights did not then exist. See Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1.
Here, Complainant states that it was incorporated in 2003 and began using its mark in 2006. Yet, the <paragonmicro.com> domain name was apparently registered in 2001, which would have been some time before Complainant was formed.
Of course, like any general rule, there are, as there should be, exceptions. For example, where the facts indicate that a respondent was aware of a complainant and it is clear that the domain name was registered to exploit confusion between the domain name and any potential rights of complainant, bad faith may be found. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1. There may also be other circumstances where the general rule would not apply.
Evidence of such an exception has not been provided here; indeed, the Complaint nowhere even acknowledges that the registration predates Complainant's trademark rights. At the Panel's request, the Center affirmatively followed up with the registrar seeking information regarding the date on which Respondent registered or acquired the registration for the domain name; however, the registrar did not respond to the Center's request. Neither the Center nor the Panel has the power to require the registrar to provide such information; neither the Center nor the Panel conduct independent investigations into the domain name history as a routine matter. Lastly, the Panel's efforts to find other publicly-available information in this regard were not successful. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.5 (Panel may undertake limited factual research into public record).
Under these circumstances, the Panel concludes that Complainant has not established that Respondent has registered and used the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Dated: July 1, 2010
1 The pages appear to be current ones. They are either undated or bear relatively recent copyright notices (referring to 2009 and 2010 and in, one case, 1995-2010).
2 The addition of the top level domain “.com,” use of lower case, and elimination of spaces between terms are not relevant in determining identity or confusing similarity.