WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ambry Technologies, Inc. v. Domains by Proxy, Inc. / Elizabeth Orta
Case No. D2011-1820
1. The Parties
The Complainant is Ambry Technologies, Inc., of Addison, Texas, United States of America (“United States”), represented by Strasburger & Price, LLP, United States.
The Respondent is Domains by Proxy, Inc., of Scottsdale, Arizona, United States / Elizabeth Orta of Miami, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <ambryintls.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011 against Domains by Proxy, Inc. On October 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2011, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2011 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. On October 31, 2011, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on November 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for a response was November 24, 2011. The Respondent did not submit a response. Accordingly, the Center notified the Complainant of the Respondent’s default on November 25, 2011.
The Center appointed Marylee Jenkins, Esq., as sole panelist in this matter on December 6, 2011. The Panel finds that it was properly constituted. As required, the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence to the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, a computer hardware sourcing company, bases the Complaint on common law rights to the marks AMBRY and AMBRY INTERNATIONAL and the company names Ambry International, Ambry Technologies, Inc., and Ambry, Inc. Particularly, these common law rights are based on the Complainant’s and its predecessor company’s use of the name and mark AMBRY INTERNATIONAL for almost ten (10) years and their use of the name and mark AMBRY for almost twenty (20) years. Well prior to the registration date of the Domain Name in this proceeding , the Complainant and its related companies had also registered a number of domain names that incorporate the mark AMBRY (e.g., <ambry.com>, <ambryintl.com> and <ambryinternational.com>). The WhoIs information for these domain names was attached as Annexes E, N and O, respectively, to the Complaint. The Complainant also operates an e-commerce website at the domain name <ambry.com> (Annexes C and D of the Complaint.)
The Domain Name was registered on March 12, 2011, and is set to expire on March 12, 2012. The web page accessible at the Domain Name is a Google hold page, and other than displaying the Google logo, does not provide any information concerning the Respondent or offer for sale any goods or services of the Respondent. A copy of the web page was attached as Annex W to the Complaint.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s names and marks AMBRY and AMBRY INTERNATIONAL, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and the Domain Name was registered and is being used in bad faith by the Respondent to create a likelihood of confusion with the names and marks AMBRY and AMBRY INTERNATIONAL as a source, sponsorship, affiliation, or endorsement of the Respondent’s website. Particularly, the Complainant alleges that the Respondent is using an email address (i.e., “[…]@ambryintls.com”) that incorporates the Domain Name as a means of contacting numerous third-party vendors in an attempt to fraudulently purchase large volumes of equipment totaling upwards of USD 350,000. Copies of the e-mails sent to vendors from the email address “[…]@ambryintls.com” were attached as Annexes X, Y, and Z, respectively, to the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel can only rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present.
A. Identical or Confusingly Similar
Under Paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has common law rights in the names and marks AMBRY and AMBRY INTERNATIONAL.
A review of the second-level domain of the Domain Name shows that it consists of an abbreviation of the Complainant’s mark AMBRY INTERNATIONAL. While the Domain Name abbreviates the word “international” and includes an “s” at the end, such changes do not result in differentiating or distinguishing the Domain Name from the Complainant’s mark. Thus, the Panel finds that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s 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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise by the Domain Name. The uncontested evidence shows that the Complainant had well established rights to its names and marks at the time of the Respondent’s registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. The fact that the Domain Name resolves to a holding page does not support a finding that the Respondent was making a legitimate noncommercial or fair use of the Domain Name. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
Based upon the uncontested evidence submitted by the Complainant, the Panel finds that the Respondent clearly had knowledge of the Complainant’s marks AMBRY and AMBRY INTERNATIONAL and company names when registering the Domain Name. This finding is supported by the evidence showing that the Domain Name was registered well after the Complainant or its predecessor company began use of its names and marks. Furthermore, the evidence shows that the Respondent had been using the Complainant’s name and address in its e-mail correspondence with third-party vendors in an attempt to place fraudulent orders. This evidence therefore shows the Respondent was well aware of the Complainant’s business, its company names, its marks, its domain names and corresponding e-commerce website at “www.ambry.com”. Based on this cumulative evidence, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its online presence via emails incorporating the Domain Name thereby creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement thereof. The Panel thus concludes that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <ambryintls.com> be transferred to the Complainant.
Dated: December 20, 2011