WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ocean Pacific Apparel Corp. v. Global Domain Trust
Case No. D2004-0899
1. The Parties
The Complainant is Ocean Pacific Apparel Corp., New York, New York, United States of America, represented by Katten Muchin Zavis Rosenman, New York, New York United States of America.
The Respondent is Global Domain Trust, Newark, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <op.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2004. On October 29, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. That same day, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2004.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2004.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 8, 2004. 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.
4. Factual Background
Since 1970, Complainant has been using its OP corporate name, trade name, trademark and service mark in connection with products and services including, clothing, sunglasses, jewelry, fragrances and retail stores. Complainant also owns the following marks: OP PRO, OP SPORT, OP JUICE and OP 72. Attached to the Complaint as Exhibit C are 19 United States federal trademark registrations for the OP Mark. Complainant has also established a significant on-line presence through its sale of OP labeled products on the internet. With this extensive use, Complainant has built up valuable goodwill in the OP Mark.
5. Parties’ Contentions
Complainant asserts that the Domain Name is identical to the OP Mark, Respondent has no rights or legitimate interests in the Domain Name; and Respondent registered and used the Domain Name in bad faith.
Complainant represents that on May 2, 1995, it registered the Domain Name with Network Solutions/Verisign but in the summer of 2002, Complainant transferred the Domain Name registration from Network Solutions to Tucows.com (“Tucows”). Complainant claims that in late 2002, Respondent gained wrongful access to the Tucows database, hijacked the Domain Name, and caused it to be fraudulently transferred to Respondent. Subsequently, on January 7, 2004, the Domain Name was fraudulently transferred back to Network Solutions despite the fact that Complainant had neither transferred, nor authorized any other party to transfer, title, ownership, use, or any rights to Complainant’s Domain Name registration to Respondent or to any other third party. On January 12, 2004, Andrew Lelchuk, Senior Vice President at Ocean Pacific Apparel Corp. wrote the following to Network Solutions1:
“The purpose of this letter is to dispute the rightful ownership of op.com. Ocean Pacific Apparel Corp. is the true and rightful owner of op.com. Op is a registered trademark of the Ocean Pacific Apparel Corp. Please update the registrant information to show that Ocean Pacific Apparel Corp. is the rightful owner of the op.com domain.”
In sum, Respondent somehow acquired rights to the Domain Name, is not making any legitimate use of the Domain name, but has refused to return it. On September 28, 2004, Complainant sent, via first class mail, a cease and desist letter to Respondent requesting that it transfer to Complainant ownership of the Domain Name. An electronic version of the letter was sent to Respondent via e-mail on the same day. Complainant never received any reply to its letter. As a result of Respondent’s failure to reply to Complainant’s letter, Complainant instituted this administrative proceeding, requesting transfer of the Domain Name registration to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, 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 domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent 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.
A. Identical or Confusingly Similar
The Complainant has satisfied the Panel that it has rights in the OP Marks. It is obvious that the Domain Name is identical to Complainant’s OP Mark; the addition of the gTLD “.com” is not relevant in establishing identity. See KLM(UK) Limited v. CustomWeather, Inc., WIPO Case No. DBIZ2002-00058 (September 14, 2002).
The Panel therefore holds that Complainant has established element (i) above.
B. Rights or Legitimate Interests
It is uncontested that Respondent has no legitimate interest in the OP Mark. Respondent has no agreements, legal or otherwise, with Complainant authorizing it to use the OP Mark. Furthermore, there is no evidence that Respondent has been personally identified, or commonly known, by names comprised, in whole or in part, of the term “OP.” There is no evidence that Respondent has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The only evidence is that Respondent somehow became the registrant of the Domain Name and has refused to relinquish rights to it.
Where, as here, the Complainant has raised a prime facie presumption of the Respondent’s lack of any right or interest in the OP Mark, and Respondent has failed to rebut that presumption, the Panel is satisfied that the Complainant has carried its burden of proving that Respondent has no legitimate interest in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product.”
These criteria are not exclusive and the panel may conclude that the Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel is not in a position to ascertain the extent of the errors or culpability that resulted in the transfer of the Domain Name to, or acquisition by, Respondent. By virtue of Complainant’s federal registrations and extensive use of the OP Mark, Respondent was certainly on constructive notice, if not actual notice, of Complainant’s rights in the OP Mark prior to obtaining the registration for the Domain Name. In addition, Complainant put Respondent on actual notice of its rights before Complainant instituted this administrative proceeding by virtue of the correspondence sent by Complainant to Respondent. See Exhibit E attached to the Complaint. Thus Respondent acquired/registered and has kept the Domain Name in bad faith with full knowledge of the Complainant’s OP Mark. Furthermore “Respondent’s inactivity or passive holding of the domain name may prove that the domain name has been registered and is being used in bad faith.” See Red Bull v. Harold Gutch, WIPO Case No. D2000-0766 (September 22, 2000.).
The Panel therefore holds that the Complainant has established element (iii) above.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <op.com> be transferred to the Complainant.
Harrie R. Samaras
Dated: December 17, 2004
1 Apparently Network Solutions never corresponded back to Mr. Lelchuk.