WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ace Networking, LLC v. Sergey Orunov
Case No. D2012-2337
1. The Parties
The Complainant is Ace Networking, LLC, Cincinnati, Ohio, United States of America, represented by Hart Baxley Daniels and Holton, United States of America.
The Respondent is Sergey Orunov, Rostov-na-Donu, Rostovskaya obl., Russian Federation, self-represented.
2. The Domain Name and Registrar
The disputed domain name <paljunction.com> is registered with GoDaddy.com, LLC(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 December 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2012. The Response was filed with the Center on December 23, 2012.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 22, 2013. 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.
The language of the proceedings is English.
4. Factual Background
The Complainant originally registered the domain name on August 9, 2003 Afterwards, the disputed domain was registered under the name of the Respondent on September 21, 2012 (as indicated in annex 1 of the Complaint).
The Complainant is the owner of PALJUNCTION trademark and design covered by United States Service Mark Registration No. 3,156,563 for operation of various computer network services. The Complainant is primarily active in a business of franchising restaurants in the United States and elsewhere throughout the world.
5. Parties’ Contentions
The Complainant submits that the disputed domain name fully incorporates its mark. Printouts from
the Respondent’s operation of the “www.paljunction.com” website clearly show that Respondent is attempting to confuse consumers as to the true source of website because Respondent includes content misappropriated from Complainant’s own website.
The Complainant further states that the Respondent is using the disputed domain name <paljunction.com>, that was an active website, presenting content directly relating to the Complainant’s services and its related “Buffalo Wings and Rings” restaurant franchising system.
The Respondent is in no way affiliated with the Complainant or the “Buffalo Wings and Rings” franchise. The Complainant has not granted a license to the Respondent to use its trademark. As a consequence, the Respondent has no right or legitimate interests in respect of the disputed domain name.
The Respondent uses the Complainant’s mark and logo to create an aura of affiliation with the Complainant and Complainant’s affiliated company, Buffalo Wings and Rings, LLC to provide information about the Complainant’s networking service and to also provide “Buffalo Wings and Rings” franchise information. The Respondent apparently makes commercial gain by taking advantage of the fame of the Complainant’s mark and services. This action is neither a legitimate noncommercial nor a fair use of the disputed domain name.
The Respondent’s illegitimate registration of the Complainant’s service marks as a top-level domain is part of a scheme to gain commercially from misuse of famous third-party marks.
The Complainant underlines, that the disputed domain name was registered and is being used in bad faith, since the Respondent obviously copied the Complainant’s mark and pasted one of the Complainant’s logos directly in his webpage. He also misappropriates “Buffalo Wings and Rings” service marks owned by the Complainant’s affiliated company.
Moreover, the Respondent has been warned by the Complainant that his actions constitute trademark infringement and false designation of source and has knowledge of the Complainant’s demand for return of the <paljunction.com> domain name.
The Respondent uses the disputed domain name to host his website to intentionally disrupt the Complainant’s business. The Respondent pretends that he is the legitimate source of services sold under the PALJUNCTION trademark. The disputed domain name resolved to a webpage that provided information about the Complainant’s PALJUNCTION computer networking business when, in fact, the Respondent has no connection to that business.
The Respondent has attempted to gain commercially by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent’s misuse of Complaint’s PALJUNCTION service mark as well as its related company’s BUFFALO WINGS AND RINGS trademark diverts potential consumers and franchisees away from the Complainant’s business and also provides misinformation on the true source of those businesses.
The Respondent denied all allegations of the Complainant. First, submitted that the disputed domain name is a combination of common English words “pal”, also may be referred as friend or body, and “junction”, also may be referred as intersection or joint. The <paljunction.com> domain name does not carry any unique combination of characters other than common English words.
The Respondent further declared that he does not need to be affiliated with the Complainant’s “Buffalo Wings and Rings” restaurant franchise system to use a common language domain name hence as there is no resemblance. Moreover, the Complainant’s mark is not known within the Respondent’s market (Eastern and Western Europe).
From the moment the <paljunction.com> domain name was legitimately purchased by the Respondent from the Registrar, the Respondent has maintained and maintains to this day the “under construction” web page while a new site is being developed. The Respondent had and has no intent to use or embark on the Complainant's service mark properties.
In the Respondent’s view it was due to the Complainant’s incompetence and failure to follow through on proper protocol that led to the domain name expiration and auction to the public. The Complainant had over 42 days to renew the domain name registration which it failed to renew.
The Respondent has developed and established a good working relationship with the Registrar over many years and has not violated their policies to obtain domain names. The Complainant cannot contest the fact that he registers domain name and uses them to build web sites that drive large amount of traffic for his own gain and on request sells them to interested third parties. There is nothing wrong with doing so and such activity is indicative of a form of entrepreneurial business. There is absolutely no evidence that the Respondent intended to register the domain name that matches the Complainant's service mark in order to sell it back to the service mark holder when he did not know of their existence.
At the time of registration, the Respondent had never heard of the Complainant, and had no intent to sell the <plajunction.com> domain name to any service mark holder or has known that one actually exists. To this day, even following registration, the Respondent has had no intent nor taken any action to engage in any conduct listed in the Rules as being indicative of having a bad faith intent to trade on the mark of another or bad faith for the purposes of such a dispute resolution proceeding as this. The Respondent further underlined that the Complainant has not presented, any case in any jurisdiction, including UDRP, supporting its view.
For the above reasons, the Respondent requested the Panel to dismiss the Complaint, as the Complainant's argument fails under the UDRP Policy.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name; and
(c) the disputed domain name has been registered and is being used by the Respondent in bad faith.
A Complaint may only be granted the transfer or cancellation of the disputed domain name if the above criteria are met simultaneously.
A. Identical or Confusingly Similar
The Complainant has proved to the Panel’s satisfaction that the disputed domain name <paljunction.com> is confusingly similar to the registered trademark of the Complainant.
The confusing similarity of the disputed domain name to the Complainant’s trademark and service mark is apparent from a simple visual comparison. Unquestionably the Complainant enjoys the registered trademark No. 3,156,563 since 2006. The trademark of the Complainant comprises of the graphic-linguistic trademark PALJUNCTION with additional note “to connect you with your pals”.
The disputed domain name is a replica of the Complainant’s known trademark PALJUNCTION with no suffix or prefix added thereto. This may be sufficient to satisfy the requirement that the domain name in question is identical or confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas Im v. ASD Inc, WIPO Case No. D2001-0903, wherein the panel found that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words).
The Panel therefore finds that the disputed domain name <paljunction.com> is identical or confusingly similar to the Complainant’s trademark PALJUNCTION and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel, given the registration of the Complainant’s trademark is well persuaded that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “Paljunction” at the time of the registration. This is apparent from the fact the website conducted under the disputed domain name had contained the graphic-linguistic trademark PALJUNCTION of the Complainant with additional note “to connect you with your pals”. These facts are not contested between the Parties. However, the Panel is not convinced with the Respondent’s allegation that the trademark, as well the disputed domain name, comprises of common English words. Even if so treated there is no excuse on the side of the Respondent of using the exact trademark of the Complainant, not only the mark PALJUNCTION but also the additional note “to connect you with your pals” on the website.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s mark. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The name of company that was identified on the Respondent’s website does not create any reasonable link to the Panel with the trademark PALJUNCTION used in the disputed domain name. The Respondent is not known by the domain name (paragraph 4(c)(ii) of the Policy). Neither can it be accepted that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue (paragraph 4(c)(iii) of the Policy).
For the foregoing, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
A domain name was registered and is being used in bad faith if it is primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the Policy) or in order to intentionally attempt to attract, for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the Respondent’s website (paragraph 4(b)(iv) of the Policy).
Based on the evidence submitted by the Parties, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Panel is persuaded that the Respondent knew of, or should have known of the Complainant’s trademark and services at the time the Respondent registered the disputed domain name.
First, it is no use for the Respondent to claim it had no notice of the Complainant’s mark at the time of registration. As the Respondent stated himself, he is an experienced dealer in domain names. The Complainant’s trademark was registered in the United States. It would not have been too difficult for the Respondent to have searched the US trademark register and discovered PALJUNCTION registered there at the time of the domain name registration (Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448;, Corrections Corporation of America v. Texas International Property Associates, WIPO Case No. D2008-0280). Second, the “under construction site” created by the Respondent (as described above) contains the full and unchanged trademark of the Complainant, which certainly is distinctive. Such use the Panel considers is within the meaning of paragraphs 4(b)(iii) and (iv) of the Policy.
As a result, the Panel finds that the disputed domain name <paljunction.com> was registered and is being used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, Panel orders that the disputed domain name <paljunction.com> be transferred to the Complainant.
Date: February 4, 2013