Domain name - U.S. Service mark - Confusingly similar - Identical - Bad faith registration - Well known mark - Late filing of Response - Registration of mark is constructive notice - Adverse inference can be drawn by failure to rebut - Inaction or failure to respond to letters and a Complaint can be evidence of bad faith.

The Complainant and its predecessors in interest have been involved in the manufacturing, sales and distribution of ink and ink-related products since the early 1970's and have sold these under the mark of INK SOURCE since 1990.  In 1990, the Complainant through its predecessor in interest filed an application to register the INK SOURCE mark, which was issued in 1992.  The Respondent IRG Coins registered the domain name on behalf of the Respondent Ink Source, Inc. who intended to use the site to promote its ink products.

The Respondents did not contest the allegations of the Complainant.  The Panel may draw an adverse inference by the failure to submit evidence in rebuttal of allegations in the Complaint.  The registration of the mark puts the Respondents on constructive notice of the existence of the mark.  Where there is constructive notice of a mark, and the Respondent has been notified that it has obtained a confusingly similar domain name, inaction and a failure to respond to letters or a Complaint filed may constitute evidence of bad faith registration and bad faith use.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution 
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy 

Panel Decisions referred to

Cellular One Group v. Brien, ICANN Case No. D2000-0028
Mondich and American Vintage Wine Biscuits v. Big Daddy's Antiques, ICANN Case No. D2000-0024
Talk City Inc. v. Robertson, ICANN Case No. D2000-0009
Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003
The Channel Tunnel Group Ltd. v. Powell, ICANN Case No. D2000-0038

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Donahey, Panelist,

1. The Parties

Complainant Marconi Data Systems, Inc. is a corporation, incorporated in the State of Delaware, having its principal place of business at 1500 Mittel Boulevard, Wood Dale, Illinois, USA.

Respondents IRG Coins is an entity located at 690 Cornerstone Ridge, Two Harbors, Minnesota, USA. Respondent Ink Source, Inc. is a corporation having the following address: 580 Hale Avenue North, St. Paul, Minnesota 55128-7548,USA.

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <ink-source.com>. The registrar is Internet Domain Registrars (the "Registrar"), #1730, 475 Sansome Street, San Francisco, California 94111, USA.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on February 24, 2000, by email and on February 28, 2000, in hardcopy. The Complainants paid the required fee.

On February 24, 2000, by email and on March 1, 2000, by hard copy, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant. On March 3, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute, that <ink-source.com> is registered in the Respondent's name, and that the Uniform Domain Name
Dispute Resolution Policy (the "Policy") is applicable.

Having verified that the Complaint satisfies the formal requirements of the ICANN Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on March 1, 2000, sent to the Respondents, with a copy to the Complainant, a notification of the administrative proceeding together with copies of the Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is March 1, 2000.

On March 21, 2000, the Center sent Notification of Respondents' Default. On March 29, 2000, having received his completed and signed Statement of Acceptance and Declarations of Impartiality and Independence, the Center notified the parties of the appointment of M. Scott Donahey as sole panelist.

Pursuant to paragraphs 10(b) and 10(c) of the Rules and Talk City (at pp. 2-3) the Panel finds that the late filing of the Response caused no delay. The Panel has accepted and considered the late-filed Response.

4. Factual Background

Since the early 1970's, Complainant and its predecessors in interest have been engaged in the manufacturing, sales, and distribution of inks and ink-related products. Since 1990, Complainant has sold inks and ink-related products throughout the United States under the INK SOURCE mark.

On April 5, 1990, Complainant, through its predecessor in interest, filed an application to register INK SOURCE with the United States Patent and Trademark Office, thereby giving constructive notice of Complainant's intent to use that mark. On April 14, 1992, the United States Patent and Trademark Office issued to Complainant's predecessor in interest Registration No. 1,684,419 for the INK SOURCE mark. The Complainant attached a copy of the INK SOURCE Registration to the Complaint. Complainant is the registrant and owner of the domain name <inksource.com>, and Complainant attached a copy of a Whois report for <inksource.com> to the Complaint.

Complainant has sold many hundreds of millions of dollars worth of inks and ink-related goods under the INK SOURCE mark throughout the United States, and Complainant has spent many millions of dollars to advertise and promote its inks and ink-related goods under the INK SOURCE mark throughout the United States. By virtue of Complainant's long use, advertising, and promotion, the INK SOURCE mark has become well known throughout the United States and possesses a strong secondary meaning signifying Complainant and the inks and ink-related goods it offers, and represents an extremely valuable goodwill owned by Complainant.

On February 4, 2000, Complainant sent a letter to IRG Coins, the first Respondent in this proceeding, requesting that IRG Coins cease and desist from any unlawful use of the domain name <ink-source.com> and the INK SOURCE mark. On February 9, 2000, Complainant's counsel received a telephone call from a Michael Sloan, who identified himself as the owner of Ink Source, Inc. Mr. Sloan informed Complainant's counsel that Chad Smith, the administrative contact and owner of IRG Coins, registered <ink-scource.com> on Ink Source, Inc.'s behalf and that Ink Source, Inc. was acquiring the domain name from IRG Coins. Mr. Sloan further stated that Ink Source, Inc. manufactures silk screening inks and other ink products and that Ink Source, Inc. intends to use the domain name at issue to advertise and promote its ink products.

5. Parties' Contentions

A. Complainant

Complainant contends that Respondents have registered as a domain name a mark which is confusingly similar to the trademark registered and used by Complainant, that Respondents have no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.

B. Respondents

Respondents have not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since both the Complainant and Respondents are domiciled in the United States, and since United States' courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that 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,

2) that the respondent has no legitimate interests in respect of the domain name; and,

3) the domain name has been registered and used in bad faith.

Rule 14(a) states that a Panel may draw such inferences from a failure to comply with a provision of the rules as it considers appropriate. Panel decisions have established that panelists may draw adverse inferences from the failure to submit evidence in rebuttal to the allegations contained in the Complaint. See, e.g., Mondich and American Vintage Wine Biscuits v. Big Daddy's Antiques, ICANN Case No. D2000-0024.

The Panel finds that Complainant has established that the hyphenated domain name <ink-source.com> is confusingly similar to Complainant's trademark. The Channel Tunnel Group Ltd. v. Powell, ICANN Case No. D2000-0038. The Panel further finds that registration of such mark puts Respondents on constructive notice of the existence of the mark. Cellular One Group v. Brien, ICANN Case No. D2000-0028. One who has constructive knowledge of the trademark, and who contacts the trademark owner and advises the owner that he has acquired a confusingly similar domain name which he intends to use in competition with the trademark owner, has no rights or legitimate interests in the domain name.

However, as many panel decisions have discussed, the domain name at issue must also have been registered in and must be being used in bad faith. In the present situation, there is an allegation of present use, but no evidence of same, such as a printout of a screen demonstrating such use, annexed to the Complaint.

The well reasoned opinion by the Panel in the case of Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, has established that inaction in the presence of particular circumstances can constitute bad faith use. The Panel finds that where the Respondent has constructive notice of the trademark of the Complainant, where the Respondent contacts
the Complainant and advises it that Respondent has acquired a confusingly similar domain name in order to use it in direct competition with Complainant, and where Respondent fails to respond either to letters demanding that Respondent not use the domain name at issue or to a Complaint filed in accordance with the Policy, such circumstances constitute evidence of bad faith registration and bad faith use.

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondents is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondents have no rights or legitimate interests in respect of the domain name, and that the Respondents' domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <ink-source.com> be transferred to the Complainant.

   
  M. Scott Donahey
  Presiding Panelist
  Dated: April 11, 2000