[Indexed as: ABF Freight System v. American Legal]
[Indexed as: TIMEKEEPER.com]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No. D2000-0185
Commenced: 22 March 2000
Judgment: 9 May 2000

Presiding Panelist: Andrew P. Bridges

Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Default.

Complainant owns, and has continuously used since 1993, the service mark TIMEKEEPER for the transportation and delivery of packages and cargo by truck and warehouse storage services.  Complainant also owns the U.S. trademark.

The domain name at issue is <timekeeper.com>.  And despite notice of Complainant's claim, Respondent renewed its registration for the Domain Name.  The Domain Name does not resolve to an active web site, and Respondent has taken no discernable steps toward using the Domain Name.  Respondent also defaulted on his response complaint.

Held, Name Transferred to Complainant.

Uncontested allegations of the Complaint meet, prima facie, the requirements set forth in paragraph 4(a).  The Domain Name registered by Respondent is confusingly similar to the trademark registered and used by Complainant.  It is uncontested that the Respondent has no rights or legitimate interests in respect of the Domain Name.

"Being used in bad faith" includes both positive action and inaction: inactivity by the Respondent could amount to the domain name being used in bad faith.  The Panel determines that, in this case, the Respondent's default itself, in the context of facts alleged in the Complaint, leads to an appropriate inference and finding of bad faith in the Respondent's registration and renewal of the Domain Name. 

Policies referred to

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

Registration Agreements referred to
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Cases referred to
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Panel Decision referred to
Telstra Corp. Ltd v. Nuclear Marshmallows (WIPO case no. D2000-0003 Feb. 18, 2000)

Bridges, Panelist: -
 

1. The Parties

The Complainant is ABF Freight System, Inc., 3801 Old Greenwood Road, Fort Smith, Arkansas 72903 ("Complainant").  The Respondent is identified as "American Legal," 4312 Ferrara Court, Silver Spring, Maryland 20906 ("Respondent").
 

2. The Domain Name and Registrar

The domain name at issue is <timekeeper.com> (the "Domain Name").  The Domain Name is registered with Network Solutions, Inc. ("the Registrar").
 

3. Procedural History

The World Intellectual Property Organization and Mediation Center (the "WIPO Center") received the Complaint by e-mail on March 18, 2000, and received a hard copy on March 20, 2000.  The WIPO Center sent an Acknowledgement of Receipt to the Complainant dated March 21, 2000.  On March 21, 2000, a Request for Registrar Verification was transmitted to the Registrar.  The Registrar confirmed by reply fax that the Domain Name was registered with it, that the Respondent was the current registrant of the Domain Name and that the "Uniform Dispute Resolution Policy" was applicable to the Domain Name.  The reply also contained contact information for the Respondent.  The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is the Policy applicable to this dispute.

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on March 21, 2000.  The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in effect as of December 1, 1999.

On March 22, 2000, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") to the Respondent, setting a deadline of April 10, 2000, by which the Respondent was required to file a Response to Complaint to avoid default.  The Commencement Notification was transmitted to the Respondent by post/courier and by e-mail to the postal and e-mail addresses specified in the Registrar's WHOIS confirmation, as well as to postmaster@timekeeper.com.  Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonable available means calculated to achieve actual notice to Respondent." 

On April 14, 2000, having received no Response from the designated respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.

The Panel notes that the Commencement Notification should have indicated a response date of April 11, 2000, not April 10, 2000, in order to give a full 20 calendar day period for response.  Because this case involves Respondent's complete failure to respond (not a mere delay in responding), and because the Notification of Respondent Default was issued several days after the correct deadline for a response had passed, the Panel determines that the inaccuracy is immaterial to the proceedings.

On April 19, 2000, the WIPO Center appointed Andrew P. Bridges of Wilson Sonsini Goodrich & Rosati as the Panelist in this matter.
 

4. Factual Allegations from the Complaint

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by the Respondent. 

Complainant owns, and has continuously used since 1993, the service mark TIMEKEEPER for the transportation and delivery of packages and cargo by truck and warehouse storage services.  Complainant owns U.S. trademark registration no. 1,878,911 for the mark.

Complainant contacted Respondent to complain about the Respondent's ownership of the Domain Name.

Complainant invoked the earlier dispute procedures of the Registrar and succeeded in having the Registrar place the Domain Name on "hold" status.  The Respondent failed to respond to the Registrar's communication regarding the dispute.

Despite notice of Complainant's claim, Respondent renewed its registration for the Domain Name.  The Domain Name does not resolve to an active web site, and Respondent has taken no discernable steps toward using the Domain Name.

A search by Complainant uncovered no active telephone listing in Silver Spring, Maryland, and no corporate name record in Maryland for "American Legal."  In its pleadings the Complainant did not explain whether any attempt was made to initiate contact with Respondent using the telephone number for the Billing Contact in the Registrar's WHOIS record.

5. Parties' Contentions

A. Complainant

Complainant contends that Respondent has registered the Domain Name, which is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interest in the Domain Name, and that Respondent has registered the Domain Name in bad faith.

Complainant contends that Respondent's inaction and its renewal of its domain name constitute "bad faith" under the reasoning of the WIPO Panel in Telstra Corp. Ltd v. Nuclear Marshmallows (WIPO case no. D2000-0003 Feb. 18, 2000). 

B. Respondent

Respondent has not contested the allegations of the Complaint and is in default in this proceeding. 
 

6. Discussion and Findings

For the reasons stated below, the Domain Name should be transferred to Complainant. 

A. Respondent's Failure to Answer

According to the Rules, Respondent is required to submit a response to the Complaint within twenty days of commencement of the administrative proceeding.  See Rule 5.  In the event that a Party does not respond in a timely fashion, absent exceptional circumstances, "the Panel shall proceed to a decision on the complaint." Rule 14(a).  The Rules also state that "the Panel shall draw such inferences" from a Party's failure to comply with the Rules "as it considers appropriate." Rule 14(b).  Moreover, paragraph 15(a) of the Rules states: "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." 

Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint.

B. Applicable Rules and Principles of Law

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

(i) 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,

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

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

C. Findings

Uncontested allegations of the Complaint meet, prima facie, the requirements set forth in paragraph 4(a).  The Domain Name registered by Respondent is confusingly similar to the trademark registered and used by Complainant.  It is uncontested that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Facts constituting bad faith registration and use of a domain name are not limited to the examples identified in paragraph 4.b. of the Policy.  The question of bad faith here calls for the same type of analysis as that engaged in by the WIPO panel in Telstra Corp. Ltd. v. Nuclear Marshmallows.  The Panel finds the analysis in that case illuminating and persuasive, although in this Panel's view previous panel decisions do not create formal precedent that binds later panels.  This Panel specifically adopts the following statement by the WIPO Panel in Telstra as its own reasoning in this case:

[T]he relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.  The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one.  The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept.  That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.

Telstra 7.9.

The Panel determines that, in this case, the Respondent's default itself, in the context of facts alleged in the Complaint, leads to an appropriate inference and finding of bad faith in the Respondent's registration and renewal of the Domain Name. 

The Panel does not rely for this finding upon Complainant's assertions regarding Respondent's lack of an entry in a telephone directory and state corporate name index.
 

7. Conclusion

The Panel FINDS that the Domain Name is identical to Complainant's registered trademark; the Respondent has no rights or legitimate interests in the Domain Name; and the Respondent has registered the Domain Name in bad faith.  These three factors entitle Complainant to an order transferring the Domain Name from Respondent to Complainant.  See Policy 4(a).

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel now ORDERS that the registration of the Domain Name be transferred to Complainant.
 

Andrew P. Bridges
Panelist
Dated:  May 9, 2000
 

Domain Name Transferred