Complainant is SiTV, Inc. of Glendale, California, United States of America (“US”), represented by Don Thornburgh Law Corporation, US.
Respondent is Damir Lukic, Trilogy of Austin, Texas, US, represented by Jones & Spross, PLLC, US.
The disputed domain name <nuvo.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2014. On July 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 11, 2014.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2014. Numerous communications were filed by Respondent between July 30, 2014 and August 21, 2014. No formal Response was filed.
The Center appointed Michael A. Albert as the sole panelist in this matter on September 10, 2014. 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 following facts are not contested:
1. Complainant has a United States Patent and Trademark Office (“USPTO”) trademark registration for its NUVO mark (Reg. No. 4,511,148, filed September 9, 2011, registered April 8, 2014), used in connection with broadcasting via global computer or data networks.
2. Respondent’s registered <nuvo.com> domain name is identical to the NUVO mark.
Complainant has made the following contentions:
1. Complainant has a United States Patent and Trademark Office (“USPTO”) trademark registration for its NUVO mark (Reg. No. 4,511,148 filed September 9, 2011, registered April 8, 2014), used in connection with broadcasting via global computer or data networks.
2. Respondent’s registered <nuvo.com> domain name is identical to the NUVO mark.
3. Respondent has never been known by the name “nuvo”.
4. Respondent has not made any use of the <nuvo.com> domain name over a period of several years.
5. Respondent has not made any demonstrable preparations to use the <nuvo.com> domain name in connection with a bona fide offering of any goods or services
Respondent has failed to offer any factual or legal contentions related to the merits of this dispute.
On August 13, 2014, the attorney for the Respondent emailed the Center and stated: “we do not operate this company any longer and… further communications will need to be directed to the trustee.” Respondent’s attorney subsequently identified a bankruptcy trustee. However, the disputed domain remains registered to the Respondent. The Rules define a “respondent” as “the holder of a domain-name registration against which a complaint is initiated.” Furthermore, prior Panels have issued decisions in spite of pending bankruptcy proceedings. See, e.g., The Spamhaus Project, Ltd. v. Damon Nelson, WIPO Case No. D2014-1121. Accordingly, this Panel will proceed to a decision.
Under paragraph 4(a)(i) of the Policy, a complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Complainant has offered sufficient evidence to prove that it is the owner of a valid US trademark for NUVO. The date of a USPTO trademark registration ordinarily relates back to the filing date of the application. See Planetary Socy’y v. Rosillo, WIPO Case No. D2001-1228. Complainant has thus established trademark rights under paragraph 4(a)(i) dating back to September 9, 2011, and has satisfied the threshold requirement that it hold trademark rights in the disputed domain name. See F. Hoffman-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629.
To satisfy paragraph 4(a)(i), the disputed domain name must be identical or confusingly similar to the Complainant’s trademark. Here, the disputed domain consists of (i) Complainant’s registered NUVO mark and (ii) the generic Top-Level-Domain (“gTLD”) suffix “.com”. As gTLD suffixes may be disregarded for purposes of determining identity or confusing similarity, the Panel concludes that the disputed domain name is identical to Complainant’s registered mark. See Pomellato S.p.A. v. Tonetti, WIPO Case No. D2000-0493. The Panel concludes that Complainant has satisfied the first element of the Policy.
Under paragraph 4(a)(ii), a complainant must first show a prima facie case that the respondent lacks rights or legitimate interests in a domain name. After such a showing, the burden of rebuttal shifts to the respondent to show that it does have rights or legitimate interests. As expressed in paragraph 4(c)(i), rights or legitimate interests in a domain name may be demonstrated by showing that “before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
In the instant case, Complainant provides minimal evidence that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant merely states the conclusory assertion that “there is no indication or evidence that Respondent has used or has made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of any goods or services, and Respondent never has been known by the domain name.”
Respondent has failed to file a formal Response rebutting Complainant’s purported prima facie case. Therefore, whether Complainant has satisfied the second element of the Policy turns on the question of whether Complainant has put forth a sufficient prima facie case to shift the burden of rebuttal to Respondent. The Panel need not resolve this issue definitively as, even assuming arguendo that Complainant’s evidence on this issue suffices, the outcome of this proceeding would not be affected for the reasons discussed in Part C below.
Under paragraph 4(a)(iii), a complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, are evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on the respondent’s web site or location.
The examples provided under paragraph 4(b) are merely illustrative; they are not an exhaustive catalogue of conduct that constitutes bad faith. Nevertheless, Complainant offers no evidence on any of these examples, nor does it identify any other evidence of bad faith. Complainant offers only a conclusory allegation of bad faith that provides little to no supporting evidence. Although Respondent has failed to file a formal Response, Respondent’s default does not mean that the Panel must accept as true allegations in the Complaint that are unsupported by evidence. See Brooke Bollera, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
Complainant’s bad faith argument rests on the allegation that “[i]t is apparent that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the owner of the trademark or service mark… or to another third party domain name reseller.” Complainant supports this assertion by stating that “Respondent has made no use of the domain.”
Prior panels have considered various factors in evaluating whether the passive holding of a domain name amounts to bad faith, including:
(i) Whether the Complainant’s trademark has a strong reputation that is widely known;
(ii) Whether the Respondent has provided evidence of any actual or contemplated good faith use;
(iii) Whether it is possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
See, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. On balance, this Panel concludes that Complainant has failed to demonstrate that Respondent’s passive holding of the disputed domain rises to the level of bad faith. Accordingly, the Panel concludes that Complainant has failed to satisfy the third element of the Policy.
For the foregoing reasons, the Complaint is denied.
Michael A. Albert
Sole Panelist
Date: September 19, 2014