National Arbitration Forum Decision
VeriSign, Inc. v. Apostolis Mikronis
Claim Number: FA0609000808203
Complainant is VeriSign, Inc. (“Complainant”), represented by Patrick McGarry, of McGarry & McGarry, LLC, 120 N. LaSalle Street, Suite 1100, Chicago, IL 60602. Respondent is Apostolis Mikronis (“Respondent”), Intersat SA, L. Kifisias 362, GR-15233 Chalandri, Athens Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <verisign.ro>, registered with Register.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2006.
On September 29, 2006, Register.com confirmed by e-mail to the National Arbitration Forum that the <verisign.ro> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <verisign.ro> domain name is identical to Complainant’s VERISIGN mark.
2. Respondent does not have any rights or legitimate interests in the <verisign.ro> domain name.
3. Respondent registered and used the <verisign.ro> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VeriSign, Inc., offers a wide variety of technology and communications products and services under the VERSIGN mark, including digital identity certification products and services, secure e-commerce payment products and services, computer software, and other Internet-related products and services.
Complainant has registered the VERISIGN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,302,350 issued December 21, 1999)
Complainant alleges that Respondent registered the <verisign.ro> domain name in 2005 but it is unclear from the record whether this is the correct registration date. It appears from the WHOIS record that Respondent registered the disputed domain name in 2000. Nevertheless, Complainant’s trademark registration was issued in 1999, before either of the possible registration dates.
Respondent’s <verisign.ro> domain name does not resolve to an active website.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established rights in the VERISIGN mark through registration of the mark with the USPTO. See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Because Respondent’s <verisign.ro> domain name incorporates Complainant’s VERISIGN mark in its entirety and merely adds the country code top-level domain (“ccTLD”) “.ro,” the Panel concludes that the disputed domain name is identical to the mark under Policy ¶ 4(a)(i). See Diners Club Int’l Ltd. v. Weber & Partners Consult SRL, FA 676676 (Nat. Arb. Forum May 29, 2006) (concluding that the <dinersclub.ro> domain name was confusingly similar to the complainant’s DINERS CLUB mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant asserts that Respondent lacks rights and legitimate interests in the <verisign.ro> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <verisign.ro> name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Apostolis Mikronis,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <verisign.ro> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent has not used, nor made demonstrable preparations to use, the <verisign.ro> domain name since registering it. In Bloomberg L.P. v. SC Media Services and Information SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), the respondent registered the <bloomberg.ro> domain name but did not use it in connection with an active website. The panel found that the respondent was not using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii) by failing to use the disputed domain name. Because similar circumstances exist in the present case, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s <verisign.ro> domain name does not resolve to an active website. In Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), the respondent registered the <thecaravanclub.com> domain name, which the panel found was identical to the complainant’s THE CARAVAN CLUB mark, and made no use of the domain name. The panel held that the respondent’s failure to use the disputed domain name permitted an inference of registration and use in bad faith. Because Respondent has also registered a domain name identical to a registered mark and not made any use of the domain name, the Panel concludes that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s non-use of the domain name satisfied the requirement of ¶ 4(a)(iii) of the Policy).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <verisign.ro> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 10, 2006