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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Steven Gerhardt and D&M Enterprise Group, LLC v. Robert Jones
Case No. D2007-0033
1. The Parties
The Complainants are Steven Gerhardt and D&M Enterprise Group, LLC, United States of America, represented by Robert F. Schillberg, Jr., United States of America.
The Respondent is Robert Jones, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dmenterprise.net>
is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on January 10, 2007. On January 17, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 17, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for the domain name, confirming details of the registration agreements, and provided contact information for the administrative and technical contact for the domain name.
On January 24, 2007, the Center issued to Complainants a Notice of Complaint Deficiency relating to the grounds on which the Complaint was brought, citing paragraphs 3(b)(viii) and 3(b)(xv) of the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), requiring specification of the trademark upon which a complaint is based and evidence of any trademark registration. In response, Complainants submitted an amendment to the Complaint.
The Center verified that the Complaint and amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2007. In accordance with the paragraph 5(a) of the Rules, the due date for Response was February 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2007.
The Center appointed Debra J. Stanek as the sole panelist
in this matter on March 9, 2007. 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 paragraph 7
of the Rules.
4. Factual Background
Complainant D&M Enterprise Group is a limited liability company formed in 2001. Complainant Steven Gerhardt is its owner and sole member.
The corporate Complainant currently operates its website, “www.dmenterprise.net,” under the disputed domain name.
According to the Complaint, Respondent registered
the disputed domain name at the request and expense of Complainant as part of
consulting services that Respondent’s company was providing but, either
deliberately or through inadvertence, used Respondent’s own name as the
name of the domain name holder rather than the name of one of the Complainants.
5. Parties’ Contentions
Complainants make the following contentions
The name D&M Enterprise Group, LLC, is identical to the domain name <dmenterprise.net>.
The Complainants have common law trademark rights and interests in the domain name <dmenterprise.net> because they currently use the disputed domain name for their website.
Respondent has no rights or legitimate interests in the domain name. Respondent, a former consultant to Complainant D&M Enterprise Group, registered the domain name at the request of Complainant but identified himself rather than Complainant Steven Gerhardt as the domain name holder. Respondent no longer consults for Complainants and Complainants are not aware of his current whereabouts.
Although Complainant D&M Enterprise Group currently uses the disputed domain name for its website, the Complaint states: “Steven Gerhardt, as owner and sole member of the Complainant company, wishes to have the domain name registered in his own name to protect the domain name of the Complainant company in the future in which the Complainant has rights, and to protect against any use of an identical or confusing similarity to the Complainant’s tradename in the future.”
The domain name was registered in bad faith because rather than identify the Complainant Steven Gerhardt as the holder of the domain name, the Respondent has identified himself, either intentionally or through inadvertence.
The use of a contact address that was similar to the address used by Complainants “leads one to conclude that the Respondent inadvertently used his own name as acting for the actual domain name holder and did so as an agent of the Complainant, not for himself individually.”
Complainants also contends that:
Although it is unknown as to whether he has yet done so, Complainant believes that the Respondent may still at some point in the future, sell, rent, or otherwise transfer the domain name registration(s) to the Complainant (as owner of the company’s tradename, trademark or service mark) or worse - to a competitor of the Complainant - for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. . . . Respondent may, now or in the future, intentionally attempt to attract for commercial gain, Internet users to the Respondent’s 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 or location.
The Respondent did not reply to the Complainants’
6. Discussion and Findings
A. Procedural Matters-Multiple Complainants
The Complaint identifies two Complainants: D&M Enterprise Group, LLC, and Steven Gerhardt, an individual, who is its owner and sole member. The Complaint variously requests that the domain name be transferred to both Complainants or to Complainant Steven Gerhardt.
Neither the Policy nor the Rules provide for multiple Complainants. However, in some cases, panels have determined that the identified complainant alone did not demonstrate the requisite ownership or control of the mark at issue. In other cases, panels have determined that a single complainant could properly act on behalf of its affiliates. There is no settled practice as to whether affiliates should, or must, join in a complaint. However, the circumstances presented here do not present any issue regarding ownership or control of the mark at issue and it would seem that D&M Enterprises Group is the proper Complainant; nonetheless, in light of Steven Gerhardt’s ownership of the corporate Complainant, Panel accepts the designation of both Complainants.
B. Burden of Proof
In order to prevail, Complainants must prove:
(i) The domain name is identical or confusingly similar to Complainants’ mark; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out four circumstances that may evidence a Respondent’s bad faith registration and use under Paragraph 4(a)(iii), see Policy, paragraph 4(b), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c).
1. Identical or Confusingly Similar
Complainants must establish that the disputed domain name is either identical or confusingly similar to one or more of their marks. Prior to its amendment, the Complaint did not identify any mark in which either Complainant had rights. Instead, the Complaint referred to the name and tradename of the corporate Complainant, which was formed in 2001. In response to the Notice of Complaint Deficiency, the Complaint was amended to assert:
The Complainants have common law trademark rights and interests in the domain name DMEnterprise.net. The Complainant D&M Enterprise Group has a website using the domain name, DMEnterprise.net.
In support of the assertion that Complainants have
used DMENTERPRISE.NET as a trademark, Complainants provided excerpts of pages
printed from the site. The evidence does not show trademark use, however. Instead,
“dmenterprise.net” is simply displayed as part of email addresses.
Complainants have provided no other evidence showing how their claimed DMENTERPRISE.NET
trademark is used. Nor have Complainants provided any other evidence, such as
length and amount of sales, the nature and extent of its advertising, consumer
surveys, and media recognition, that would establish trademark rights. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7.
Therefore, the Complainants have not established that the disputed domain name
is identical to a mark in which Complainants have rights.
2. Rights or Legitimate Interests
As noted above, a complainant must establish each of the three elements outlined in paragraph 4(a) of the Policy in order to prevail. In light of the conclusion that Complainant has not established the first element, it is not necessary to address the issue of whether Respondent has any right or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
Although it is not necessary to address the issue of registration and use in bad faith, the Panel includes the following discussion in the interests of completeness. In order to prevail, Complainants must also establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, Paragraph 4(b)(i)-(iv):
(i) registering the domain name primarily to sell it to complainant for more than documented out-of-pocket costs;
(ii) registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct;
(iii) registering the domain name primarily to disrupt the business of a competitor; or
(iv) using the domain name 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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement.
Here, Complainants have provided no evidence that Respondent’s conduct falls within any of these circumstances. Indeed, Complainants are currently using the domain name for their own website, making it difficult to see how they could establish that the domain name is being used in bad faith.
The Panel is not unsympathetic to Complainants’
position. They are understandably concerned that the registration for the domain
name to which their website devolves is not in their control. Those facts, however,
do not provide a basis for a complaint under the Policy. The Policy was designed
to prevent cybersquatting, not to create a forum for resolving all disputes
or errors involving the registration of domain names.
For the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Dated: March 23, 2007