Register.com, Inc v. Convergence
Companies
Claim
Number: FA0503000433857
Complainant is Register.com, Inc (“Complainant”),
represented by Brett E. Lewis, 575 Eighth Avenue, 8th Floor, New
York, NY 10018. Respondent is Convergence Companies (“Respondent”),
5213 Golden Eagle Parkway, Brighton, CO 80601-8741.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <registerdotcomdomains.com>, registered
with Wild West Domains, Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 4, 2005.
On
March 1, 2005, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <registerdotcomdomains.com>
is registered with Wild West Domains, Inc. and that Respondent is the current
registrant of the name(s). Wild West Domains, Inc. has verified that Respondent
is bound by the Wild West Domains, Inc. 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
March 7, 2005, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of March 28,
2005 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 postmaster@registerdotcomdomains.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <registerdotcomdomains.com>
domain name is confusingly similar to Complainant’s REGISTER and REGISTER.COM
marks.
2. Respondent does not have any rights or
legitimate interests in the <registerdotcomdomains.com> domain
name.
3. Respondent registered and used the <registerdotcomdomains.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Register.com, Inc., is the owner of the United States Trademarks for REGISTER
and REGISTER.COM (Reg. Nos. 2,664,968 and 2,664,967 issued December 24,
2002). Complainant first used the
REGISTER and REGISTER.COM marks in commerce in 1994 and has used them
continuously and extensively in connection with the provision of domain name
registration services, online search engine services, website hosting and
development services, electronic mail services and other related services ever
since. Complainant is a publicly-traded
company that was the second accredited company to compete in the domain name
registration field and has consistently been one of the leading companies in
its industry.
Respondent
registered the <registerdotcomdomains.com> domain name on January
24, 2004. Respondent is using the
disputed domain name to redirect Internet users to Respondent’s website where
Respondent offers competing domain name registration services.
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.
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.
Complainant has
established that it has rights in the REGISTER and REGISTER.COM marks through
registration with the United States Patent and Trademark Office. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Ma. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The <registerdotcomdomains.com>
domain name registered by Respondent is confusingly similar to Complainant’s
REGISTER and REGISTER.COM marks because the domain name consists of nothing
more than a literal spelling-out of the REGISTER.COM mark, followed by the
addition of the generic and descriptive term “domains.” The mere addition of a generic or
descriptive word to a registered mark does
not negate the confusing similarity of Respondent’s domain name pursuant
to Policy ¶ 4(a)(i). See L.L. Bean,
Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding
that combining the generic word “shop: with Complainant’s registered mark
“llbean” does not circumvent Complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy); see also Marriott Int’l,
Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding
that Respondent’s domain name <marriott-hotel.com> is confusingly similar
to Complainant’s MARRIOTT mark); see also Brambles Indus. Ltd. v. Geelong
Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain
name <bramblesequipment.com> is confusingly similar because the
combination of the two words “brambles” and “equipment” in the domain name
implies that there is an association with Complainant’s business).
Moreover, the
addition of the top-level domain “.com” does not sufficiently distinguish the
disputed domain name from Complainant’s REGISTER and REGISTER.COM marks. See Pomellato S.p.A. v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Victoria’s Secret v. Hardin,
FA 96694 (Nat. Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY BY
VICTORIA mark); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (“[T]he
addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal
significance since use of a gTLD is required of domain name registrants”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <registerdotcomdomains.com>
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, it is assumed that Respondent lack rights and
legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that
under certain circumstances the mere assertion by Complainant that Respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to Respondent to demonstrate that such rights or legitimate interests do
exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd.,
D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond
can be construed as an admission that they have no legitimate interests in the
domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc.
v. webnet-markteing, 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 Desotec N.V. v. Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that the Complainant’s allegations
are true unless clearly contradicted by the evidence).
Respondent is
using the disputed domain name to redirect Internet users to Respondent’s
website at which Respondent offers domain name registration services similar to
those offered by Complainant.
Respondent’s use of domain names confusingly similar to Complainant’s
REGISTER and REGISTER.COM marks to redirect Internet users interested in
Complainant’s services to Respondent’s commercial website that offers identical
domain name registration services is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of a web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business.”); see also Am. Online Inc. v. Shenzhen JZT Computer Software
Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation
of a website offering essentially the same services as Complainant and
displaying Complainant’s mark was insufficient for a finding of a bona fide
offering of goods or services).
Furthermore,
Respondent lacks rights and legitimate interests in the <registerdotcomdomains.com>
domain name because Respondent has
not presented any evidence, and there is no proof in the record suggesting that
Respondent is commonly known by the disputed domain name. Additionally, nothing in the WHOIS domain
name registration information suggests that Respondent is commonly known by the
domain name. Therefore, Respondent has
not established rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no right or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is incorporating
Complainant’s marks in its domain name to lead Internet users to a website that
offers identical domain name registration services. The Panel finds that Respondent is intentionally creating a
likelihood of confusion with Complainant’s mark to attract Internet users to
Respondent’s website for Respondent’s commercial gain, pursuant to Policy ¶ 4(b)(iv).
See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30,
2000) (finding bad faith where Respondent’s use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); see also Luck’s Music
Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000)
(finding that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Moreover,
Respondent registered the confusingly similar domain name for the purpose of
disrupting Complainant’s business by redirecting Internet traffic intended for
Complainant to Respondent’s competing website, which offers identical domain
name registration-related services.
Registration of a domain name confusingly similar to a competitor’s mark
for the purpose of disrupting the business of a competitor is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area); see
also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18,
2000) (finding Respondent acted in bad faith by attracting Internet users to a
website that competes with Complainant’s business).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <registerdotcomdomains.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 20, 2005
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