DECISION

Toastmasters International v. Jeremy Vaught d/b/a VotCom Development

Claim Number:  FA0311000209571

PARTIES

Complainant is Toastmasters International (“Complainant”), represented by Timothy S. Cole, of Ladas & Parry 224 South Michigan Avenue, Floor 12, Chicago, IL 60604, USA.  Respondent is Jeremy Vaught d/b/a VotCom Development (“Respondent”) 6717 West Orchid Lane, Peoria, AZ 85345.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue are <toastmastersonline.org> and <toastmastersonline.net>, registered with NameSecure.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 7, 2003; the Forum received a hard copy of the Complaint on November 11, 2003.

On November 13, 2003, NameSecure.com confirmed by e-mail to the Forum that the domain names <toastmastersonline.org> and <toastmastersonline.net> are registered with NameSecure.com and that Respondent is the current registrant of the names. NameSecure.com has verified that Respondent is bound by the NameSecure.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 November 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 3, 2003 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@toastmastersonline.org and postmaster@toastmastersonline.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 6, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <toastmastersonline.org> and <toastmastersonline.net> domain names are confusingly similar to Complainant’s TOASTMASTERS mark.

2. Respondent does not have any rights or legitimate interests in the <toastmastersonline.org> and <toastmastersonline.net> domain names.

3. Respondent registered and used the <toastmastersonline.org> and <toastmastersonline.net> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Toastmasters International, was founded in 1924 by Dr. Ralph C. Smedley.  It registered marks incorporating the TOASTMASTERS word as early as 1949 (see e.g. Reg. Nos. 1,505,788, 555,132, 555,137, 386,813), with use dating back to 1924.  Complainant also holds the registration for <toastmasters.org>.

Respondent registered the <toastmastersonline.org> and <toastmastersonline.net> domain names on February 8, 2003 and May 15, 2003, respectively.  The domain names refer the Internet user to a page within the <toastmastersonline.org> website.  The content of the website indicates that it will be a “professionally developed site” providing services for TOASTMASTER clubs.  Respondant’s website also includes a statement of rights in the TOASTMASTER mark, stating that Complainant’s marks “are trademarks protected in the United States, Canada, and other countries where Toastmaster Clubs exist.  Unauthorized use is prohibited.”.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the TOASTMASTERS mark through registration in the United States as well as its continuous and extensive use of the mark since 1924.

Respondent’s <toastmastersonline.org> and <toastmastersonline.net> domain names are confusingly similar to Complainant’s mark because they incorporate the entirety of Complainant’s mark and merely add the generic term “online.”  The addition of the term “online” does not create a distinct name because “online” merely signifies that an entity is on the Internet.  As a result, <toastmastersonline.org> and <toastmastersonline.net> are confusingly similar to the mark.  See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to respond.  In the absence of a Response, the Panel is permitted to accept all reasonable allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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”).  Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent has used the disputed domain to offer services to Complainant’s membership and exhibit a statement of Complainant’s rights in the TOASTMASTER mark.  Using the Complainant’s mark to offer services to the Complainant’s membership while stating that Complainant has rights in the 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).  See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Given the WHOIS information, Respondent is not commonly known as TOASTMASTERS, <toastmastersonline.org>, or <toastmastersonline.net>.  Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights 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).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and used <toastmastersonline.org> and <toastmastersonline.net> to prepare to sell services and products in competition with Complainant.  It appropriated Complainant’s mark in the disputed domain name to create a likelihood of confusion for commercial gain.  This is bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

Exhibiting the Complainant’s trademark statement not only exacerbates the likelihood of confusion, it also demonstrates that the Respondent knew of Complainant’s rights, and attempted to usurp those.  Registration of a domain name that incorporates Complainant’s mark, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <toastmastersonline.org> and <toastmastersonline.net> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 22, 2003

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