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General Ecology, Inc. v. Metcalf and Dekker c/o Infinetivity, Inc. [2003] GENDND 359 (11 April 2003)


National Arbitration Forum

DECISION

General Ecology, Inc. v. Metcalf and Dekker c/o Infinetivity, Inc.

Claim Number:  FA0302000146569

PARTIES

Complainant is General Ecology, Inc., Exton, PA (“Complainant”) represented by Andrea C. Williams, of General Ecology, Inc.. Respondent is Metcalf and Dekker, Burnsville, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <seagull-4.com>, registered with Tucows, Inc.

PANEL

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 21, 2003; the Forum received a hard copy of the Complaint on February 24, 2003.

On February 21, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <seagull-4.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 February 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 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@seagull-4.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 Forum transmitted to the parties a Notification of Respondent Default.

On April 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <seagull-4.com> domain name is confusingly similar to Complainant’s SEAGULL and SEAGULL IV marks.

2. Respondent does not have any rights or legitimate interests in the       <seagull-4.com> domain name.

3. Respondent registered and used the <seagull-4.com> domain name in bad faith.

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

FINDINGS

Complainant has used the SEAGULL and SEAGULL IV marks since 1973 in relation to self-contained water purifiers.  Complainant sells its water purifiers in the United States, Japan, Australia, Korea, Canada and Great Britain.  Complainant’s product is the only water purifier that meets the Environmental Protection Agency’s Microbiological Purification Standards for all three classes of water-borne disease microorganisms without the use of chemicals, hold times, electricity and wastewater.

Complainant registered both marks with the United States Patent and Trademark Office.  Complainant’s SEAGULL mark is Registration Number 2,552,790, registered on March 26, 2002, and the SEAGULL IV mark is Registration Number 1,052,344, registered on November 6, 1976.

Respondent, Metcalf and Dekker, registered the disputed domain name <seagull-4.com> on April 22, 1998.  Respondent was a distributor of Complainant’s products until 1997 when Complainant terminated Respondent’s status as an authorized distributor of Complainant’s products.  Respondent is a retail seller of water filtration equipment and uses the disputed domain name as its homepage for on-line sales of its water filtration unit “The Purest One,” located at <thepurestone.com>. Respondent’s product is not manufactured or licensed by Complainant, nor has Complainant granted Respondent permission to use its SEAGULL or SEAGULL IV marks for any purpose.

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 that it has rights in the SEAGULL and SEAGULL IV marks through registration with the U. S. Patent and Trademark Office and use in commerce since 1973 to identify its water filtration units.

Respondent’s <seagull-4.com> domain name is confusingly similar to Complainant’s SEAGULL and SEAGULL IV marks because it incorporates Complainant’s entire SEAGULL mark and merely changes the Roman numeral “IV” of Complainant’s mark to the numeral “4.”  The replacement of “IV” with “4” does not add any distinct characteristics because SEAGULL is still the prominent element of the domain name and Internet users seeking Complainant will associate both “IV” and “4” with Complainant.  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistakes by users when entering the url address”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <seagull-4.com> domain name to divert Internet users to its <thepurestone.com> website where it sells its own water filter “The Pure One.”  Respondent is in the same market as Complainant and thus its product competes with Complainant’s SEAGULL and SEAGULL IV water purifiers.  The use of a confusingly similar domain name to sell products that compete with Complainant’s products is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

Respondent is known to this Panel as Metcalf and Dekker.  There is no evidence on record that Respondent is commonly known as SEAGULL, SEAGULL 4, or <seagull-4.com>.  There is, however, evidence on record that Respondent was terminated as a distributor of Complainant’s SEAGULL products.  Thus, the Panel infers that Respondent does not have any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent was on notice of Complainant’s rights in the SEAGULL and SEAGULL IV marks when it registered the <seagull-4.com> domain name because Respondent was once a distributor of Complainant’s products.  Registration of an infringing domain name with knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Labrada Bodybuilding Nutrition, Inc. v. Garrett, FA 94293 (Nat. Arb. Forum Apr. 27, 2000) (finding bad faith where Respondent registered the domain names six months after Respondent’s distributor agreement with Complainant was terminated); see also Great Am. Knitting Mills Res. Corp. v. Sock Co., FA 95841 (Nat. Arb. Forum Dec. 7, 2000) (Respondent’s acquisition of the domain names after its authorization as a retailer was terminated raises a presumption of bad faith); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Respondent is using the <seagull-4.com> domain name to divert Internet users to its own competing website.  The disputed domain name resolves at <thepurestone.com> and offers Respondent’s water purification products for sale.  The use of an infringing domain name to sell competing products is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See 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); see also 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).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <seagull-4.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  April 11, 2003


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