DECISION

Smith & Fong Company Inc. v. Plyboo America Inc.

Claim Number:  FA0305000156804

PARTIES

Complainant is Smith & Fong Company Inc., South San Francisco, CA, (“Complainant”) represented by Omid A. Mantashi. Respondent is Plyboo America Inc., Kirkville, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <plyboo.org>, <plyboo.net> and <plyboo-america.com>, registered with Network Solutions, Inc.

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 7, 2003; the Forum received a hard copy of the Complaint on May 9, 2003.

On May 12, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <plyboo.org>, <plyboo.net> and <plyboo-america.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 May 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 2, 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@plyboo.org, postmaster@plyboo.net and postmaster@plyboo-america.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 June 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names are identical and/or confusingly similar to Complainant’s PLYBOO mark.

2. Respondent does not have any rights or legitimate interests in the <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names.

3. Respondent registered and used the <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names in bad faith.

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

FINDINGS

Complainant, Smith & Fong Company Inc., owns the PLYBOO mark, registered on the Princpal Register of the U.S. Patent and Trademark Office (U.S. Reg. No. 2,346,257). Complainant claimed first use of its mark in March 1994, filed its registration application on March 10, 1995, and obtained its registered mark on May 2, 2000.

Complainant uses the PLYBOO mark to distinguish its bamboo laminate flooring and plywood made of bamboo. Complainant has spent considerable sums of money promoting and marketing its mark. Complainant also registered the <plyboo.com> domain name on November 22, 1996, to facilitate sales and information dissemination related to its product.

Respondent, Plyboo America Inc., registered the <plyboo.org> and <plyboo.net> domain names on November 30, 1999 and the <plyboo-america.com> domain name on August 11, 1997. Respondent is not licensed or authorized to use Complainant’s PLYBOO mark for any purpose. Respondent uses each of the disputed domain names to offer goods that compete with Complainant’s goods, posting an identical webpage at each domain name. Respondent’s commercial website displays the PLYBOO mark, including the “®” device, while nowhere on Respondent’s website is there any disclaimer language distinguishing Respondent from Complainant.

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 distinctive PLYBOO mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through continuous use of the mark in commerce. See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark.  “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).

Respondent’s <plyboo.org> and <plyboo.net> domain names are identical to Complainant’s PLYBOO mark. The addition of the top-level domain name “.org” or “.net” does not play a part in distinguishing a domain name from a trademark holder’s mark under Policy ¶ 4(a)(i). 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the 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").

Respondent’s <plyboo-america.com> domain name is confusingly similar to Complainant’s PLYBOO mark. Respondent incorporates the entirety of Complainant’s PLYBOO mark with the addition of the geographic term “america.” The dominant feature of this domain name remains Complainant’s mark, and the additional word “america” does nothing to dispell any confusing similarity, especially considering that both Complainant and Respondent operate in the United States. See JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).

Accordingly, the Panel finds that the <plyboo.org> and <plyboo.net> domain names are identical to Complainant’s PLYBOO mark, and that the <plyboo-america.com> domain name is confusingly similar to Complainant’s PLYBOO mark, under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Considering Respondent’s infringing use of Complainant’s mark in this dispute, the Panel views Respondent’s failure to respond to the Complaint as an admission that it has no rights or legitimate interests in the <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names. See 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 interest in the domain names); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Respondent uses the <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names to sell products that directly compete with Complainant’s goods. Respondent’s business operates under Complainant’s registered and distinctive PLYBOO mark, capitalizing on the goodwill Complainant has built up around its mark for commercial gain, and Respondent has not come forward with any evidence to explain its infringing behavior. This infringing use of Complainant’s mark, in both the disputed domain names themselves and as part of the content on Respondent’s websites, is prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain names. See American Int’l. Group, Inc. v. Walter Busby d/b/a AIG Mergers and Acquisitions, FA 156251 (Nat. Arb. Forum May 30, 2003) (holding that Respondent’s use of Complainant’s registered mark in its domain name and on its website is evidence that Respondent had no rights or legitimate interests in the domain name); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding that Respondent’s use of Complainant’s registered mark as an attempt to pass itself off as Complainant, without authorization by Complainant, is evidence that Respondent had no rights or legitimate interests in the disputed domain name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s appropriation of Complainant’s distinctive and registered PLYBOO mark, and its use of that mark on its website, demonstrate that Respondent was aware of Complainant’s rights in the mark before Respondent chose to register the infringing domain names. Actual knowledge of a trademark holder’s rights in a mark, and use of that knowledge to register infringing domain names, is evidence that the domain names were registered in bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

Respondent’s competing use of the <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names, specifically in its infringing use of Complainant’s registered PLYBOO mark, gives Internet users the impression that Complainant is affiliated with Respondent’s websites. Such use is evidence that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods); 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).

Evidence of Respondent’s bad faith can also be inferred from its decision not to include any disclaimer on its website, despite the fact that Respondent is aware of Complainant’s trademark rights in the PLYBOO mark. Despite including the “®” device alongside its unauthorized use of Complainant’s PLYBOO mark on its website, Respondent makes no effort to distinguish itself from Complainant. See Mikimoto Co. v. Asanti Fine Jewellers Ltd., AF-0126 (eResolution Apr. 8, 2000) ("[A]lthough this is the type of domain name that naturally leads to consumer confusion, I find it particularly telling that Respondent did not offer to take reasonable measures, for example disclaimers of association with Complainant or warnings in meta tags, to help consumer confusion"); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (holding that Respondent’s failure to post a disclaimer on a website that was designed to foster a likelihood of confusion with Complainant’s mark was evidence that the domain name was being used in bad faith).

The Panel thus finds that Respondent registered and used the <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is 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 <plyboo.org>, <plyboo.net> and <plyboo-america.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  June 10, 2003

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