DECISION

DanceSafe, Inc. v. AJ van Rooij

Claim Number: FA0212000135600

PARTIES

Complainant is DanceSafe, Inc., New York, NY, USA (“Complainant”) represented by John Greco, of Greco Law Firm.  Respondent is AJ van Rooij, Amsterdam, THE NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <dancesafe.com>, registered with Gandi.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 2, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.

On December 4, 2002, Gandi confirmed by e-mail to the Forum that the domain name <dancesafe.com> is registered with Gandi and that Respondent is the current registrant of the name.  Gandi has verified that Respondent is bound by the Gandi 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 December 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 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@dancesafe.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 January 15, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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

1. The <dancesafe.com> domain name is identical to Complainant’s  

DANCESAFE common law mark.

2. Respondent does not have any rights or legitimate interests in the

      <dancesafe.com> domain name.

3. Respondent registered and used the <dancesafe.com> domain name in bad 

      faith. 

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

FINDINGS

Complainant holds common law rights in the DANCESAFE mark because of its use of the mark to denote its drug education and harm reduction services.  Complainant uses the DANCESAFE mark in conjunction with its mission of providing informed and unbiased health care and safety information.  Furthermore, Complainant’s DANCESAFE services have been featured in a wide variety of international media, including CNN and BBC. 

Complainant operates an informational website at <dancesafe.org>.  The domain name <dancesafe.com> formally resolved to the same website but in 1999 Complainant inexplicably lost registration rights in the domain name. 

In a further effort to protect its rights in the DANCESAFE mark, Complainant has filed a trademark application with the United States Patent and Trademark Office.  The application denotes February 24, 2000 as the date of first use of the DANCESAFE mark.  February 24, 2000 is also the date that Complainant incorporated DanceSafe, Inc. with the California Secretary of State.

Respondent registered the domain name on November 13, 2000.  Respondent has since used the domain name to direct Internet traffic to its <eztest.com> website.  At this website, Respondent offers for sale an Ecstasy drug testing kit, which is designed to make sure an individual is consuming a safe Ecstasy pill. 

Complainant has attempted to settle the dispute with Respondent regarding Respondent’s use of the <dancesafe.com> domain name, but no settlement agreements have been entered into.  Respondent, however, has offered to sell the registration rights in the <dancesafe.com> domain name back to Complainant.  Moreover, Respondent has admitted to Complainant that all trademark and service mark rights in the DANCESAFE mark belong to 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 the 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 the 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 its use in commerce of the DANCESAFE mark since at least as early as February 24, 2000, as this is the date given on Complainant’s pending trademark application.  Moreover, Complainant used the <dancesafe.org> and <dancesafe.com> domain names at least as early as 1999 in an effort to provide information about drug-related harm reduction.  Therefore, Complainant has sufficiently established rights in the DANCESAFE mark in support of its claim against the <dancesafe.com> domain name.  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate “exclusive rights,” but only that Complainant has a bona fide basis for making the Complaint in the first place).

Furthermore, in this dispute, particularly because Complainant formally held registration rights in the <dancesafe.com> domain name, the Panel finds that Complainant’s pending trademark application with the United States Patent and Trademark Office bolsters Complainant’s rights in the DANCESAFE mark.  This determination follows previous decisions, which have held pending trademark applications establish rights in a mark under Policy ¶ 4(a)(i) sufficient to file a claim.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Am. Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that Complainant held the domain name prior to Respondent’s registration, as well as held a pending trademark application in the mark, evidences rights in the domain name and the mark therein contained).

Respondent’s <dancesafe.com> domain name incorporates into Complainant’s DANCESAFE mark the generic top-level domain (“gTLD”) “.com.”  The addition of a gTLD to the DANCESAFE mark is an inconsequential difference under a Policy ¶ 4(a)(i) identical analysis because gTLDs are a required feature in domain names.  Therefore, Respondent’s <dancesafe.com> domain name is identical to Complainant’s DANCESAFE mark.  See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); 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").

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

Rights or Legitimate Interests

Complainant submitted a prima facie case in which it alleged that Respondent offered to sell the registration rights in the domain name and that Respondent conceded Complainant was the rightful owner of trademark rights in DANCESAFE.  Since Respondent has failed to come forward to challenge these allegations, the Panel accepts them as true.  Moreover, due to the lack of a Response, the Panel will draw all reasonable inferences in favor of Complainant.  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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

In addition, the Panel presumes that Respondent has no rights or legitimate interests in the <dancesafe.com> domain name because Complainant’s allegation to that fact has gone uncontested.  Respondent has failed to fulfill its burden to articulate rights or legitimate interests in the subject 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, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent uses the <dancesafe.com> domain name to divert Internet traffic to its <ez-test.com> website.  This website is designed to sell a product that is warranted to test the purity of the Ecstasy drug.  Complainant is involved in the business of drug education and harm reduction and Respondent uses the domain name in conjunction with a website that promotes the informed use of Ecstasy.  Hence, Respondent uses Complainant’s DANCESAFE mark to target a similar market that Complainant reaches.  Therefore, Respondent does not use the <dancesafe.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Respondent has no affiliation with Complainant other than the misappropriation of Complainant’s DANCESAFE mark.  Respondent’s name is AJ van Rooij and is the operator of the <ez-test.com> website.  Respondent has submitted no evidence to demonstrate that it is commonly known by the <dancesafe.com> domain name.  Therefore, Respondent has no rights or legitimate interests in the <dancesafe.com> domain name under Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or uses the domain name in connection with a legitimate or fair use).

The Panel accepts as true Complainant’s uncontested allegation that Respondent offered to sell the <dancesafe.com> domain name registration.  An offer to sell domain name registration rights is not a legitimate fair use of the domain name.  Therefore, Respondent has no rights or legitimate interests in the <dancesafe.com> domain name under Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <dancesafe.com> domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel is guided by Policy paragraph 4(b) with a list of circumstances that evidence bad faith registration and use of a domain name.  However, the Panel is not limited to the circumstances prescribed in that paragraph and the Panel may review the totality of circumstances when deciding the bad faith issue.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Complainant initially used the <dancesafe.com> domain name for use in connection with its drug education and harm reduction services, particularly to link to its <dancesafe.org> website.  The domain name registration for <dancesafe.com> was erroneously invalidated in 1999 and Respondent registered the <dancesafe.com> domain name in November of 2000.  Respondent uses the <dancesafe.com> domain name to link Internet traffic to its <ez-test.com> website, which offers similar information specifically about the Ecstasy drug.  Respondent conceded that Complainant was the rightful owner of trademark rights in DANCESAFE.  Furthermore, Respondent offered to sell the subject domain name registration to Complainant.  Given the totality of circumstances it is apparent that Respondent registered the <dancesafe.com> domain name in bad faith with the intent to trade off of Complainant’s mark in a related industry.  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).

Respondent uses the <dancesafe.com> domain name to promote sales of its Ecstasy drug testing kit, which is offered for sale at the resulting <ez-test.com> website.  Respondent is therefore using Complainant’s mark to offer similar services as Complainant, to inform people about drugs and their uses.  Diverted Internet users, presumably searching for Complainant’s DANCESAFE services, are likely to become confused as to Complainant’s affiliation with <ez-test.com>.  Thus, Respondent’s use of the <dancesafe.com> domain name represents bad faith use under Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

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 the requested relief shall be hereby GRANTED.

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

John J. Upchurch, Panelist

Dated: January 20, 2003

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