DECISION

Imation Corp. v. James Huxley a/k/a OM Enterprises

Claim Number:  FA0306000162176

PARTIES

Complainant is Imation Corp., Oakdale, MN (“Complainant”) represented by Elizabeth C. Buckingham, of Dorsey & Whitney LLP.  Respondent is James Huxley a/k/a OM Enterprises, Sydney, Australia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <an-imation.com>, registered with Enom.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 11, 2003; the Forum received a hard copy of the Complaint on June 13, 2003.

On June 17, 2003, Enom confirmed by e-mail to the Forum that the domain name <an-imation.com> is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 June 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 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@an-imation.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 July 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <an-imation.com> domain name is confusingly similar to Complainant’s IMATION mark.

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

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

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

FINDINGS

Complainant, Imation Corp., has operated under the IMATION mark since as early as 1996 in connection with computer software, data storage products, computer consultation services and related goods and services. Complainant earned nearly $1.1 billion in revenues in 2002 as a provider of these services. Complainant holds over 250 trademark registrations for the IMATION mark in over 60 jurisdictions worldwide, including the United States (U.S. Reg. No. 2,282,195, registered on September 28, 1999) and Australia (Reg. No. 705,902, with a lodgement date of April 4, 1996).

Respondent, James Huxley a/k/a OM Enterprises, registered the <an-imation.com> domain name on November 23, 2002, and is not licensed or authorized to use Complainant’s IMATION mark for any purpose. Respondent has used the disputed domain name to redirect Internet users to two adult-oriented websites.  The websites associated with these domain names display nude individuals at initial “free” screens that subsequently lead to a series of “pay-per-view” websites with additional adult content.

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 IMATION mark through registration of that mark with the appropriate governmental agencies in over 60 jurisdictions worldwide, as well as through widespread use and promotion of the mark in commerce.

Respondent’s <an-imation.com> domain name is confusingly similar to Complainant’s IMATION mark. Respondent takes Complainant’s IMATION mark and prefixes it with the letters “an” and a hypen. While this could be construed as a clever way of spelling the generic word “animation,” the hyphen clearly emphasizes Complainant’s famous and distincitve IMATION mark. As the dominant feature of the domain name is Complainant’s mark, the domain name is confusingly similar to that mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).

Accordingly, the Panel finds that the <an-imation.com> domain name is confusingly similar to Complainant’s IMATION mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain name to redirect Internet users to websites displaying graphic, adult content. As Respondent uses Complainant’s distinctive IMATION mark, without authorization, for these purposes, it cannot be making a “bona fide” offering of goods or services pursuant to Policy ¶ 4(c)(i), and is not making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Respondent may avail itself of neither of these provisions of the Policy. See McClatchy Mgmt. Serv., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (stating that “[m]isdirecting Internet traffic by utilizing Complainant’s registered mark [in order to direct Internet users to an adult-oriented website] does not equate to a bona fide offering of goods or services . . . nor is it an example of legitimate noncommercial or fair use of a domain name . . . Respondent was merely attempting to capitalize on a close similarity between his domain name and the registered mark of Complainant, presumably to gain revenue from each Internet user redirected to the pornographic website).

Given the distinctive nature of Complainant’s IMATION mark and the fact that there is no evidence before the Panel permitting the inferrence that Respondent is “commonly known by” the disputed domain name, the Panel finds that Policy ¶ 4(c)(ii) is inapplicable to Respondent. See 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"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 also considers Respondent’s failure to respond to the Complaint as an admission that he lacks rights or legitimate interests in the disputed domain name. 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <an-imation.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <an-imation.com> domain name in bad faith. In appropriating Complainant’s distinctive IMATION mark, the Panel inferrs that Respondent had actual knowledge of Complainant’s rights in its mark. By subsequently tarnishing that mark with adult-oriented material, Respondent’s activities evidence bad faith. See Microsoft Corp. v. Paul Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (stating that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”).

The Panel thus finds that Respondent registered and used the <an-imation.com> domain name 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 <an-imation.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 28, 2003

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