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Generic Top Level Domain Name (gTLD) Decisions |
Accu-Sort Systems, Inc. v. Accu-Sort.inc
Claim
Number: FA0306000164568
Complainant is Accu-Sort Systems, Inc., Hatfield, PA
(“Complainant”) represented by John
O'Malley, of Volpe & Koenig, P.C.
Respondent is Accu-Sort.inc,
Lackawanna, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <accu-sort.com>, registered with Tucows,
Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 19, 2003; the Forum
received a hard copy of the
Complaint on June 24, 2003.
On
June 20, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <accu-sort.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
June 26, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
July 16, 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@accu-sort.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 24, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <accu-sort.com>
domain name is identical to Complainant’s ACCU-SORT mark.
2. Respondent does not have any rights or
legitimate interests in the <accu-sort.com> domain name.
3. Respondent registered and used the <accu-sort.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Accu-Sort Systems, Inc., holds the registration for the ACCU-SORT mark (U.S.
Reg. No. 1,029,942, registered on the Principal
Register of the U.S Patent and
Trademark Office on January 13, 1976). Complainant registered this mark for use
with “electo-optical
bar code scanners, and systems utilizing such scanners for
conveyor control, computerized inventory control, automatic order assembling,
and the like.” Since its registration of the ACCU-SORT mark, Complainant has
continuously used the mark in commerce to denote its
fixed-position laser and
CCD scanners, including through the registration and use of the
<accusort.com> domain name. Currently,
over eighty percent of all parcels
shipped in the U.S. pass through Complainant’s products.
Respondent,
Accu-Sort.inc, registered the <accu-sort.com> domain name on March
19, 2003, and is not licensed or authorized to use Complainant’s ACCU-SORT mark
for any purpose. Respondent
initially used the disputed domain name to host a
website purporting to offer “precision sorting and supplier representation”
under
the ACCU-SORT mark (which was prominently displayed at the top of the
website). Subsequent to the receipt of a cease-and-desist letter
by
Complainant’s counsel, Respondent removed all content from the disputed domain
name, leaving a blank website.
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.
Complainant has
established rights in the ACCU-SORT mark through registration of the mark on
the Principal Register of the U.S. Patent
and Trademark Office, as well as
through widespread and continuous use of the mark in commerce since as early as
1976.
Respondent’s <accu-sort.com>
domain name is identical to
Complainant’s ACCU-SORT mark. Respondent’s forced addition of the top level
domain “.com” does nothing
to distinguish the domain name from Complainant’s
mark for the purposes of Policy ¶ 4(a)(i). Interestingly, Respondent’s domain
name
is closer in appearance to Complainant’s ACCU-SORT mark than Complainant’s
own domain name. 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb.
11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as
a rule of thumb, that the domain name
of a particular company will be the
company name [or trademark] followed by ‘.com.’”).
Accordingly, the
Panel finds that the <accu-sort.com> domain name is identical to Complainant’s ACCU-SORT mark under Policy ¶
4(a)(i).
Respondent initially
used the <accu-sort.com> domain
name to host a website that claimed to provide services identical to
Complainant’s. Both the content of this website and the
disputed domain name
itself utilized Complainant’s ACCU-SORT mark for this purpose. Such unauthorized
use of Complainant’s mark at
the disputed domain name does not evidence a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it cannot
be considered a legitimate noncommercial or fair use of the domain name
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 Avery Dennison Corp. v. Ray Steele d/b/a
Mercian Labels Ltd., FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that
Respondent had no rights or legitimate interests in the disputed domain name
where it used Complainant’s mark, without authorization, to attract Internet
users to its business, which competed with Complainant).
Furthermore,
Respondent’s subsequent use (or lack thereof) of the disputed domain name
stands as further evidence that it lacks rights
or legitimate interests in the
disputed domain name. After receiving Complainant’s cease-and-desist letter,
Respondent removed all
content from its website, and has not posted any new
content since that time. In light of Respondent’s previous, unauthorized use
of
Complainant’s mark and Respondent’s implicit admission via its failure to
respond to the Complaint that it lacks rights or legitimate
interests in the
disputed domain name, the Panel finds that Respondent’s passive holding of its
domain name registration also fails
to evidence rights or legitimate interests
in the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Boeing Co. v. Bressi, D2000-1164
(WIPO Oct. 23, 2000) (finding no rights or legitimate interests where
Respondent has advanced no basis on which the Panel
could conclude that it has
a right or legitimate interest in the domain names, and no use of the domain
names has been established);
see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (finding that “merely registering the domain name is not
sufficient to establish rights or legitimate
interests for purposes of
paragraph 4(a)(ii) of the Policy”).
Respondent’s
self-serving method of naming itself as “Accu-Sort.inc” is insufficient to
support a finding that Respondent was “commonly
known by” the <accu-sort.com>
domain name prior to its registration of the disputed domain name. Barring
any affirmative evidence to the contrary, the Panel finds
that Policy ¶
4(c)(ii) does not apply to Respondent. See Yoga Works, Inc. v. Jenna Arpita
d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to
its registration of the disputed domain
name”); 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 Respondent does not have rights or legitimate interests in the
<accu-sort.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered and used the <accu-sort.com> domain name in bad faith. By appropriating Complainant’s
ACCU-SORT mark for use on its website and incorporating the mark in its domain
name,
and subsequently attempting to enter into a line of business that would
compete with Complainant, Respondent created a likelihood
of confusion in the
minds of Internet users as to the source or sponsorship of its domain name. The
evidence indicates that Respondent
intended to commercially benefit from this
scheme. The Panel therefore finds that Respondent’s activities evidence bad
faith use
and registration of the disputed domain name 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).
Further evidence of Respondent’s bad faith can be inferred from
Respondent’s passive holding of the disputed domain name. To date,
Respondent’s
only actual use of its domain name was an infringing one. Despite the
relatively brief span of time that has elapsed
since Respondent ceased using
its domain name, the Panel notes there is sufficient indication that Respondent
had actual knowledge
of Complainant’s rights in the ACCU-SORT mark when it
registered the disputed domain name. Considering that Respondent attempted
to
operate a business that would have competed with Complainant in Complainant’s
field (where Complainant is the established leader),
all under the guise of
Complainant’s registered mark, the Panel finds that Respondent’s current
failure to use its domain name registration
does not remedy its previous bad
faith use of the disputed domain name. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29,
2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not
used the domain
name because “[i]t makes no sense whatever to wait until it
actually ‘uses’ the name, when inevitably, when there is such use, it
will create
the confusion described in the Policy”); see also Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001)
(holding that, despite Respondent’s decision to passively hold the disputed
domain name, “[r]espondent
has made its intention clear and the continuing
threat hanging over the Complainant’s head constitutes bad faith use”).
The Panel thus
finds that Respondent registered and used the <accu-sort.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <accu-sort.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 7, 2003
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