DECISION

Global Investment Research Corp. v. 000-RD31280 aka DomainsRuS.com

Claim Number:  FA0308000183738

PARTIES

Complainant is Global Investment Research Corp., Belmont, CA, USA (“Complainant”) represented by Jill M. Pietrini, of Manatt, Phelps & Phillips, LLP.  Respondent is 000-RD31280 a/k/a DomainsRuS.com, Kitchener, Ontario, Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <optionetiques.com>, registered with R&K Globalbusinessservices, Inc. d/b/a 000Domains.Com (hereafter “000Domains.com”).

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

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

On August 11, 2003, 000Domains.Com confirmed by e-mail to the Forum that the domain name <optionetiques.com> is registered with 000Domains.Com and that Respondent is the current registrant of the name. 000Domains.Com has verified that Respondent is bound by the 000Domains.Com 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 August 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 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@optionetiques.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 September 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <optionetiques.com> domain name is confusingly similar to Complainant’s OPTIONETICS mark.

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

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

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

FINDINGS

Complainant, Global Investment Research Corp., is the owner of the OPTIONETICS mark, used in connection with educational services in the fields of financial markets and real estate. Complainant has used the OPTIONETICS mark since 1993 for this purpose, obtaining a federal registration of the mark on the Principal Register of the U.S. Patent and Trademark Office on March 21, 2000 as Reg. No. 2,330,812. Notably, Complainant uses the OPTIONETICS mark in connection with user guides, reference manuals and other materials that are distributed only to Complainant’s paying customers.

Respondent, 000-RD31280 a/k/a DomainsRuS.com, registered the <optionetiques.com> domain name on April 24, 2002, and is not licensed or authorized to use Complainant’s OPTIONETICS mark for any purpose. Respondent holds itself out as “Optionetiques.com” at the disputed domain name, and uses the domain name to sell unauthorized copies of Complainant’s proprietary and copyrighted materials as well as counterfeit copies of those materials. Respondent’s website includes a disclaimer disavowing any affiliation with Complainant while highlighting Respondent’s efforts to undercut Complainant’s prices for its proprietary materials.

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 sufficient rights in the OPTIONETICS mark though registration of the mark on the Principal Register of the U.S. Patent and Trademark Office. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <optionetiques.com> domain name is confusingly similar to Complainant’s OPTIONETICS mark. Respondent has merely registered the phonetic equivilant of Complainant’s OPTIONETICS mark within the disptued domain name, which does not alleviate any confusing similarity between that mark and the domain name. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).

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

Rights or Legitimate Interests

Respondent is using the disputed domain name to offer Complainant’s proprietary and copyrighted products, without the required authorization by Complainant. Diverting Internet users seeking Complainant’s website and products and then offering to sell those users illegal versions of Complainant’s products at a reduced rate is not a “bona fide” offering of goods and services as contemplated by Policy ¶ 4(c)(i), and cannot be considered a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). Thus, neither of these “safe harbor” provisions of the Policy apply to Respondent. See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority is not bona fide use); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (finding Respondent’s use of the confusingly similar domain name <hpmilenium.com> to sell counterfeit versions of Complainant’s HP products was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).

Other than it’s assumption of a name that is phonetically identical to Complainant’s OPTIONETICS mark at the disputed domain name, there is no evidence before the Panel to support a finding that Respondent was “commonly known by” the disputed domain name prior to this dispute. For this reason, the Panel finds that Respondent may not avail itself of the provisions of Policy ¶ 4(c)(ii). See Web House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by” the <edollarshop.com> domain name, despite naming itself “eDollarShop,” because Respondent’s website was almost identical to Complainant’s “first in use” website and infringed on Complainant’s marks); see also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information).

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

Registration and Use in Bad Faith

Given the content offered for sale at the disputed domain name, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the OPTIONETICS mark when it registered the disputed domain name. It has been consistently held that registration of a domain name with actual knowledge that the domain name infringes on another’s trademark evidences bad faith registration. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

Along with its knowing registration of an infringing domain name, Respondent has gone so far as to market Complainant’s proprietary products at the disputed domain name, at costs drastically below those charged by Complainant. Using the goodwill Complainant has built up around its mark to attract Internet consumers to a domain name that then undercuts Complainant’s business is evidence that the domain name was used in bad faith. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that 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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

The Panel thus finds that Respondent registered and used the <optionetiques.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

Sandra Franklin, Panelist

Dated:  September 30, 2003

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