DECISION

Sistercare, Inc. v. Custom Computers, Inc.

Claim Number:  FA0308000180627

PARTIES

Complainant is Sistercare, Inc., Columbia, SC (“Complainant”) represented by John C. McElwaine and Matthew D. Patterson, of Nelson Mullins Riley & Scarborough, LLP.  Respondent is Custom Computers, Inc., Columbia, SC (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sistercare.com>, registered with Go Daddy Software, 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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 6, 2003; the Forum received a hard copy of the Complaint on August 11, 2003.

On August 7, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <sistercare.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 3, 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@sistercare.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 17, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 <sistercare.com> domain name is identical to Complainant’s SISTERCARE mark.

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

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

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

FINDINGS

Complainant, Sistercare, Inc., is a South Carolina non-profit corporation that is devoted to helping abused women and their children, primarily in the area around Columbia, South Carolina.  Since 1981, Complainant has marketed and promoted its services under the SISTERCARE mark.  Complainant’s SISTERCARE mark is widely known throughout the communities in which it offers its services and draws its clientele.  

Complainant offers the only shelter for domestic violence victims in the whole Midlands area of South Carolina.  It serves people in the South Carolina counties of Richland, Lexington, Fairfield, Newberry and Kershaw.  In 2002, Complainant serviced 3,172 adults and 465 children.  In addition, Complainant gave 218 workshops and training and presentation sessions to 9,076 individuals in 2002.

Angelo Russo, through his company Custom Computers, Inc. (Respondent) has done miscellaneous work for Complainant for approximately three years.  Respondent offered to host Complainant’s email and set up a website.  On December 13, 2002, Respondent registered the <sistercare.com> domain name for Complainant.  However, for reasons unknown to Complainant, Respondent listed itself as the registrant instead of Complainant.  Complainant paid Respondent for all of the costs associated with registering the <sistercare.com> domain name.

 

On February 10, 2003, Complainant notified Respondent that it had decided to use another company to host its email and develop its website.  Thus, Complainant asked Respondent to transfer the <sistercare.com> domain name to Complainant.  However, Respondent has refused to transfer the domain name at issue. 

Currently, Respondent is not using the <sistercare.com> domain name in connection with an active website.  Rather, Respondent is using the domain name at issue for email. 

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 asserts that it has established common law rights in SISTERCARE through continuous use of the mark since 1981 in promoting its services.  Since Respondent has failed to submit a Response in this proceeding and Complainant has provided evidence of its continuous use of the SISTERCARE mark in connection with its business, the Panel concludes that Complainant has common rights in the SISTERCARE mark under Policy ¶ 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the UDRP does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

The <sistercare.com> domain name registered by Respondent is identical to Complainant’s SISTERCARE mark.  Respondent merely adds the generic top-level domain “.com” to Complainant’s entire mark.  The generic top-level domain “.com” is irrelevant under the Policy in distinguishing a domain name from anothers mark.  Thus, the Panel finds that the domain name at issue is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See 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"); see also 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").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In the absence of a Response, the Panel may accept as true all reasonable allegations presented by Complainant in the Complaint.  Furthermore, since Respondent did not submit a Response to the Panel, Respondent has failed to present any circumstances showing that it has rights or legitimate interests in the <sistercare.com> domain name.  Therefore, the Panel infers that Respondent does not have any rights or legitimate interests in the domain name at issue.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); 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 did not provide the Panel with any evidence demonstrating that it is commonly known by the <sistercare.com> domain name or the SISTERCARE mark.  As there is no evidence before the Panel showing that Respondent has been commonly known by the domain name at issue or Complainant’s mark, the Panel concludes that Respondent was not commonly known by the disputed domain name pursuant to Policy 4(c)(ii).  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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Respondent knew that Complainant had rights and legitimate interests in the <sistercare.com> domain name since Respondent registered the domain name on behalf of Complainant within during the course of employment.  Clearly, Respondent was aware of its own lack of interests or rights in the disputed domain name.  Accordingly, the Panel finds that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii).  See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark and that Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right.  This is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name).

Furthermore, Respondent has never used nor made preparations to use the <sistercare.com> domain name in connection with a bona fide offering of goods or services and Respondent is not making a legitimate noncommercial or fair use of the domain name at issue.  Rather, Respondent is holding the disputed domain name without regard to Complainant’s rights, which is evidence of Respondent’s lack of rights and legitimate interests in the domain name at issue.  Thus, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ ¶ 4(c)(i) or 4(c)(iii).  See 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”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent wa s not commonly known by the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The Policy notes that the circumstances listed under ¶ 4(b) are not the only circumstances that are evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  Thus, the Panel is free to consider other circumstances in determining whether Respondent acted in bad faith when it registered and used the <sistercare.com> domain name.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

In connection with setting up Complainant’s website, Respondent offered to register the <sistercare.com> domain name for Complainant.  Rather than registering the disputed domain name in Complainant’s name, Respondent listed itself as the registrant without Complainant’s permission.  It is undisputed that Respondent registered the <sistercare.com> domain name in its name, knowing that it was supposed to register the domain name at issue under Complainant’s name, not under Respondent’s.  Thus, the Panel finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See  Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding that because Respondent was hired by Complainant to help design and register Complainant’s websites, Respondent had intimate knowledge of Complainant’s business and use of its TEENFLO mark.  Therefore, Respondent’s registration of <teenflo.com> was in bad faith).

Furthermore, since Complainant terminated Respondent services, Respondent has refused to transfer the <sistercare.com> domain name, has not made any use of it, nor presented any plans to use it.  Due to Respondent’s unprofessional and uncooperative actions, and blatant disregard for Complainant’s rights in its SISTERCARE mark, the Panel concludes that Respondent is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent was employed by Complainant’s business, was fully aware of the name of her employer, and made no use of the infringing domain name); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

Accordingly, 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 relief shall be GRANTED.

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

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  October 2, 2003

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