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Generic Top Level Domain Name (gTLD) Decisions |
Skyline Displays, Inc. d/b/a Skyline
Exhibits v. Hangzhou Skyi Display Equipment Co., Ltd.
Claim
Number: FA0308000187706
Complainant is Skyline Displays, Inc., Eagan, MN
(“Complainant”) represented by Thomas J.
Oppold, James P. Quinn, and Michael A. Essien, of Larkin Hoffman Daly & Lindgren, Ltd. Respondent is Hangzhou
Skyi Display Equipment Co., Ltd., Hanzhou, Zheijang, China (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <skyidisplay.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 21, 2003; the
Forum received a hard copy of the
Complaint on August 22, 2003.
On
August 21, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the Forum that the domain name <skyidisplay.com> is
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne
It, Ltd. d/b/a
Internet Names Worldwide has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide
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
September 4, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of September 24, 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@skyidisplay.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
October 7, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skyidisplay.com>
domain name is confusingly similar to Complainant’s SKYLINE DISPLAYS mark.
2. Respondent does not have any rights or
legitimate interests in the <skyidisplay.com> domain name.
3. Respondent registered and used the <skyidisplay.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
become a global leader in the manufacture and distribution of display and
exhibition boards and signs, portable display
and exhibition stands, frames and
panels, and portable cabinets and shelving for use at commercial trade shows
and exhibitions. Currently, Complainant
has distributor offices throughout the world in 60 different locations in 40
countries outside of the United
States, including rental depots/service centers
in China.
Complainant
holds United States Patent and Trademark Office (“USPTO”) Registration No.
1,503,961 for the SKYLINE DISPLAYS mark and
Registration No. 1,976,698 for the
SKYLINE mark (both registered on the Principal Register on September 13, 1988
and May 28, 1996,
respectively). In addition,
Complainant is the holder of Chinese Registration No. 964,852 for the SKYLINE
mark under International Class 20 for display
boards, display stands, portable
display stands and parts and fittings therefore.
Since at least
as early as May 1984, Complainant has been continuously using its SKYLINE
DISPLAYS and SKYLINE marks in connection
with the sale, distribution and
advertising of its products for use at commercial trade shows and exhibitions
and services in association
therewith.
Moreover, Complainant registered the <skylinedisplays.com> domain
name on March 25, 1998 and has continuously operated a website
under that
name.
Respondent
registered the <skyidisplay.com> domain name on March 21,
2003. Respondent is offering for sale
various types of display and exhibition boards, portable display and exhibition
stands, frames and
panels, and portable cabinets and shelving for use at
commercial trade shows and exhibitions.
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 SKYLINE DISPLAYS and SKYLINE marks through
registration of the marks with the USPTO and
with China. Thus, the Panel finds that Complainant has
demonstrated that it has rights in the SKYLINE DISPLAYS and SKYLINE marks for
the purposes
of Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently
distinctive and have acquired secondary meaning”); see also 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).
Respondent’s <skyidisplay.com>
domain name is confusingly similar to Complainant’s mark in light of their
substantially similar appearance, spelling and sound when
pronounced. The confusing similarity between
Respondent’s domain name and Complainant’s marks is only enhanced by the fact
that Respondent offers
the same services at its website, located at the <skyidisplay.com>
domain name, as Complainant offers at its website, located at the
<skylinedisplays.com> domain name.
Consequently, the Panel concludes that Respondent’s domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA
93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is
further increased by the fact that the Respondent
and [Complainant] operate
within the same industry”); see also VeriSign
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the
pronunciation and spelling between the domain name <venesign.com> and
Complainant’s
mark, VERISIGN, are so close that confusion can arise in the mind
of the consumer).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response to the Panel in this proceeding. In light of the fact that Respondent has
failed to offer any evidence rebutting Complainant’s allegations, the Panel
accepts as true
all claims set forth by Complainant in the Complaint. Thus, the Panel finds that Respondent does
not have rights or legitimate interests in the <skyidisplay.com>
domain name pursuant to Policy ¶ 4(a)(ii).
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 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 Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which
could demonstrate any rights or legitimate interests in the domain name).
Despite the fact
that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in
its WHOIS contact information, there
is no evidence presented to the Panel
showing that Respondent is commonly known by the <skyidisplay.com>
domain name prior to registering the domain name. Moreover, the content on Respondent’s website is almost identical
to Complainant’s website which the domain name was registered prior
to
Respondent’s March 2003 registration of the <skyidisplay.com>
domain name. Hence, the Panel concludes that Respondent is not commonly known
by the domain name at issue under 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 Yoga Works, Inc. v. Arpita, 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 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).
Respondent is
using the <skyidisplay.com> domain name to host a website where it
sells its products that are identical and in direct competition with products
sold by Complainant. Consequently, the
Panel finds that Respondent is not using the disputed domain name in connection
with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or
for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that “[I]t would be unconscionable to find a bona fide offering of services in
a [R]espondent’s
operation of web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
website, by creating a likelihood of
confusion with Complainant’s mark as to
the source, sponsorship, affiliation or endorsement of its website. Respondent registered a domain name that is
confusingly similar to Complainant’s marks and is using that domain name for
the promotion
and sale of products that are identical to and in direct
competition with Complainant’s products.
As a result, the Panel concludes that Respondent registered and is using
the <skyidisplay.com> domain name in bad faith pursuant to Policy
¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial
gain by creating a likelihood of
confusion with Complainant’s mark and offering the same chat services via his
website as Complainant);
see also Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that Respondent had engaged in bad faith use and registration by
linking the
domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Furthermore,
Respondent acted in bad faith when it registered the <skyidisplay.com>
domain name with knowledge of Complainant’s rights in its marks. By virtue of Complainant’s various
registrations of its marks, Respondent was put on constructive notice of
Complainant’s rights in
its SKYLINE and SKYLINE DISPLAYS marks prior to
registration of the domain name at issue.
Therefore, the Panel concludes that Respondent registered the <skyidisplay.com>
domain name in bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status
that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <skyidisplay.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: October 14, 2003
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