DECISION

Emergency24, Inc. v. (This Domain is For Sale) Joshuathan Investments, Inc.

Claim Number:  FA0308000190612

PARTIES

Complainant is Emergency24, Inc., Chicago, IL (“Complainant”) represented by Jared Palmer.  Respondent is (This Domain is For Sale) Joshuathan Investments, Inc., Belize City, Belize (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <77search.com>, <7searchs.com> and <7searcher.com>, registered with Bulkregister.com, Inc.

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.

 James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 26, 2003; the Forum received a hard copy of the Complaint on August 29, 2003.

On August 27, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain names <77search.com>, <7searchs.com> and <7searcher.com> are registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the names. Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, 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 September 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 22, 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@77search.com, postmaster@7searchs.com and postmaster@7searcher.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 6, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <77search.com>, <7searchs.com> and <7searcher.com> domain names are confusingly similar to Complainant’s 7SEARCH.COM mark.

2. Respondent does not have any rights or legitimate interests in the <77search.com>, <7searchs.com> and <7searcher.com> domain names.

3. Respondent registered and used the <77search.com>, <7searchs.com> and <7searcher.com> domain names in bad faith.

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

FINDINGS

On October 28, 1999, Complainant filed an application with the U.S. Patent and Trademark Office to register the 7SEARCH.COM mark (Reg. No. 2,392,459 – registered July 11, 2000 on the Supplemental Register).  Complainant has used the mark in commerce since January 1, 1999.  Complainant operates a website that provides search engine and Internet search-related functions for thousands of advertisers and millions of Internet users. 

Respondent registered the <77search.com>, <7searchs.com> and <7searcher.com> domain names on November 28, 2000.  Respondent uses the disputed domain names as search engines.  Each of the connected websites attempts to sell the domain names through advertisements that state, “This Domain for Sale.  Click here for Details.”  Respondent has registered each of the disputed domain names under the name “(This Domain is for Sale) Joshuathan Investments, Inc.” and the WHOIS contact information states that each of the domain names is for sale at a price of $250. 

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 7SEARCH.COM mark through registration of the mark with the U.S. Patent and Trademark Office and through the mark’s use in commerce since January 1999.  See Action Sports Videos v. Reynolds, D2001-1239 (WIPO Dec. 13, 2001) (holding that, although Complainant's registration on the Supplemental Register denotes a descriptive mark without secondary meaning, Complainant nevertheless had standing to initiate a UDRP claim because Policy ¶ 4(a)(i) requires only that the Complainant have "rights" in the disputed domain name, strong or weak though they may be); see also Gruner + Jahr Printing & Publ’g Co. v. Internet Billions Domains, Inc., FA 114663 (Nat. Arb. Forum Sept. 3, 2002) (holding that Complainant’s five USPTO registrations incorporating its HOMESTYLE mark on the Supplemental Register and Complainant’s use of the mark as part of the title of a magazine in the U.S. since as early as January 8, 1992—despite the magazine repeatedly changing titles—was sufficient to grant standing under the UDRP); 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 <77search.com>, <7searchs.com> and <7searcher.com> domain names are confusingly similar to Complainant’s mark because the disputed domain names fully incorporate the 7SEARCH.COM mark.  The first domain name merely adds the number “7” to Complainant’s mark and the remaining two domain names add the letters “s” or “er” to the mark.  Respondent’s addition of the number and letters to Complainant’s mark does not sufficiently distinguish the disputed domain names from Complainant’s mark, and therefore the domain names are confusingly similar to the 7SEARCH.COM mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Dow Jones & Co., v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Due to Respondent’s failure to respond to the allegations of the Complaint, the Panel may presume that Respondent lacks rights or legitimate interests in the disputed domain names.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also 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).

Furthermore, the WHOIS information for the <77search.com>, <7searchs.com> and <7searcher.com> domain names fails to establish that Respondent is commonly known by any of the disputed domain names.  The record fails to establish that Respondent was authorized or licensed to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

In addition, Respondent has stated within the WHOIS information for each of the disputed domain names that they are each for sale at a price of $250.  Respondent also attempts to sell the domain names by posting advertisements on the websites that the domain names resolve to by stating, “This Domain for Sale.  Click here for Details.”  Respondent’s attempts to sell the confusingly similar domain names are evidence that Respondent lacks rights or legitimate interests in the domain names.   The Panel concludes that Respondent is not using the domain names to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

It can be inferred that Respondent had actual or constructive knowledge of Complainant’s mark because the mark is registered with the U.S. Patent and Trademark Office and the mark has been used in commerce since 1999.  Due to the relatively minimal costs involved in registering a domain name, the Panel presumes that the $250 price advertised by Respondent is in excess of Respondent’s out-of-pocket costs.  The Panel concludes that Respondent’s listing in the WHOIS information that the domain names were for sale and Respondent’s additional attempts to sell the domain names for more than out-of-pocket costs is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  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 Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This domain name is for sale”); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name Respondent chose for the registrant, “If you want this domain name, please contact me”); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

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 <77search.com>, <7searchs.com> and <7searcher.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  October 20, 2003

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