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Generic Top Level Domain Name (gTLD) Decisions |
RAB Lighting, Inc. v. DNS Support -
Ultimate Search
Claim
Number: FA0411000363908
Complainant is RAB Lighting, Inc. (“Complainant”), represented
by Eric A. Prager, of Darby & Darby P.C.,
1911 Second Avenue, Seattle, WA 98101. Respondent is DNS Support - Ultimate Search (“Respondent”), GPO Box 7862,
Central, Hong Kong, China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <rablighting.com>, registered with Web
Commerce Communications Limited d/b/a Webnic.cc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
12, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 15, 2004.
On
November 18, 2004, Web Commerce Communications Limited d/b/a Webnic.cc
confirmed by e-mail to the National Arbitration Forum that
the domain name <rablighting.com>
is registered with Web Commerce Communications Limited d/b/a Webnic.cc and that
Respondent is the current registrant of the name.
Web Commerce Communications
Limited d/b/a Webnic.cc has verified that Respondent is bound by the Web
Commerce Communications Limited
d/b/a Webnic.cc 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
November 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 13, 2004 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@rablighting.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 20, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Sandra Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <rablighting.com>
domain name is identical to Complainant’s RAB LIGHTING mark.
2. Respondent does not have any rights or
legitimate interests in the <rablighting.com> domain name.
3. Respondent registered and used the <rablighting.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant is a
leading maker of outdoor, industrial, and motion-activated lighting.
Complainant has used its RAB LIGHTING mark continuously
and exclusively on
packages and product catalogs distributed throughout the United States for at
least twenty years. Complainant
has spent between $400,000 and $700,000 per
year for at least the past twenty years promoting and advertising its RAB
LIGHTING and
RAB marks. During that time, sales made under Complainant’s marks
have totaled over $200 million. Complainant previously operated
a website at
the <rablighting.com> domain name. The disputed domain name ceased
to be registered to Complainant because renewal notifications from
Complainant’s domain
name registrar were misdirected. Complainant currently
operates a website at the <rabweb.com> domain name.
Respondent
registered the <rablighting.com> domain name on July 24, 2004. The
domain name resolves to a website containing sponsored links to various commercial
websites
unrelated to Complainant.
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.
Registration of
a mark with a governmental authority is unnecessary for a complainant to
establish rights in a mark if a common law
mark has been established. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) noting that the ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark
or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common
law trademark or service
mark rights will suffice” to support a domain name Complaint under the Policy;
see also Great Plains Metromall, LLC v.
Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) finding that the Uniform
Domain Name Dispute Resolution Policy does not require “that a
trademark be
registered by a governmental authority for such rights to exist”.
Complainant
established by extrinsic proof in this proceeding that it has rights in the RAB LIGHTING mark through ownership of
a common law mark. A common law mark is established when a complainant’s mark
becomes distinctive and acquires
secondary meaning. Complainant established
that through Complainant’s exclusive and continuous use of the RAB LIGHTING
mark in commerce
for at least twenty years, Complainant’s mark has acquired
secondary meaning and has become distinctive. See Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) finding common law rights
in a mark where its use was continuous and ongoing, and secondary
meaning was
established; 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 Am.
Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) finding that the fact that Complainant held the
domain name prior to Respondent’s registration,
as well held a pending
trademark application in the mark, evidences rights in the domain name and the
mark therein contained.
The domain name that Respondent registered, <rablighting.com>,
is identical to Complainant’s RAB LIGHTING mark because it merely removes a
space between the words of the mark and adds the “.com”
generic top-level
domain. Neither the removal of a space between the words of the mark nor the
addition of “.com” distinguishes the
disputed domain name. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces
are impermissible
in domain names and a generic top-level domain such as ‘.com’
or ‘.net’ is required in domain names”; see
also Victoria's Secret v.
Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) finding that the <bodybyvictoria.com>
domain name is identical to Complainant’s BODY
BY VICTORIA mark.
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint. Therefore, the Panel accepts all reasonable
allegations set forth in the Complaint
as true. See Am. Online, Inc. v. Clowers, FA
199821 (Nat. Arb. Forum Nov. 14, 2003) finding that the failure to challenge a
complainant’s allegations allows a panel to accept
all of the complainant’s
reasonable allegations and inferences as true;
see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true.
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See 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
interests in the domain names; see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Nothing in the
record establishes that Respondent is commonly known by the disputed domain
name. Moreover, Respondent is not licensed or authorized to register or use a
domain name that incorporates Complainant’s mark.
Therefore, the Panel
concludes that Respondent lacks rights and legitimate interests in the 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 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.
Moreover, the
fact that Complainant once held the registration for the disputed domain name
is further evidence that Respondent lacks
rights and legitimate interests in
the domain name pursuant to Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) finding that Complainant’s prior registration of the same domain
name is a factor in considering
Respondent’s rights or legitimate interest in
the domain name; see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (“Respondent’s
opportunistic registration of the Complainant’s domain name, within 24 hours of
its lapse, weighs strongly in favor of
a finding that Respondent has no rights
or legitimate interests in the disputed domain name.”).
Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i),
nor is Respondent making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The record reveals
that Respondent’s domain names redirect unsuspecting
Internet users to a website that provides links to services that are unrelated
Complainant’s business. The Panel infers that Respondent commercially benefits
from this diversion by receiving pay-per-click fees
from advertisers when
Internet users follow the links on its websites. Respondent makes opportunistic
use of Complainant’s mark in
order to capitalize on the goodwill and fame
associated with the RAB LIGHTING moniker; thus, Respondent fails to establish
rights
or legitimate interests in the domain name. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252
(WIPO Apr. 9, 2001) finding no rights or legitimate interests where Respondent
generated commercial gain by intentionally
and misleadingly diverting users
away from Complainant's site to a competing website; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec.
11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation
of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a domain name identical to Complainant’s RAB LIGHTING mark to ensnare
unsuspecting Internet users. Respondent then
redirects the users to its website,
which consists of sponsored links to unrelated commercial websites. The Panel
infers that Respondent
commercially benefits from this diversion by receiving
pay-per-click fees from advertisers when Internet users follow the links on
its
website. Such infringement is what the Policy was intended to remedy. Thus, the
Panel finds that Respondent registered and used
the domain name in bad faith
under Policy ¶ 4(b)(iv). See AutoNation
Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (“The scope
of an ICANN proceeding is extremely narrow: it only targets abusive
cybersquatting, nothing
else”); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
finding that if Respondent profits from its diversionary use of Complainant's
mark when
the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent
is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive”).
The Panel finds that the evidence establishes that Respondent knew of
Complainant’s rights in the RAB LIGHTING mark and that it knew
the value of the
disputed domain name to Complainant at the time it registered the <rablighting.com> domain name.
Registering the disputed domain name, a domain name previously registered to
Complainant, for its own purposes is strong
evidence that Respondent registered
and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See
InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000)
finding that where the domain name has been previously used by Complainant,
subsequent
registration of the domain name by anyone else indicates bad faith,
absent evidence to the contrary; see
also BAA plc v. Spektrum
Media Inc., D2000-1179 (WIPO Oct. 17, 2000) finding bad faith where
Respondent took advantage of Complainant’s failure to renew a domain name;
see also Tercent Inc. v. Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) inferring that Respondent had
knowledge that the <tercent.com> domain name previously belonged
to Complainant when Respondent registered said domain name the very same day
Complainant’s registration
lapsed.
Respondent’s
registration of the disputed domain name, a domain name identical Complainant’s
well-known registered mark, suggests
that Respondent knew of Complainant’s
rights in the RAB LIGHTING mark. Furthermore, Complainant previously held the
registration
for the domain name. Thus, the Panel finds that Respondent chose
the <rablighting.com> domain name based on the distinctive and
well-known qualities of Complainant’s mark, which evidences bad faith
registration and use
pursuant to Policy ¶ 4(a)(iii). See 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’”; see also
Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) finding bad faith registration and use
where it is “inconceivable that the respondent could make
any active use of the
disputed domain names without creating a false impression of association with
the Complainant”; see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous
mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the
domain names; see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) determining that Policy paragraph 4(b) sets forth certain
circumstances, without limitation,
that shall be evidence of registration and
use of a domain name in bad faith.
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 <rablighting.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
December 30, 2004
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