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Generic Top Level Domain Name (gTLD) Decisions |
Gander Mountain Company v. Albert Jackson
Claim
Number: FA0411000363974
Complainant is Gander Mountain Company (“Complainant”),
represented by Travis L. Bachman, of Dorsey & Whitney LLP,
50 South Sixth Street, Suite 1500, Minneapolis, MN 55402-1498. Respondent is Albert Jackson
(“Respondent”), P.O. Box 2014, Georgetown, Grand Cayman, Cayman Islands.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwgandermountain.com>, registered with iHoldings.com.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
November 15, 2004; the National Arbitration
Forum received a hard copy of the
Complaint on November 16, 2004.
On
November 18, 2004, iHoldings.com confirmed by e-mail to the National
Arbitration Forum that the domain name <wwwgandermountain.com> is
registered with iHoldings.com and that Respondent is the current registrant of
the name. iHoldings.com has verified that Respondent
is bound by the
iHoldings.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
November 18, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 8, 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@wwwgandermountain.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 the
Honorable Charles K. McCotter, Jr. (Ret.) 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 <wwwgandermountain.com>
domain name is confusingly similar to Complainant’s GANDER MOUNTAIN mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwgandermountain.com> domain name.
3. Respondent registered and used the <wwwgandermountain.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Gander Mountain, is a national recreation and sporting goods retail
company. Complainant has used the
GANDER MOUNTAIN mark since the 1960s, registering it with the U.S. Patent and
Trademark Office (“USPTO”)
(Reg. Nos. 1,335,489; 1,927,194; and 2,564,297) on
May 14, 1985, October 17, 1995, and April 23, 2002, respectively.
Respondent
registered the <wwwgandermountain.com> domain name on December 10,
2003. Respondent is using the disputed
domain name to create a directory service offering advertisements for goods
such as lodging in Costa
Rica, mortgage refinancing, health insurance, distance
learning programs, and mattresses as well as generic links to shopping,
archery,
fishing tackle, boating, and Minnesota.
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
sufficient rights in the GANDER MOUNTAIN mark to bring a claim under the
Policy. 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, and
Respondent has the burden
of refuting this assumption.).
Respondent’s <wwwgandermountain.com>
domain name is confusingly similar to Complainants’ GANDER MOUNTAIN mark because
the only difference is the addition of the “www”
prefix and the omission of the
space between words, which does not sufficiently distinguish the domain name
from the mark. See Marie Claire
Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters
"www" are not distinct in the "Internet world" and
thus
Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to
Complainant's MARIE CLAIRE trademark); see also Neiman Marcus Group, Inc. v.
S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity
has been established because the prefix "www" does
not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not filed a Response. In the absence of
a Response, the Panel may accept Complainant’s reasonable assertions as
true. See 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 Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complainant to be deemed true).
Respondent has
wholly appropriated Complainant’s mark to advertise others’ goods and
services. The Panel infers that
Respondent receives referral fees whenever Internet users follow any of the
links at Respondent’s website. The
Panel finds that appropriating another’s mark to advertise goods or services
unrelated to Complainant and collect referral fees
is not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant
to Policy ¶ 4(c)(iii).
See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb.
Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name
to redirect Internet users to websites unrelated to Complainant’s mark,
websites where Respondent
presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or services as
contemplated
by the Policy); see also Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that Respondent’s diversionary use of Complainant’s mark to attract
Internet
users to its own website, which contained a series of hyperlinks to
unrelated websites, was neither a bona fide offering of goods
or services nor a
legitimate noncommercial or fair use of the disputed domain names).
In
addition, Respondent’s domain name preys on Complainant’s customers erring when
seeking out Complainant in the marketplace.
Omitting the period between the “www” and the remainder of the domain
name is the signature move of a one who preys on the Internet
user’s mistake—a
typosquatter. Typosquatting another’s
mark to offer advertising and links to other goods and services is not a bona
fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Diners Club Int’l
Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb.
Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in
and of itself that Respondent lacks rights
or legitimate interests in the
disputed domain name vis-à-vis Complainant); see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where
Respondent used the typosquatted <wwwdewalt.com>
domain name to divert
Internet users to a search engine web page, and failed to respond to the
Complaint).
There is nothing
in the record, including the WHOIS contact information, which indicates that
Respondent is commonly known by the
<wwwgandermountain.com> domain
name pursuant to Policy ¶ 4(c)(ii). See
Medline, Inc. v. Domain Active Pty. Ltd., FA 139718
(Nat. Arb. Forum Feb. 6,
2003) (“Considering the nonsensical nature of the [<wwwmedline.com>]
domain name and its similarity to Complainant’s
registered and distinctive
[MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”); see also 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).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent has
appropriated Complainant’s mark in its entirety to attract Complainant’s
customers upon making a typing mistake.
The Panel finds that attracting another’s customers by preying on their
typographical errors is evidence of bad faith registration
and use pursuant to
Policy ¶ 4(a)(iii). See Nat’l Ass’n
of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off
traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
the <wwwdewalt.com> domain name was registered to “ensnare those
individuals who forget
to type the period after the “www” portion of [a]
web-address,” evidence that the domain name was registered and used in bad
faith).
Respondent is
using the disputed domain name to link to advertisements of others’ goods or
services. The Panel finds that using a
domain name that is confusingly similar to another’s mark for commercial gain
is evidence of bad faith
registration and use pursuant to Policy ¶
4(b)(iv). See AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked
the domain name to a website
that offers a number of web services); see also
Bama Rags, Inc. v. Zuccarini, FA
94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent
attracted users to advertisements).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwgandermountain.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
December 28, 2004
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