|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Register.com, Inc. v. Alf Temme
Claim
Number: FA0411000361784
Complainant is Register.com, Inc. (“Complainant”), 575 Eighth Avenue, 8th Floor, New York, NY, 10018. Respondent is Alf Temme
(“Respondent”), 8137 Lankershim Boulevard, North Hollywood, CA, 91605.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <registert.com>,
<registwer.com>, <regkister.com>,
<reguister.com>, <rwegister.com> and <rtegister.com>,
registered with Moniker Online Services, Inc..
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically November
5, 2004; the National Arbitration Forum
received a hard copy of the Complaint November
10, 2004.
On
November 8, 2004, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain names <registert.com>, <registwer.com>,
<regkister.com>, <reguister.com>, <rwegister.com>
and <rtegister.com> are registered with Moniker Online Services,
Inc. and that Respondent is the current registrant of the names. Moniker Online
Services,
Inc. verified that Respondent is bound by the Moniker Online
Services, Inc. registration agreement and thereby has 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 11, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 1, 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@registert.com, postmaster@registwer.com,
postmaster@regkister.com, postmaster@reguister.com, postmaster@rwegister.com
and postmaster@rtegister.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 10, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent
registered, <registert.com>, <registwer.com>, <regkister.com>,
<reguister.com>, <rwegister.com> and <rtegister.com>,
are confusingly similar to Complainant’s REGISTER.COM mark.
2. Respondent has no rights to or legitimate
interests in the <registert.com>, <registwer.com>, <regkister.com>,
<reguister.com>, <rwegister.com> and <rtegister.com>
domain names.
3. Respondent registered and used the <registert.com>,
<registwer.com>, <regkister.com>, <reguister.com>,
<rwegister.com> and <rtegister.com> domain names in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
established with extrinsic proof in this proceeding that it owns trademark
registrations from the United States Patent
and Trademark Office (“USPTO”) for
REGISTER (Reg. No. 2,664,968, registered December 24, 2002) and REGISTER.COM
(Reg. No. 2,664,967,
registered December 24, 2002) related to computer and
business services, namely hosting the websites of others on a computer server
for a global computer network and providing information about website
development, electronic mail and electronic commerce.
Complainant
operates a website at <register.com> in connection with the provision of
domain name registration services, online
search engine services, website
hosting and development services, electronic mail services and other related
services.
Respondent
registered the <registert.com>, <registwer.com>, <regkister.com>,
<reguister.com>, <rwegister.com> and <rtegister.com>
domain names January 19, 2004.
Respondent uses the disputed domain names to redirect Internet users to
Respondent’s <comefindit.com> domain name. Respondent’s <comefindit.com> domain name resolves to a
search engine featuring links to various commercial entities.
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 will draw such
inferences as the Panel considers
appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established that it has rights to and legitimate interests in the REGISTER.COM
mark through registration with the USPTO
as well as continuous use in commerce.
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
disputed domain names are confusingly similar to Complainant’s REGISTER.COM
mark because each of the domain names differs
from the mark by only one letter.
The addition of one letter to Complainant’s mark capitalizes on common
misspellings of the mark. Such
additions do not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com>
are confusingly similar to Complainant’s
mark, ICQ); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent did
not 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 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 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 names. 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 interest 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.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain names. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain names 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).
Respondent is
using the disputed domain names to redirect Internet users to a website that
displays a generic search engine as well
as links to various commercial
entities. Respondent’s use of domain
names confusingly similar to Complainant’s registered mark to divert Internet
users to Respondent’s website,
which features a search engine and hyperlinks,
is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain names
pursuant to Policy ¶ 4(c)(iii). See 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); see also Pioneer
Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003)
(finding that Respondent did not have rights or legitimate interests in a
domain name that
used Complainant’s mark and redirected Internet users to a
website that pays domain name registrants for referring those users to
its
search engine and pop-up advertisements); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to
profit using Complainant’s mark by redirecting Internet
traffic to its own website).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers from Complainant’s
uncontested allegations that Respondent redirects the disputed domain names to
a website featuring
a search engine and various commercial links in order to
receive referral fees, commissions, or some other form of commercial gain.
In
registering misspelled and confusingly similar variations of Complainant’s
REGISTER.COM mark for this purpose, Respondent fosters
a likelihood of
confusion in the minds of Internet users for commercial gain, which is evidence
of bad faith use and registration
of the domain names pursuant to Policy ¶
4(b)(iv). See Bama Rags, Inc. v.
Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where
Respondent attracted users to advertisements); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith
where Respondent linked the domain name to another website, presumably
receiving a portion of the advertising revenue from the site, thus using a
domain name to attract Internet users for commercial gain).
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 <registert.com>, <registwer.com>,
<regkister.com>, <reguister.com>, <rwegister.com>
and <rtegister.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 23, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1530.html