DECISION

Roll-Rite Corporation v. WebmasterClub c/o Richard Mandanice

Claim Number:  FA0401000224974

PARTIES

Complainant is Roll-Rite Corporation, Alger, MI (“Complainant”) represented by John S. Artz of Artz & Artz P.C., 28333 Telegraph Road, Suite 250, Southfield, MI 48034.  Respondent is WebmasterClub c/o Richard Mandanice, 20 St-Aubin, Delson, Quebec J0L1G0 Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <roll-rite.com>, registered with Enom, Inc.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically January 9, 2004; the Forum received a hard copy of the Complaint January 12, 2004.

On January 21, 2004, Enom, Inc. confirmed to the Forum that the domain name <roll-rite.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, 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 January 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 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@roll-rite.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 February 18, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <roll-rite.com>, is identical to Complainant’s ROLL-RITE mark.

2. Respondent has no rights to or legitimate interests in the <roll-rite.com> domain name.

3. Respondent registered and used the <roll-rite.com> domain name in bad faith.

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

FINDINGS

Since April of 1989, Complainant has used the ROLL-RITE mark in interstate commerce in conjunction with tarpaulin systems for vehicles.

On October 3, 1994, Complainant filed a registration application for its ROLL-RITE mark with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 74/581568).  Registration was subsequently granted on October 17, 1995 (Reg. No. 1927902).  Complainant owns a second registration for the ROLL-RITE mark (Reg. No. 2005681), granted on October 8, 1996 and is used in connection with Complainant’s motorized winding assembly system for steel tarpaulins.

Respondent registered the disputed domain name <roll-rite.com> on March 15, 2003.  The disputed domain name links to a series of websites, consisting of pornography, get-rich-quick schemes and male potency enhancement sites.

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established by extrinsic proof that it has rights in the mark contained in its entirety in the disputed domain name.  Complainant’s registrations with the USPTO and continuous use in interstate commerce confer Complainant rights in the ROLL-RITE mark.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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 J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

The disputed domain name <roll-rite.com> is identical to Complainant’s ROLL-RITE mark because the domain name incorporates Complainant’s entire mark and adds a generic top-level domain, which is immaterial under the Policy. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Therefore, Policy ¶ 4(a)(i) is established for Complainant.

Rights to or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name.  Complainant also alleged that the Respondent has no such rights.  Respondent did not respond to the Complaint and provide the Panel with any evidence indicating any rights to or legitimate interests in the disputed domain name.  Therefore, the Panel may conclude that Respondent’s failure to respond is tantamount to an admission that it lacks such rights and interests.  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 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent also failed to provide the Panel with evidence and nothing in the record indicates that Respondent is commonly known by the disputed domain name.  Therefore, Policy ¶ 4(c)(ii) is inapplicable.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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); 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).

Furthermore, 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) and is not making a legitimate noncommercial or fair use of it pursuant to Policy ¶ 4(c)(iii).  Because the domain name redirects Internet users, presumably searching for Complainant, to pornography, it does not constitute legitimate noncommercial or fair use.  See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (“Misdirecting Internet traffic by utilizing Complainant’s registered mark does not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it an example of legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). Respondent was merely attempting to capitalize on a close similarity between its domain name and the registered mark of Complainant, presumably to gain revenue from each Internet user redirected to the pornographic website.”); see also ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark],” and evidences that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant has alleged that Respondent acted in bad faith.  Incorporating Complainant’s entire mark in the disputed domain name and subsequently using that name to direct Internet users to pornography evidences bad faith registration and use under the Policy. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Wells Fargo & Co. v. Party Night Inc. & Peter Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

Based on the prior reasoning, the Panel also finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent used the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); 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)).

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 <roll-rite.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: March 3, 2004.

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