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Generic Top Level Domain Name (gTLD) Decisions |
Holiday Diver, Inc. v. Petr Vonka
Claim
Number: FA0402000237569
Complainant is Holiday Diver, Inc. (“Complainant”), Deerfield
Beach, FL, represented by John S. Artz, of Artz & Artz, P.C.,
28333 Telegraph Road, Suite 250, Southfield, MI, 48034. Respondent is Petr Vonka (“Respondent”), U prodejny 541, Praha 10, Czech Republic
10700.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <divers-direct.com>, registered with Namebay.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 18, 2004; the
Forum received a hard copy of the
Complaint on February 20, 2004.
On
February 20, 2004, Namebay confirmed by e-mail to the Forum that the domain
name <divers-direct.com> is registered with Namebay and that
Respondent is the current registrant of the name. Namebay has verified that
Respondent is bound
by the Namebay 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
February 27, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 18, 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@divers-direct.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
March 23, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James
A. Crary 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <divers-direct.com>
domain name is identical to Complainant’s DIVERS DIRECT mark.
2. Respondent does not have any rights or
legitimate interests in the <divers-direct.com> domain name.
3. Respondent registered and used the <divers-direct.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the DIVERS DIRECT mark continuously since 1998 in connection with mail
order services and retail store services
in the field of water sports and water
sports equipment. Complainant
registered the DIVERS DIRECT mark with the United States Patent and Trademark
Office (“USPTO”) on November 2, 1999 (Reg.
No. 2290719).
Complainant also
maintains a website at the <diversdirect.com> domain name for the purpose
of selling underwater diving equipment
and items specifically related to the
diving industry.
Respondent
registered the disputed domain name <divers-direct.com> on October
3, 2003. Respondent has used the
disputed name to advertise and promote underwater diving equipment. Yet, the
domain name’s attached website
is currently listed as “under construction.”
In an e-mail
dated November 27, 2003, Respondent stated to a potential customer that the
customer should “contact our sister in USA
info@diversdirect.com.” Later, in an e-mail dated December 3, 2003,
Respondent acknowledged that Internet user confusion was created as to the
source of the
disputed domain name and also stated the following, “it was a big
surprise for me when I found that is (sic) another divers direct
in USA. I
didn’t know it.”
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.
Under the
Policy, the registration of a mark with the USPTO is sufficient to confer
rights to the owner. Since Complainant
registered the DIVERS DIRECT mark with the USPTO and has continuously used the
mark in commerce since 1998, Complainant
has established rights in the
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.”).
Spaces between
letters or words are incapable of being reproduced in domain names. Thus, hyphens are often used as a substitute
for spaces in the context of domain names.
Past panels have found that the mere addition of a hyphen in a disputed
domain name does not distinguish the name from the mark and
therefore the
domain name is identical to the trademark under Policy ¶ 4(a)(i). In this case, Respondent has merely
substituted the space in Complainant’s DIVER DIRECT mark with a hyphen, while
incorporating Complainant’s
entire mark in the domain name. See
Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000)
(“[T]he use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name
is identical to a mark."); see also Teradyne Inc. v. 4Tel Tech., D2000-0026
(WIPO May 9, 2000) ( “[The] addition of a hyphen to the registered mark is an
insubstantial change. Both the mark and
the domain name would be pronounced in
the identical fashion, by eliminating the hyphen."); see also InfoSpace.com v. Ofer, D2000-0075 (WIPO
Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s
INFOSPACE trademark. The addition
of a hyphen and .com are not distinguishing
features.”); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903
(WIPO Nov. 6, 2001) (“The 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 Nikon, Inc. v. Technilab, Inc.,
D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark
in the domain name).
Thus, the
disputed domain name is identical to Complainant’s registered trademark
pursuant to Policy ¶ 4(a)(i).
The Panel
construes the fact that Respondent has failed to respond to the Complaint as an
implicit admission that Respondent lacks
rights to 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 interest in the domain names); see
also 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 Do the Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come
forward to [contest complainant’s allegations] is tantamount to
admitting the
truth of complainant’s assertion in this regard.”).
Nothing in the
record indicates that Complainant is commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). 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 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 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).
In the past,
Respondent used the disputed domain name to sell underwater diving equipment,
which is the same commercial activity that
Complainant engages in. The difference between Complainant’s
commercial activity and Respondent’s is that Complainant owns the registration
for the DIVERS
DIRECT trademark and Respondent does not. Thus, Respondent is not making a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)
by using a
domain name identical to Complainant’s mark and selling goods that compete with
Complainant. See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Clear Channel Communications, Inc. v. Beaty
Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent,
as a competitor of Complainant, had no rights or legitimate interests
in a
domain name that utilized Complainant’s mark for its competing website); see
also Chip Merch., Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to Complainant’s mark and that
Respondent’s use
of the domain names to sell competing goods was illegitimate and not a bona
fide offering of goods).
Therefore,
Complainant has established that Respondent lacks rights to and legitimate
interests in the disputed domain name pursuant
to Policy ¶ 4(a)(ii).
Respondent and
Complainant both operate in the field of underwater diving equipment. In an e-mail sent by Respondent on November
27, 2003 to a potential customer, Respondent refers to Complainant as its
“sister [company],”
implying that Complainant was affiliated with
Respondent. Then, in a later e-mail
sent on December 3, 2004 to Complainant, Respondent stated, “it was a big
surprise for me when I found that
is (sic) another divers direct in USA. I
didn’t know it.” These two e-mails
expose a significant inconsistency in Respondent’s representations to the
customer and Complainant.
The Panel
believes that Respondent was being less than truthful in its correspondence
with Complainant and supports Complainant’s
assertion that Respondent was
attempting to pass itself off as an affiliate of Complainant’s company. Thus, without the benefit of a Response and
in light of Respondent’s less than forthcoming correspondence with Complainant,
the Panel
accepts Complainant’s assertion that Respondent registered and used the
disputed domain name in bad faith by attempting to pass itself
off as
Complainant. 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 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); see also Monsanto Co. v. Decepticons,
FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of
<monsantos.com> to misrepresent itself as Complainant
and to provide
misleading information to the public supported a finding of bad faith); cf.
DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding
that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave
consumers the impression that Complainant endorsed
and sponsored Respondent’s
website); see also Autonation Holding Corp. v. Venta, D2002-0984 (WIPO
Dec. 17, 2002) (“The registration and use of
the disputed domain name to engage in activities which constitute trademark
infringement, unfair competition
and/or passing off constitutes bad faith under
the policy.”).
Therefore,
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 <divers-direct.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated: April 6, 2004
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