DECISION

Universal Form Clamp of Chicago, Inc. v. Richard Mandanice

Claim Number:  FA0403000248955

PARTIES

Complainant is Universal Form Clamp of Chicago, Inc. (“Complainant”), represented by Aric S. Jacover, of Mayer, Brown Rowe & Maw LLP, 190 South LaSalle Street, Chicago, IL 60603.  Respondent is Richard Mandanice (“Respondent”), 20 St-Aubin, Delson, Quebec J011G0, Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <universalformclamp.com>, registered with Dotster.

PANEL

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 24, 2004; the Forum received a hard copy of the Complaint on March 26, 2004.

On March 25, 2004, Dotster confirmed by e-mail to the Forum that the domain name <universalformclamp.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 March 31, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 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@universalformclamp.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 May 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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. Respondent’s <universalformclamp.com> domain name is confusingly similar to Complainant’s UNIVERSAL FORM CLAMP CO. mark.

2. Respondent does not have any rights or legitimate interests in the <universalformclamp.com> domain name.

3. Respondent registered and used the <universalformclamp.com> domain name in bad faith.

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

FINDINGS

Complainant, Universal Form Clamp of Chicago, Inc., has sold concrete form products since 1978.  It has used the UNIVERSAL FORM CLAMP CO mark since the company’s beginning.  Since that time, Complainant has spent millions of dollars on marketing and advertising.  Its current advertising budget is approximately half a million dollars a year.  In 2003 alone, Complainant had sales of over $75 million.

Complainant originally registered the <universalformclamp.com> domain name in 1998.  The domain name registration expired in late 2003.

Respondent registered the <universalformclamp.com> domain name on October 1, 2003.  Respondent is using the disputed domain name to link to <free-for-all.com>, a website with pornographic content and banner advertisements for pornography.

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 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.

Identical and/or Confusingly Similar

Complainant has shown extensive trade under the UNIVERSAL FORM CLAMP CO. mark and continuous use of the mark.  The Panel finds that Complainant has established secondary meaning in the mark, and, therefore, has established rights in the mark.  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).

The <universalformclamp.com> mark is confusingly similar to the UNIVERSAL FORM CLAMP CO. mark.  The only difference is the omission of the spaces between words and the omission of the abbreviation “co.,” which does not significantly distinguish the domain name from the mark.  See Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997) aff’d 152 F3d 920 (2d Cir. 1998) cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

The Panel finds that Complainant has sufficiently established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not filed a Response.  Absent a Response, the Panel may accept all reasonable assertions by Complainant as true.  See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant).

Respondent is using the <universalformclamp.com> domain name to link to pornography.  Such use of a domain name confusingly similar to Complainant’s mark is neither a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  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 [in order to direct Internet users to an adult-oriented website] does not equate to a bona fide offering of goods or services . . . nor is it an example of legitimate noncommercial or fair use of a domain name . . . 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 Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

There is nothing in the record, including Respondent’s WHOIS information, which indicates that Respondent is commonly known by the disputed domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one 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).

The Panel finds that Complainant has sufficiently established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is appropriating Complainant’s mark to redirect Internet users to pornography and advertisements for pornography.  The Panel finds that Respondent is creating a likelihood of confusion with Complainant’s mark to try to attract Internet users for commercial gain, pursuant to Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).

In addition, the Panel holds that, since Complainant was the original holder of the <universalformclamp.com> domain name, Respondent’s subsequent registration creates a presumption of bad faith.  Absent a Response from Respondent, the Panel holds that Respondent’s registration of the <universalformclamp.com> domain name, which Complainant previously held, is bad faith registration and use.  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).

The Panel finds that Complainant has sufficiently established Policy ¶ 4(a)(iii).

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 <universalformclamp.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  May 14, 2004

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