DECISION

Dicota GmbH v. Distribuidora de Computo y Telecomunicaciones, SA de CV a/k/a Hugo Dicotsa.com

Claim Number:  FA0405000273865

PARTIES

Complainant is Dicota GmbH (“Complainant”), represented by Russell J. DePalma of Lynn Tillotsen & Pinker L.L.P., 750 N. St. Paul, Suite 1400, Dallas, TX 75201.  Respondent is Distribuidora de Computo y Telecomunicaciones, SA de CV a/k/a Hugo Dicotsa.com (“Respondent”), Av. Del Rio No. 25, Col Bosques de Mexico, Tlalnepantla, Mexico 00000.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dicotsa.com>, registered with Wild West Domains, Inc.

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.

Sandra Franklin as Panelist.

           

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 17, 2004; the Forum received a hard copy of the Complaint on May 19, 2004.

On May 20, 2004, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <dicotsa.com> is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 May 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 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@dicotsa.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 June 18, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <dicotsa.com> domain name is confusingly similar to Complainant’s DICOTA mark.

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

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

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

FINDINGS

Complainant, Dicota GmbH, is a manufacturer and supplier of mobile computing products, including carrying cases and accessories for notebook computers. 

Complainant holds numerous trademark registrations in multiple countries for the DICOTA mark, including a registration with the United States Patent and Trademark Office (Reg. No. 2,231,023 issued March 9, 1999). 

Complainant owns a registration for the <dicota.com> domain name.

Respondent registered the disputed domain name on February 5, 2004.  Although the disputed domain name resolves to a page that says it is “under construction,” the website also features advertisements and mentions Respondent’s company. 

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 established with extrinsic proof in this proceeding that it has rights to the DICOTA mark through registration with the United States Patent and Trademark Office and with trademark offices in numerous other countries, and by continued use of the mark since at least 1999.  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.

The <dicotsa.com> domain name registered by Respondent is confusingly similar to Complainant’s DICOTA mark, because the domain name incorporates Complainant’s mark in its entirety and deviates from it only by adding the letter “s” with the mark.  Furthermore, the words sound so phonetically similar that the domain name would likely cause confusion in the minds of consumers.  The mere addition of a letter to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See 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; see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) finding that the pronunciation and spelling between the domain name <venesign.com> and Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer; see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the <dicotsa.com> domain name, which contains Complainant’s mark in its entirety.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name.

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint 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 Complain.”); 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 is using the <dicotsa.com> domain name to redirect Internet users to a website that features advertising for several companies.  Respondent’s use of a domain name that is confusingly similar to Complainant’s DICOTA mark to redirect Internet users interested in Complainant’s products to a commercial website that offers advertisements unrelated to Complainant’s products and services is not a use in connection with 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 FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website; see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) finding holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name.

Moreover, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <dicotsa.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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 interests 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 Policy ¶ 4(a)(ii) has been satisfied.   

Registration and Use in Bad Faith

Respondent registered the <dicotsa.com> domain name for commercial gain.  Respondent’s domain name diverts Internet users wishing to search under Complainant’s well-known mark to Respondent’s commercial website through the use of a domain name confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  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 was using the confusingly similar domain name to attract Internet users to its commercial website; 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).

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith registration and use.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances.”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

Respondent’s registration of a domain name that includes a slight misspelling of Complainant’s well-known registered mark suggests that Respondent knew of Complainant’s rights in the DICOTA mark.  Furthermore, Complainant is in the laptop computer accessories business, while Respondent’s business involves computers and telecommunications equipment.  Thus, Respondent was likely aware of Complainant’s well-known mark when Respondent registered the disputed domain name.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”; see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration; see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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

Sandra Franklin, Panelist

Dated:  June 30, 2004

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