DECISION

Goldfinger Coin & Bullion, Inc. v. Patrick Sarker

Claim Number:  FA0404000251422

PARTIES

Complainant is Goldfinger Coin & Bullion, Inc. (“Complainant”), represented by Glenn J. Dickinson, 1000 Town Center Dr., 6th Fl., Oxnard, CA 93031.  Respondent is Patrick Sarker (“Respondent”), Ul. Straszewskiego 8/4, Krakow, n/a 31-101, Poland.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <e-currency.com>, registered with Go Daddy Software, 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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

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

On April 12, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <e-currency.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 4, 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@e‑currency.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 21, 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.

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 <e-currency.com> domain name is identical to Complainant’s E-CURRENCY mark.

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

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

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

FINDINGS

Complainant, Goldfinger Coin and Bullion, Inc., offers its customers the ability to use E-CURRENCY for the purpose of consummating transactions and exchanging funds among account holders.  Complainant registered the E-CURRENCY mark (Reg. No. 2,590,962) on July 9, 2002 with the U.S. Patent and Trademark Office (“USPTO”).

Respondent, Patrick Sarker, registered the <e-currency.com> domain name on November 25, 2003.  The disputed domain name resolves to a website that appropriates the term “e-currency” to describe its offering of services.  It reads as follows:

WHAT IS E-CURRENCY?

E-currency is the cyber equivalent of spending paper currency on the Internet.  There is complete user anonymity unless the user wants to reveal themselves.  In addition, the encoding system prevents others from stealing or using any information about the user’s account.

            E-currency is an electronic, world wide [sic] currency for the world wide [sic] web.  It is an online payment system that combines money, gold or other precious metals with Internet based technology to provide a safe, easy and inexpensive way for anyone to transact business 24 hours a day.  It is the future for online transactions.

In addition, the website includes a link for those interested in purchasing the domain name registration: “Interested in Domain E-Currency.com.”

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

Under the Policy, Complainant has established rights in the E-CURRENCY mark because of its registration with the USPTO.  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 <e-currency.com> domain name is identical to Complainant’s E‑CURRENCY mark.  The only difference is the addition of the “.com” generic top-level domain (“gTLD”), which does not significantly distinguish the domain name from the mark.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as EPIX).

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

Rights or Legitimate Interests

Respondent has not filed a Response.  In light of the absence of a Response, the Panel may accept any reasonable assertions by Complainant as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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 appropriating Complainant’s mark to market Complainant’s services as its own.   Respondent’s unauthorized use of the disputed domain name to offer Complainant’s services does not demonstrate a bona fide offering of services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair-use, pursuant to Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

There is nothing in the record, including the WHOIS domain name registration information, which establishes that Respondent is otherwise known as <e‑currency.com>.  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 established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is wholly appropriating Complainant’s mark to offer Complainant’s trademarked service.  Its website explains what E-CURRENCY is as well as implying proprietary ownership of the service: “There is complete user anonymity unless the user wants to reveal themselves . . . .  It is the future of online transactions.”  The Panel finds that Respondent is appropriating Complainant’s mark primarily for the purpose of disrupting Complainant’s business, pursuant to Policy ¶ 4(b)(iii).  See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business).

In addition, by appropriating Complainant’s mark and selling what looks to be Complainant’s services, the Panel finds that Respondent is creating confusion as to the source of the service for commercial gain, pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant).

The Panel finds that Complainant has 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 <e-currency.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  June 4, 2004

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