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Generic Top Level Domain Name (gTLD) Decisions |
SiteComp, Inc. v. Modern Limited-Cayman
Web Development
Claim
Number: FA0405000280552
Complainant is SiteComp, Inc. (“Complainant”),
represented by Mark Thieroff, of Siegel Brill Greupner Duffy & Foster, P.A., 100 Washington Ave. S., Suite 1300,
Minneapolis, MN 55401. Respondent is Modern Limited-Cayman Web Development (“Respondent”), P.O. Box 908, George Town,
Grand Cayman, Cayman Islands.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sitecomp.com>, registered with Address
Creation.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 27, 2004; the Forum
received a hard copy of the Complaint
on May 28, 2004.
On
June 3, 2004, Address Creation confirmed by e-mail to the Forum that the domain
name <sitecomp.com> is registered with Address Creation and that
Respondent is the current registrant of the name. Address Creation has verified
that
Respondent is bound by the Address Creation 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
June 3, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 23, 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@sitecomp.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 28, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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 <sitecomp.com>
domain name is identical to Complainant’s SITECOMP mark.
2. Respondent does not have any rights or
legitimate interests in the <sitecomp.com> domain name.
3. Respondent registered and used the <sitecomp.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
SiteComp, Inc., sells software for computation and drafting in the fields of
civil engineering, land surveying, and planning
and provides training and
technical support for that software. Complainant registered the SITECOMP mark
on July 2, 2002, (Reg. No.
2,587,382), originally filing on July 7, 2000, with
the U.S. Patent and Trademark Office (“USPTO”).
Respondent,
Modern Limited—Cayman Web Development, registered <sitecomp.com>
on March 20, 2002. Respondent is using
the disputed domain name to refer Internet users to a search engine. The disputed domain name leads Internet
users to a page displaying search results relating to “design firms.”
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.
Complainant has
rights in the SITECOMP mark as established by 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).
In addition,
while Complainant’s trademark registration does not pre-date Respondent’s
domain name registration, the Panel construes
Complainant’s filing date to
establish that Complainant’s rights in the SITECOMP mark predate Respondent’s
registration of the <sitecomp.com> domain name. See FDNY Fire Safety Educ. Fund, Inc. v.
Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that
Complainant’s rights in the FDNY mark relate back to the date that its
successful
trademark registration was filed with the U.S. Patent and Trademark
Office); 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).
Respondent’s <sitecomp.com>
domain name is identical to Complainant’s SITECOMP mark. The only difference is the omission of the
“.com” generic top-level domain, which does not distinguish the domain name
from the mark. See Interstellar Starship Services Ltd. v. EPIX,
Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the
same mark" as EPIX); see also 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).
Therefore, the
Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not responded to this Complaint.
Therefore, the Panel may accept all reasonable assertions 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 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
is using the disputed domain name to provide links to websites that offer
similar services. Wholly incorporating
another’s mark in a domain name to offer competing services is not a bona fide
offering of goods or services,
pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use, pursuant to Policy ¶ 4(c)(iii). 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 Ameritrade Holdings Corp. v. Polanski, FA 102715
(Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed
domain name to redirect Internet users
to a financial services website, which
competed with Complainant, was not a bona fide offering of goods or services).
There is nothing
in the record, including Respondent’s WHOIS domain name registration
information, which indicates that Respondent
is commonly known by <sitecomp.com>,
pursuant to Policy ¶ 4(c)(ii). 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).
Therefore, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
appropriating Complainant’s mark in a domain name to offer links to competing
services. Appropriating another’s mark
to offer competing services constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent
has used the domain name to
promote competing auction sites); see also 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).
Respondent is
also wholly appropriating Complainant’s mark in the <sitecomp.com>
domain name and directs Internet users to a search engine that links to
commercial websites. Creating a
likelihood of confusion for commercial gain is bad faith pursuant to Policy ¶
4(b)(iv). See Bank of Am. Corp. v.
Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating
that “[s]ince the disputed domain names contain entire versions of
Complainant’s
marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become
confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered
and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); 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)).
Therefore, the
Panel finds that 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 <sitecomp.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 12, 2004
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