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Generic Top Level Domain Name (gTLD) Decisions |
Park Li Management Simulations, Inc.
d/b/a Management Simulations Inc. v. LaPorte Holdings, Inc. c/o NameKing.com
Claim
Number: FA0411000363984
Complainant is Park Li Management Simulations, Inc. d/b/a Management Simulations Inc. (“Complainant”), represented by Maureen Beacom Gorman, of MB Gorman Law, P.C.,
PO Box 144, Forest Park, IL 60130.
Respondent is LaPorte Holdings,
Inc. c/o NameKing.com (“Respondent”), 2202 S.
Figueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <capism.com>, registered with Nameking.com,
Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
15, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 15, 2004.
On
November 15, 2004, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <capism.com> is registered
with Nameking.com, Inc. and that Respondent is the current registrant of the
name. Nameking.com, Inc. has verified
that Respondent is bound by the Nameking.com,
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
November 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 13, 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@capism.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 21, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Hon.
Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <capism.com>
domain name is confusingly similar to Complainant’s CAPSIM and CAPSIM.COM
marks.
2. Respondent does not have any rights or
legitimate interests in the <capism.com> domain name.
3. Respondent registered and used the <capism.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
produces and sells educational software under the CAPSIM and CAPSIM.COM
marks. Complainant has registered its
CAPSIM (Reg. No. 2,841,606, filed June 28, 2002, registered May 11, 2004) and
CAPSIM.COM (Reg. No.
2,882,005, filed March 8, 2000, registered September 7,
2004) marks with the United States Patent and Trademark Office (“USPTO”). Complainant has used both marks continuously
in commerce since 1995.
Respondent
registered the <capism.com> domain name on April 10, 2003. Respondent’s domain name resolves to a
search engine website featuring links to competing educational software
companies and products.
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
established rights in the CAPSIM and CAPSIM.COM marks through registration with
the USPTO and through continuous use of
the marks in commerce since 1995. 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.).
Furthermore,
although Respondent registered the <capism.com> domain name before
Complainant’s trademark registrations for the CAPSIM and CAPSIM.COM marks were
issued, Complainant’s rights in
the marks date back to Complainant’s filing
dates of the applications for registration.
Thus, Complainant had rights in the CAPSIM and CAPSIM.COM marks prior to
Respondent’s registration of the disputed domain name. See FDNY Fire Safety Educ. Fund,
Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding
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).
Moreover,
Respondent’s <capism.com> domain name is confusingly similar to
Complainant’s CAPSIM and CAPSIM.COM marks.
Respondent’s domain name incorporates Complainant’s marks in their
entirety and merely transposes the letters “s” and “i.” Such minor alterations are insufficient to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Google Inc.
v. Jon G., FA 106084 (Nat. Arb. Forum Apr.
26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s
GOOGLE mark and
noting that “[t]he transposition of two letters does not create
a distinct mark capable of overcoming a claim of confusing similarity,
as the
result reflects a very probable typographical error”); see also Pier 1
Imps., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to Complainant's PIER 1 mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of complainant’s reasonable allegations and inferences as
true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make reasonable
inferences
in favor of a complainant and accept complainant’s allegations as
true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s marks.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name 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 Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the mark precede Respondent’s registration; (3)
Respondent is not commonly known by the domain
name in question).
Moreover, a
registrant that uses a domain name, which is confusingly similar to a
third-party mark, to market goods or services that
directly compete with those
offered by the third party under its mark has been found to be neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s domain name resolves to a website linking to
educational software in competition with the software produced by
Complainant. Thus, Respondent’s use of
a domain name confusingly similar to Complainant’s marks 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation
of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business.”); 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).
Furthermore,
the fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s marks tends to prove that
Respondent lacks any rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Encyclopaedia
Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that
fair use does not apply where the domain names are misspellings of
Complainant's mark);
see also Nat’l Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of
redirecting consumers against their will to another site, does not
qualify as a
bona fide offering of goods or services, whatever may be the goods or services
offered at that site.”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) by registering a domain name
confusingly similar to Complainant’s
marks and using it to market competing educational software. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered
the names primarily for the
purpose of disrupting Complainant's business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent
acted in bad faith by attracting Internet users to a website that
competes with
Complainant’s business).
Furthermore,
Respondent is capitalizing on the goodwill of the CAPSIM and CAPSIM.COM marks
by using the disputed domain name to divert
Internet users to a website linking
to Complainant’s competitors. The Panel
infers that Respondent receives click-through fees for redirecting Internet
users to these competing websites.
Since the disputed domain name contains Complainant’s marks, a consumer
searching for Complainant would become confused as to Complainant’s
affiliation
with the resulting website. Therefore,
Respondent’s opportunistic use of the disputed domain name represents bad faith
registration and use under Policy ¶ 4(b)(iv).
See 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)); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site
to its own
website for commercial gain).
Moreover, the fact that Respondent’s domain name is merely a
typosquatted variation of Complainant’s marks is itself evidence of
Respondent’s
bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Nat’l Ass’n
of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off
traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith”); see also K.R. USA, Inc. v. So So
Domains, FA 180624 (Nat. Arb.
Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names were typosquatted versions of
Complainant's THE PHILADELPHIA
INQUIRER and TALLAHASSEE DEMOCRAT marks.
"Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of
typosquatting,
in which Respondent has engaged, has been deemed behavior in bad
faith.").
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <capism.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
January 4, 2005
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