national arbitration forum

DECISION

Carruth Studio, Inc. v. LaPorte Holdings, Inc.

Claim Number:  FA0412000384824

PARTIES

Complainant is Carruth Studio, Inc. (“Complainant”), represented by Gregg W. Emch, of MacMillan, Sobanski & Todd, LLC, One Maritime Plaza, Fourth Floor, 720 Water Street, Toledo, OH 43604.  Respondent is LaPorte Holdings, Inc. (“Respondent”), 2202 S. Figueroa Street, Ste. 721, Los Angeles, CA 90023.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <carruthstudios.com>, registered with Nameking.com, 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 electronically on December 16, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2004.

On December 20, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <carruthstudios.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 December 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 11, 2005 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@carruthstudios.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 January 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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.

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 <carruthstudios.com> domain name is confusingly similar to Complainant’s CARRUTH and CARRUTH STUDIO marks.

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

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

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

FINDINGS

Complainant, Carruth Studio Inc., has been using the CARRUTH and CARRUTH STUDIO marks throughout the United States and internationally in conjunction with retail and wholesale services relating to artworks and house wares since as early as 1983. 

Complainant has operated its main website at the <carruthstudio.com> domain name since 1998.

Respondent registered the <carruthstudios.com> domain name on December 6, 2003.  Respondent is using the domain name to redirect Internet users to a website that appears to host a search engine and offers a variety of links to other websites.  Some of these links lead to websites that are related to garden art and statues but also include websites for travel, leisure, weather, online banking and online shopping.

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 asserts that it is the owner of the CARRUTH and CARRUTH STUDIO marks because it has operated under those marks in commerce since 1983.  Additionally, the marks are reflected in Complainant’s business name and website located at the <carruthstudio.com> domain name, which has been in operation since 1998.  The Panel finds that Complainant has established common law rights in the marks through Complainant’s use of the marks in commerce.  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”; 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; see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) finding that Complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark. 

Respondent’s <carruthstudios.com> domain name is confusingly similar to Complainant’s CARRUTH and CARRUTH STUDIO marks because the domain name includes Complainant’s marks and only deviates with the additions of the letter “s” and the top-level domain “.com.”  The mere addition of the letter “s” and top-level domain “.com” does not negate the confusingly 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 Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark; see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant; see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied; see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark. 

Additionally, the omission of the space between “Carruth” and “Studio” in the disputed domain name does not sufficiently distinguish the domain name from Complainant’s CARRUTH STUDIO mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”; see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark; see also Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK.

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the <carruthstudios.com> domain name.  Once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name.  Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent lacks rights and legitimate interests in the disputed domain name.  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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist; see also 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.

The Panel accepts all reasonable allegations and inferences in the Complaint as true because Complainant has made a prima facie showing and Respondent has not submitted a Response.  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 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 the Complaint to be deemed true.

Respondent is using the  <carruthstudios.com> domain name to mislead Internet users to a website that appears to host a search engine and provides links to garden and statue related products and services in addition to links related to travel, weather, online banking and online shopping.  Respondent’s use of a domain name confusingly similar to Complainant’s CARRUTH and CARRUTH STUDIO marks to redirect Internet users interested in Complainant’s products to a website hosting a search engine and offering links to websites unrelated to Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) 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; see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services.

Furthermore, Respondent has not offered any evidence to suggest that Respondent is commonly known by the <carruthstudios.com> domain name.  Instead, it appears from the record that Respondent is more commonly known as LaPorte Holdings, Inc.  Therefore,  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; see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use.

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s <carruthstudios.com> domain name diverts Internet users searching under Complainant’s CARRUTH and CARRUTH STUDIO marks to Respondent’s website through the use of a domain name that is confusingly similar to Complainant’s marks.  The Panel infers that Respondent commercially benefits by receiving click-thru fees by directing Internet users to commercial websites through Respondent’s website and search engine.  Respondent’s intentional registration of a domain name containing Complainant’s marks evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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; 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); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent.

The Panel finds that Complainant fulfilled 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 <carruthstudios.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  February 4, 2005

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