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Generic Top Level Domain Name (gTLD) Decisions |
Dinn Bros., Inc. v. LaPorte Holdings,
Inc.
Claim
Number: FA0411000370910
Complainant
is Dinn Bros., Inc. (“Complainant”),
represented by Michael Dinn, 221 Interstate Drive, West
Springfield, MA 01089. Respondent is LaPorte Holdings, Inc. (“Respondent”), Attn: dinntrophies.com, c/o
Nameking, Inc., 2202 S. Figueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <dinntrophies.com>,
registered with Nameking.com, Inc.
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.
Complainant submitted a Complaint to the
National Arbitration Forum electronically on November 23, 2004; the National
Arbitration
Forum received a hard copy of the Complaint on December 3, 2004.
On December 3, 2004, Nameking.com, Inc.
confirmed by e-mail to the National Arbitration Forum that the domain name <dinntrophies.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 13, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"),
setting a deadline of January 3, 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@dinntrophies.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 7, 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.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <dinntrophies.com>
domain name is confusingly similar to Complainant’s DINN BROS., INC. “THE
TROPHY PEOPLE” mark.
2. Respondent does not have any rights or
legitimate interests in the <dinntrophies.com> domain name.
3. Respondent registered and used the <dinntrophies.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant,
Dinn Bros., Inc., has been selling trophies since 1956. Complainant has registered the DINN BROS.,
INC. “THE TROPHY PEOPLE” mark with the United States Patent and Trademark
Office (“USPTO”)
(Reg. No. 1,687,907 issued March 10, 1992). Complainant is the registered owner of the
<dinntrophy.com> domain name and has used this domain name in conjunction
with its
business since 1996.
Respondent
registered the <dinntrophies.com> domain name on November 25,
2002. Respondent’s domain name resolves
to a website featuring links to Complainant’s competitors.
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 established rights in the DINN BROS., INC. “THE TROPHY PEOPLE” mark through
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
<dinntrophies.com> domain name is confusingly similar to
Complainant’s DINN BROS., INC. “THE TROPHY PEOPLE” mark. Respondent’s domain main incorporates the
primary elements of Complainant’s mark, specifically the name “Dinn” and the term
“trophy,”
which Respondent changes to the plural form, “trophies.” The omission of the non-primary elements of
Complainant’s mark as well as the change of the term “trophy” from the singular
to plural
form is insufficient to negate the confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy
¶
4(a)(i). See Down E. Enter. Inc. v. Countywide Communications,
FA 96613 (Nat. Arb. Forum Apr. 5, 2001) finding the domain name
<downeastmagazine.com> confusingly similar to Complainant's
common law
mark DOWN EAST, THE MAGAZINE OF MAINE; see
also Hammond Suddards Edge
v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) finding that the
domain name, "hammondsuddards.net," is essentially identical to
Complainant's
mark, Hammond Suddards Edge, where the name "Hammond
Suddards" identifies Complainant independently of the word
"Edge";
see also WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) finding that the <westjets.com>
domain name is confusingly similar to Complainant’s
mark, where Complainant
holds the WEST JET AIR CENTER mark; 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 Cream Pie
Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (“[T]he addition
of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent
the likelihood of confusion caused by the use of the remaining identical mark.
The domain name <creampies.com> is similar in
sound, appearance, and
connotation.”).
Furthermore,
the addition of the generic top-level domain “.com” and the omission of the
spaces in between the words of Complainant’s
mark is not enough to distinguish
Respondent’s domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Kioti Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant
for purposes of Policy ¶
4(a)(i).”); see also 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”.
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 <dinntrophies.com>
domain name. See Bank
of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden,
but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); 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 <dinntrophies.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) finding
that without demonstrable evidence to support the notion that a respondent is
commonly known by a domain name, the notion
must be rejected.
Moreover,
Respondent has used the <dinntrophies.com> domain name to direct
Internet users to competing websites.
Such competing use of a domain name confusingly similar to Complainant’s
mark 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 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.
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) by registering a domain name that
is confusingly similar to
Complainant’s mark and using it to market websites that compete with
Complainant. See 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; see
also Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a
domain name confusingly similar to Complainant's mark to divert Internet users
to a competitor's website.
It is a reasonable inference that Respondent's
purpose of registration and use was to either disrupt or create confusion for
Complainant's
business in bad faith pursuant to Policy ¶¶ 4(b)(iii) &
(iv).”).
Furthermore,
Respondent is capitalizing on the goodwill of Complainant’s mark by using the <dinntrophies.com>
domain name to divert Internet users to a website featuring links to Complainant’s
competitors. Since the disputed domain
name contains a confusingly similar version of Complainant’s mark, a consumer
searching for Complainant
would become confused as to Complainant’s affiliation
with the resulting website. In
addition, the Panel infers that Respondent receives click-through fees for
redirecting Internet users to these competing websites. Therefore, Respondent’s opportunistic use of
the disputed domain name represents bad faith registration and use pursuant to
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.
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 <dinntrophies.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
January 21, 2005
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