Goldfish Card Services Limited v. M Connolly
Claim Number: FA0706001000020
Complainant is Goldfish Card Services Limited (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133
Avenue of the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goldfishcreditcard.com>, registered with Fabulous.com Pty Ltd.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2007.
On June 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2007 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <goldfishcreditcard.com> domain name is confusingly similar to Complainant’s GOLDFISH mark.
2. Respondent does not have any rights or legitimate interests in the <goldfishcreditcard.com> domain name.
3. Respondent registered and used the <goldfishcreditcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Goldfish Card
Services Limited, is a financial entity that was formerly known as Morgan
Stanley Card Services Limited. Complainant
and its predecessor-in-interest have been offering services under the GOLDFISH
mark since at least 1996 in the
Respondent registered the <goldfishcreditcard.com>
domain name on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 asserts rights in the GOLDFISH mark by virtue of trademark registrations with various trademark authorities, including the UK IPO and OHIM. The Panel finds that Complainant’s registration of the GOLDFISH mark with these authorities sufficiently conveys rights in the mark to Complainant for the purposes of Policy ¶ 4(a)(i). See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Orange Glo Int’l v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with entities including the Office for Harmonization in the Internal Market (“OHIM”)).
The Panel finds that Respondent’s <goldfishcreditcard.com> domain name is confusingly similar to Complainant’s GOLDFISH mark under Policy ¶ 4(a)(i). The addition of the terms “credit” and “card,” which have an obvious relationship to Complainant’s mark, do not distinguish the disputed domain name from Complainant’s mark. Moreover, the addition of the generic top-level domain (“gTLD”) “.com” also does not sufficiently distinguish the disputed domain name from Complainant’s mark as a top-level domain is a required element of all Internet domain names. Accordingly, the <goldfishcreditcard.com> domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must establish a prima facie case that Respondent lacks rights and legitimate interests in the <goldfishcreditcard.com> domain name under the requirements of Policy ¶ 4(a)(ii). The Panel finds that Complainant has met this burden, and accordingly, the burden is shifted to Respondent to put forth evidence that it possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Although Respondent’s failure to respond allows for the
Panel to assume that Respondent lacks rights and legitimate interests in the
disputed domain name, the Panel chooses to examine all evidence before it to
determine whether Respondent has rights or legitimate interests in the <goldfishcreditcard.com> domain name
under any of the aspects of Policy ¶ 4(c).
See Talk City, Inc. v. Robertson,
Respondent’s WHOIS information does not indicate that
Respondent is commonly known by the <goldfishcreditcard.com>
domain name, and there is no other information in the record to indicate that
Respondent is or has ever been known by the disputed domain name. Moreover, Complainant asserts that Respondent
is not authorized to use Complainant’s GOLDFISH mark and that Respondent is not
associated with Complainant in any way.
In Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights
or legitimate interests where the respondent was not commonly known by the mark
and had never applied for a license or permission from the complainant to use
the trademarked name. See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum
The evidence presented shows that Respondent is using the disputed domain name to host a website that displays hyperlinks to third-party websites in direct competition with Complainant, presumably for Respondent’s own commercial benefit through the accrual of click-through fees. Such use of the <goldfishcreditcard.com> domain name, which is confusingly similar to Complainant’s GOLDFISH mark, is 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). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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 also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <goldfishcreditcard.com> domain name to redirect Internet users attempting to locate Complainant’s website to Respondent’s own website, where hyperlinks to third-party websites in direct competition with Complainant are displayed, constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Additionally, the use of the disputed domain name to display hyperlinks to third-party competitors of Complainant indicates that Respondent registered the <goldfishcreditcard.com> domain name to commercially gain from a likelihood of confusion between the disputed domain name and corresponding website and Complainant’s affiliation with the disputed domain name and website. Accordingly, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <goldfishcreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 11, 2007
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