Eric Cummings dba LabSmith v. Sepuelveda Ventures
Claim Number: FA0110000100362
Complainant is Eric Cummings of LabSmith, Livermore , CA ("Complainant"). Respondent is Sepuelveda Ventures, Culver City, CA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <labsmith.com>, registered with Internet Domain Registrars.
On November 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 5, 2001; the Forum received a hard copy of the Complaint on October 11, 2001.
On October 10, 2001, Internet Domain Registrars confirmed by e-mail to the Forum that the domain name <labsmith.com> is registered with Internet Domain Registrars and that Respondent is the current registrant of the name. Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars 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 October 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 2001 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, 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.
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 the Respondent to the Complainant.
The <labsmith.com> domain name is identical to Complainant’s LABSMITH mark.
Respondent has no rights or legitimate interests in respect to <labsmith.com>.
Respondent registered <labsmith.com> in bad faith.
No Response received.
Complainant has common law rights to the LABSMITH mark and has used the mark since 1996. Complainant used <labsmith.com> as its official website from 1997-2000. Complainant’s <labsmith.com> registration lapsed; as a result, Complainant attempted to re-register the domain name in January 2001 but found that Respondent had registered the domain name.
Complainant subsequently attempted to contact Respondent but received no response. Complainant then created a new site at <lab-smith.com> in September 2001. Respondent, then, redirected the <labsmith.com> domain name to a hardcore pornography site located at <girls.com>. According to <girls.com>, Respondent has no affiliation with <girls.com>, nor can they prevent Respondent from re-directing <labsmith.com> to their website.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 has common law rights in the LABSMITH mark because it has used the name for its sale of laboratory equipment since 1996. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (finding that "On account of long and substantial use of the said name ["keppelbank.com"] in connection with its banking business, it has acquired rights under the common law).
Respondent’s <labsmith.com> domain name is identical to Complainant’s LABSMITH common law mark. The addition of a top level of a domain name such as ".com" does not sufficiently distinguish the domain name from the Complainant’s common law mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Minnesota Mining & Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998) ("post-it.com" and "Post-It" are the same).
The Panel finds that policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent does not have any rights or legitimate interests in <labsmith.com> because it does not use it for a bona fide offering of goods. Respondent’s use of the identical domain name as a link to a pornographic website is not a bona fide offering of goods. See Nat’l Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to a pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).
Respondent does not have any rights or legitimate interests in <labsmith.com> because it is not commonly known by the LABSMITH name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent does not have any rights or legitimate interests in <labsmith.com> because using the Complainant’s name to direct users to a third party site is not a legitimate or fair use. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s redirection of <labsmith.com> to a pornographic site is evidence of bad faith. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that "this association with a pornographic web site can itself constitute bad faith").
Respondent’s affiliation with a company that has a pattern of using infringing domain names is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <labsmith.com> be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: November 23, 2001
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