Brenda Gilchrist v. Joyce Forier
Claim Number: FA0706001024234
Complainant is Brenda Gilchrist (“Complainant”), represented by Zachary
D. Messa, of Johnson, Pope, Bokor, Ruppel & Burns,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trichik.com>, registered with Go Daddy Software, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 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 email@example.com 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 <trichik.com> domain name is confusingly similar to Complainant’s TRICHIC mark.
2. Respondent does not have any rights or legitimate interests in the <trichik.com> domain name.
3. Respondent registered and used the <trichik.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brenda Gilchrist, is an accomplished female
triathlete who owns and operates Trichic, a sole proprietorship that offers
triathlon training and services targeted specifically to women. Complainant registered the <trichic.com>,
<trichic.org>, and <trichic.net> domain names in 2003 and currently
offers its triathlon services through a website that resolves from those domain
names. Complainant has sponsored
triathlons, offered triathlon training camps for women, and promoted its
services in various magazines under the TRICHIC mark continuously since
2003. Complainant also holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the TRICHIC mark (Reg. No. 3,217,624 issued
Respondent, Joyce Forier, also a female triathlete,
registered the <trichik.com> domain
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’s registration of the TRICHIC mark with the USPTO indicates that Complainant has rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Under the UDRP, however, Complainant is not required to own
a trademark registration to establish rights in the TRICHIC mark. See
Complainant has also
established common law rights in the TRICHIC mark that predate Respondent’s
registration of the <trichik.com> domain
name through continuous and extensive use of the mark in connection with
triathlon services since 2003. Complainant’s business is well known in the
triathlon and endurance racing industry and Complainant has expended a great
deal of effort through high-profile sponsorship and promotional activities. Moreover, Complainant’s trademark
registration with the USPTO indicates that Complainant has used the TRICHIC
mark in commerce since 2003. Therefore,
the Panel finds that the mark has acquired secondary meaning sufficient to
establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
domain name is confusingly similar to Complainant’s TRICHIC mark, as it
simply substitutes the letter “k” for the final letter “c” in the mark. Previous panels have found, and this Panel so
finds, that such a common misspelling of a mark does not negate any confusing
similarity between a mark and a corresponding domain name. Also, the addition of the generic top-level
domain “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level
domain is a required element of all domain names. Thus, the Panel finds that the <trichik.com> domain name is
confusingly similar to Complainant’s TRICHIC mark. 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 the complainant’s marks); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May
29, 2001) (finding the <belken.com> domain name confusingly similar to
the complainant's BELKIN mark because the name merely replaced the letter “i”
in the complainant's mark with the letter “e”); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”); see
also Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <trichik.com> domain name. Once Complainant has established a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has made a prima facie case under the Policy. 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on Respondent’s failure to answer the Complaint, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will still examine all evidence in the record to determine if Respondent has rights or legitimate interests in the <trichik.com> domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <trichik.com> domain name, which indicates Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent’s WHOIS information does not indicate, and there is nothing further in the record to suggest, that Respondent is commonly known by the <trichik.com> domain name. Furthermore, Complainant has not authorized or licensed Respondent to use the TRICHIC mark in any way. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <trichik.com> domain name resolves to a website offering triathlon services in direct competition with Complainant. The Panel presumes that Respondent accrues some financial benefit when Internet users take advantage of the services offered at Respondent’s website. Such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and is further evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the complainant has not licensed or otherwise permitted the respondent to use any of its trademarks, and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the complainant, demonstrate that the respondent lacks rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <trichik.com>
domain name to redirect Internet users to its own website, which offers
triathlon training and promotional services in direct competition with
Complainant. This constitutes a
disruption of Complainant’s business and qualifies as bad faith registration
and use of the disputed domain name under Policy ¶ 4(b)(iii). See
Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between the complainant and
the respondent, the respondent likely registered the contested domain name with
the intent to disrupt the complainant's business and create user confusion); see also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Respondent’s <trichik.com> domain name, which is confusingly similar to Complainant’s TRICHIC mark, redirects Internet users to Respondent’s competing website. The Panel infers that Respondent benefits commercially when users choose to take advantage of the services offered on this website. Respondent is thus capitalizing on the likelihood that Internet users seeking Complainant’s services will confuse the source of the disputed domain name as being affiliated with Complainant. This also indicates that Respondent registered and is using the <trichik.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Furthermore, after receiving a cease-and-desist letter, Respondent offered to sell the <trichik.com> domain name to Complainant for $3,000, an amount greater than its out-of-pocket costs. This is further evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
The Panel finds that Policy ¶ 4(a)(ii) 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 <trichik.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
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