Savage Systems, Inc. v. Lorna Kang
Claim Number: FA0111000102480
Complainant is Savage Systems, Inc., Oak Grove, LA (“Complainant”) represented by Jack E. Morris. Respondent is Lorna Kang, Perak, MALAYSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <savagearchery.com>, registered with DotRegistrar.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 19, 2001; the Forum received a hard copy of the Complaint on November 26, 2001.
On November 27, 2001, DotRegistrar confirmed by e-mail to the Forum that the domain name <savagearchery.com> is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar 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 November 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 19, 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 email@example.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 Forum transmitted to the parties a Notification of Respondent Default.
On December 28, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
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 <savagearchery.com> domain name is confusingly similar to Complainant's mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Since 1990, Complainant has used the SAVAGE and SAVAGE SYSTEMS mark in commerce in relation to archery equipment. Complainant, since 1999, used the SAVAGE ARCHERY mark in connection with the sale of its archery equipment online.
Complainant held registration of <savagearchery.com> from 1999 to November 8, 2001. The website was lost due to an unexpected lapse in registration which was the fault of its third party provider <register.com>.
Respondent registered the disputed domain name on November 8, 2001, the very same day Complainant's registration lapsed. Respondent has linked the domain to <half.com>. Any Internet user who goes to <savagearchery.com> expecting to find Complainant's goods will be diverted to <half.com>. The <half.com> website features goods which are in direct competition with Complainant's. Respondent is not the owner of <half.com>. It is owned by eBay Inc. It can be inferred that Respondent is receiving revenue for every person diverted to <half.com> because eBay, Inc. and Half.com, Inc. have similar commercial relationships with other people who divert Internet users to their websites.
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, through continuous and extensive use has established that it has rights in the SAVAGE, SAVAGE SYSTEMS and SAVAGE ARCHERY marks. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n 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).
Furthermore, the <savagearchery.com> domain name is identical to Complainant's SAVAGE ARCHERY mark because it incorporates the entirety of Complainant's mark and merely adds a top-level ".com". The addition of a top-level indicator such as ".com" is not enough to defeat a claim of identical or confusing similarity. 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 Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. 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”).
Respondent registered the disputed domain name after Complainant lost its own registration due to the fault of a third party. It can be inferred that Respondent had knowledge that the disputed domain name previously belonged to Complainant, and therefore that Internet user confusion would result from Respondent's use. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name). Furthermore, Respondent does not have any rights or legitimate interests in the domain name because Respondent's use of the domain name to divert Internet users interested in Complainant to another website is not a bona fide offering of goods pursuant of Policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <savagearchery.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <savagearchery.com> domain name is identical to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <savagearchery.com> domain name despite it being identical is evidence of bad faith pursuant to Policy ¶ 4(c)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Based on the circumstances it can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from using its SAVAGE ARCHERY mark in a corresponding domain name. This behavior is evidence of bad faith pursuant to Policy ¶ 4(c)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).
Respondent's use of Complainant's mark is a misappropriation of Complainant's goodwill. See National Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names “friendsofnra.com”, “friendsofnra.net”, and “friendsofnra.org” with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website.
Respondent is using a confusingly similar domain name in order to divert Internet users to a website that sells goods that directly compete with Complainant's goods. It can be inferred that Respondent registered the disputed domain name in order to disrupt Complainant's business which is evidence of bad faith according to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business); see also Southern Exposure v. Southern 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).
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 <savagearchery.com> be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 31, 2001
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