Jeffery Gorman v. Cocktails For a Cause
Claim Number: FA0707001032212
Complainant is Jeffery Gorman (“Complainant”), represented by Thomas
W. Tolpin, of Welsh & Katz, Ltd, 120 S. Riverside
Plaza, 22nd Floor,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vidigreet.net>, registered with Godaddy.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 13, 2007.
On July 13, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vidigreet.net> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 July 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 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.
On August 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
On August 23, 2007, Respondent filed “Respondent’s Consent to Transfer.” This Response was received after the deadline to file a response and not in hard copy; therefore, the Panel does not consider this Response to be in compliance with ICANN Rule #5, and it will not be considered.
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 properly 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 <vidigreet.net> domain name is identical to Complainant’s VIDIGREET mark.
2. Respondent does not have any rights or legitimate interests in the <vidigreet.net> domain name.
3. Respondent registered and used the <vidigreet.net> domain name in bad faith.
B. Respondent failed to submit a compliant Response in this proceeding.
Complainant has continuously used the VIDIGREET mark in
connection with both printed, digital, and on-line greeting cards and the
domain name <vidigreet.com> that offers such products. The VIDIGREET mark is registered in numerous
jurisdictions worldwide, including in the
Respondent’s <vidigreet.net> domain name was registered on April 28, 2007. It resolves to a parked website that contains a commercial search engine and sponsored links to third parties, which offer services unrelated to those offered under Complainant’s mark.
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 compliant 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 has sufficiently established its rights in the VIDIGREET mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the UKIPO. See 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."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <vidigreet.net> domain name is identical to Complainant’s mark except for the addition of a generic top level domain (“gTLD”). A gTLD is disregarded in making an identical or confusingly similar analysis. As such, the Panel finds the disputed domain name to be identical to Complainant’s mark, pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out
a prima facie case that Respondent
has no rights or legitimate interests in the domain name at issue. See
Inc. v. VeneSign
Respondent has failed to submit a compliant Response to the Complaint. The Panel thus presumes that Respondent has no rights or legitimate interests in the <vidigreet.net> domain name, but will still consider all the available evidence with respect to the factors listed in Policy ¶ 4(c) before making this determination. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Nowhere in the record, including Respondent’s WHOIS information, does it indicate that Respondent is or ever has been commonly known by the <vidigreet.net> domain name. Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s disputed domain name is identical to Complainant’s mark and resolves to a parked website featuring a commercial search engine and sponsored links to third-parties which offer services and goods unrelated to those offered under Complainant’s mark. Moreover, the Panel presumes that Respondent is financially benefiting from the sponsored links that it displays on the disputed domain name. Consequently, the Panel finds that Respondent is not making either 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). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
domain name contains Complainant’s
mark in its entirety and resolves to a parked website that features sponsored
links to third parties that offer goods and services completely unrelated to
those offered under Complainant’s VIDIGREET mark. It is presumed that in such a case Respondent
is both financially benefiting from the use of sponsored links and creating a
likelihood of confusion between the disputed domain name and Complainant’s
mark. Consequently, the Panel finds that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vidigreet.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 29, 2007
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