William H. Ross, III, and Office Playground Inc. v. 1&1 Internet, Inc.
Claim Number: FA0707001036272
Complainant is William H. Ross, III and Office
Playground Inc. (“Complainant”),
represented by John W. Dozier, Jr., of Dozier Internet Law P.C., 301 Concourse Blvd., West Shore III,
Suite 300, Glen Allen, VA 23059.
Respondent is 1&1 Internet, Inc. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <officeplaygrounds.com> and <oficeplayground.com>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2007.
On July 16, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <officeplaygrounds.com> and <oficeplayground.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 16, 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 postmaster@officeplaygrounds.com and postmaster@oficeplayground.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 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <officeplaygrounds.com> and <oficeplayground.com> domain names are confusingly similar to Complainant’s OFFICE PLAYGROUND mark.
2. Respondent does not have any rights or legitimate interests in the <officeplaygrounds.com> and <oficeplayground.com> domain names.
3. Respondent registered and used the <officeplaygrounds.com> and <oficeplayground.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used the OFFICE PLAYGROUND mark in connection with office toys such as stress relievers, executive toys, desk toys, etc., since it registered the <officeplayground.com> domain name and established its online business on April 26, 1999. Complainant has registered the OFFICE PLAYGROUND mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,451,921 issued May 15, 2001).
Respondent’s <officeplaygrounds.com> and <oficeplayground.com> domain names were registered on March 14, 2007. The disputed domain names redirect online traffic to the <klearconnect.com> domain name. This website then once again automatically redirects online traffic to <kleargear.com>. The website that resolves from that domain name is a direct competitor of Complainant, offering the same and similar goods and services as those offered under Complainant’s OFFICE PLAYGROUND 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 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.
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 VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the
Complaint. The Panel thus presumes that
Respondent has no rights or legitimate interests in the <officeplaygrounds.com> and <oficeplayground.com>
domain names, but will still consider
all the available evidence with respect to the factors listed in Policy ¶ 4(c)
before making its final 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 either the <officeplaygrounds.com> or the <oficeplayground.com>
domain names. 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 <officeplaygrounds.com> and <oficeplayground.com> domain names are each misspellings of the Complainant’s OFFICE PLAYGROUND mark and both redirect Internet users to a website that offers the same and similar goods and services as those offered under the Complainant’s mark. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names because the Respondent is not using the domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4 (c)(iii), respectively. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Encyclopedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain names are confusingly similar to
Complainant’s mark. The Panel finds that
these registrations of confusingly similar domain names constitute a pattern of
bad faith registration and use by the Respondent pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the Policy ¶
4(b)(ii)); see also EPA European Pressphoto Agency B.V. v.
Respondent’s <officeplaygrounds.com> and <oficeplayground.com> domain names are misspellings of Complainant’s mark. An Internet user who makes the error of typing one of these misspellings into their web-browser instead of the correct version of Complainant’s mark is diverted to Respondent’s commercial website. As such, the Panel finds that the disputed domain names were registered for the purpose of disrupting the business of Complainant and as such were done in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also 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).
Respondent is using confusingly similar domain names, which
are intentional misspellings of Complainant’s mark, to redirect Internet users
to its own commercial website that offers the same and similar goods and
services as those offered under Complainant’s mark. The Panel finds that is further evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist
Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that
were identical or confusingly similar to the complainant’s mark to redirect
users to a website that offered services similar to those offered by the
complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
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 <officeplaygrounds.com> and <oficeplayground.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 31, 2007
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