national arbitration forum

 

DECISION

 

The Hazelden Foundation v. Decision Point, Inc.

Claim Number: FA0707001036499

 

PARTIES

Complainant is The Hazelden Foundation (“Complainant”), represented by Gerald E. Helget, of Briggs and Morgan, P.A., 2200 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402.  Respondent is Decision Point, Inc (“Respondent”), 315 W. Goodwin Street, Prescott, AZ 86303.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

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 <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> 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 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 14, 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@hazeldentv.com, postmaster@hazeldentv.org, and postmaster@hazeldentv.tv by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names are confusingly similar to Complainant’s HAZELDEN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names.

 

3.      Respondent registered and used the <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, the Hazelden Foundation, is a Minnesota corporation that operates one of the world’s largest, most respected, and best-known private alcohol, drug, and addiction rehabilitation centers in the world.  Complainant has conducted business under the HAZELDEN mark for more than 50 years in connection with treatment and continuing care services, professional education and training programs, international publishing, addiction research, and public policy advocacy.  Complainant holds a trademark registration for the HAZELDEN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,402,927 issued July 29, 1986).  Complainant also operates a website located at the <hazelden.org> domain name.

 

Respondent, Decision Point, Inc., is an Arizona corporation that also offers addiction treatment services.  Respondent registered the <hazeldentv.com> and <hazeldentv.tv> domain names on May 15, 2007 and the <hazeldentv.org> domain name on June 10, 2007.  Respondent’s disputed domain names each resolve to similar websites indicating that they are “parked” pages sponsored by the registrant.  All of these websites contain links to third-party websites, some of which are in direct competition with Complainant’s addiction and treatment programs and services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of the HAZELDEN mark with the USPTO sufficiently establishes its 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

Respondent’s <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names are confusingly similar to Complainant’s HAZELDEN mark.  The disputed domain names fully incorporate the HAZELDEN mark, merely adding the generic term “tv” onto the mark.  Previous panels have found, and this Panel so finds, that adding a generic term to a mark does not remove any confusing similarity between a disputed domain name and a corresponding mark.  Moreover, the additions of the generic top-level domains “.com” and “.org” and the country code top-level domain “.tv” to the disputed domain names are irrelevant under Policy ¶ 4(a)(i), as a top-level domain is a required element of all domain names.  Thus, the Panel finds that the <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names are confusingly similar to Complainant’s HAZELDEN mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to the complainant’s CLAIROL marks).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names.  Under Policy ¶ 4(a)(ii), the initial burden lies with Complainant to prove this allegation.  However, once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names.  Here, the Panel finds that Complainant has established a prima facie case under the Policy.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).

 

Respondent’s failure to answer the Complaint raises the presumption that Respondent lacks rights or legitimate interests in the disputed domain names.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).  However, the Panel will still examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). 

 

Respondent’s <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names each resolve to websites featuring a variety of links to third-party websites in direct competition with Complainant.  The Panel presumes that Respondent earns click-through fees when Internet users click on these links.  This qualifies as 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), and indicates Respondent’s lack of rights and legitimate interests in the disputed domain names.  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

In addition, Complainant alleges that Respondent is not commonly known by the disputed domain names, which further indicates Respondent’s lack of rights and legitimate interests in the disputed domain names.  The Panel agrees, as there is nothing in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is known by the <hazeldentv.com>, <hazeldentv.org>, or <hazeldentv.tv> domain names.  Respondent is not authorized by Complainant to use the HAZELDEN mark for any purpose.  The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to 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).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names resolve to websites featuring various third-party links, some of which are in direct competition with Complainant.  The Panel finds that this constitutes a disruption of Complainant’s business and is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); 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).

 

The Panel infers that Respondent benefits commercially when Internet users click on the links contained on the websites that resolve from the <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names.  Respondent is therefore capitalizing on the likelihood that Internet users, seeking Complainant’s services, will be confused as to Complainant’s affiliation with the disputed domain names.  This is further evidence that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).  See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also 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).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hazeldentv.com>, <hazeldentv.org>, and  <hazeldentv.tv> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  September 2, 2007

 

 

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