1800POSTCARDS.COM, INC. v. GoCARD aka Postcard.com, Inc. aka Craig Singer
Claim Number: FA0201000103984
Complainant is 1800POSTCARDS.COM, Inc., New York, NY (“Complainant”) represented by Stephen M. Harnik of Harnik & Finkelstein. Respondent is Craig Singer aka GoCARD, Sunrise, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <800postcards.com>, registered with Tucows, Inc.
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 Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 22, 2002; the Forum received a hard copy of the Complaint on January 22, 2002.
On January 23, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <800postcards.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2002 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 February 25, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 Respondent to Complainant.
1. The disputed domain name <800postcards.com> is confusingly similar to Complainant’s mark 1800POSTCARDS.COM. The only difference is the mere deletion of the the number “1” from Complainant’s mark in the disputed domain name.
2. Respondent has no rights and legitimate interests in the disputed domain name because Respondent is not commonly known by <800postcards.com> and Respondent is using the domain name in connection with a business that competes with Complainant. Therefore, Respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use in connection with the disputed domain name.
3. Respondent has registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Respondent has also engaged in a pattern of such conduct. Further, Respondent has registered the domain name for the purpose of disrupting a competitor, Complainant. Finally, Respondent’s use of the disputed domain name is evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s competing goods.
No Response was received.
Complainant’s corporate name is 1800POSTCARDS.COM, Inc. and it regularly transacts business using its corporate name. Complainant registered its mark 1800POSTCARDS.COM with the United States Patent and Trademark Office on July 10, 1998, Registration Number 2,264,962. Complainant has used its mark in conjunction with selling postcards at its toll free number “1-800-POSTCARDS” and at its website located at <1800postcards.com>.
Respondent registered <800postcards.com> on July 6, 1999. Respondent uses the domain name in connection with a website that offers postcards. Respondent is comnmonly known as GoCARD or POSTCARD.COM.
Respondent and Complainant have had a previous dispute over a similar domain name, <1800postcard.com>. See Pop Smear, Inc. v. Craig Singer, FA 94945 (Nat. Arb. Forum July 24, 2000). The Panel found for Complainant and transferred the disputed domain name, which now is used by Complainant to redirect users to its website at <1800postcards.com>.
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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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 has established rights to the 1800POSTCARDS.COM mark through federal registration and continuous use. The domain in dispute <800postcards.com> is confusingly similar to Complainant’s mark. The only difference between the disputed domain name and mark is the deletion of the number “1.” The deletion of a character (whether it is a number or a letter) from Complainant’s mark does not diminish the confusing similarity between the mark and the disputed domain name. See Pop Smear, Inc. v. Craig Singer, FA 94945 (Nat. Arb. Forum July 24, 2000) (finding that “[d]eleting one letter from the Complainant’s mark creates a confusingly similar domain name” and that, therefore, the disputed domain <1800postcard.com> is confusingly similar to Complainant’s mark 1800POSTCARDS.COM); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s mark “State Farm”)
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a Response in the matter. It is well established that when Respondent fails to file a response, the Panel will presume 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).
Respondent is using a confusingly similar domain name in connection with the sale of goods that compete with Complainant’s business. The use of a confusingly similar domain name for the sale of competing goods is not considered to be a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); see also Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).
According to the evidence provided, Respondent has been known as GoCARD or POSTCARD.COM, but has not been, nor is it not currently known as <800postcards.com>. Thus, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered a confusingly similar domain name that diverts users to a website that offers competing goods. Since Respondent has not filed a response, the Panel can presume that Respondent has registered the disputed domain name in order to prevent Complainant from reflection its mark in the corresponding domain name. Further, this is not the first time Respondent has registered a domain name that is confusingly similar to Complainant’s mark. Therefore, Respondent has engaged in a pattern of conduct and thus, has registered <800postcards.com> in bad faith pursuant to Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).
Respondent registered a confusingly similar domain name that is connected to a website that offers competing goods. This is evidence that Respondent has registered the disputed domain name for the purposes of disrupting the Complainant’s business and is therefore evidence of bad faith registration as outlined in Policy ¶ 4(b)(iii). See 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); 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 Complainant's marks suggests that the Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).
Respondent was involved in a previous proceeding concerning a similar domain name. Respondent registered and continued to use <800postcards.com>, even though it was aware that it had no right to Complainant’s mark. This action demonstrates a willful attempt to attract users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source of the website. Therefore, the Panel finds that Respondent has used <800postcards.com> in bad faith pursuant to Policy ¶ 4(b)(iv). See Pop Smear, Inc. v. Craig Singer, FA 94945 (Nat. Arb. Forum July 24, 2000) (finding that since Respondent knew that it had no right to Complainant’s mark, its continuous use of <1800postcard.com> “reveals a willful attempt to attract users to an alternative site and cause confusion with the Complainant’s mark” and is a bad faith use as outlined by Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where 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 Complainant is the source of or is sponsoring the services offered at the site).
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 be hereby granted.
Accordingly, it is Ordered that the domain name <800postcards.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: March 6, 2002
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