1800POSTCARDS.COM, INC. v. GoCARD aka
Postcard.com, Inc. aka Craig Singer
Claim Number: FA0201000103984
PARTIES
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.
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
Franklin as Panelist.
PROCEDURAL HISTORY
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 postmaster@800postcards.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
No
Response was received.
FINDINGS
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>.
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 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.
DECISION
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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