Solstice Marketing Corporation v. Marc Salkovitz d/b/a Image Media, LLC
Claim Number: FA0707001040087
Complainant is Solstice Marketing Corporation (“Complainant”), represented by Ronald
J. Ventola II, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <solsticeoptical.com> and <solsticesunglassboutique.com>,
registered with Names4Ever.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 18, 2007.
On July 18, 2007, Names4Ever, confirmed by e-mail to the National Arbitration Forum that the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names are registered with Names4Ever and that Respondent is the current registrant of the names. Names4Ever has verified that Respondent is bound by the Names4Ever 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@solsticeoptical.com and
postmaster@solsticesunglassboutique.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 Tyrus R. Atkinson, Jr., 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 <solsticeoptical.com> and <solsticesunglassboutique.com> domain names are confusingly similar to Complainant’s SOLSTICE mark.
2. Respondent does not have any rights or legitimate interests in the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names.
3. Respondent registered and used the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Solstice Marketing Corp., is a
Respondent registered the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names on May 20, 2005. The disputed domain names previously resolved to websites merely indicating that the domain names were for sale. After Complainant contacted Respondent regarding the disputed domain names, Respondent offered to sell the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names to Complainant for $5,000 each, an amount in excess of Respondent’s out-of-pocket costs. The disputed domain names currently resolve to “parked” pages featuring content unrelated to Complainant’s business; specifically, search engines and links soliciting advertisers for the sites.
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 finds that Complainant’s service mark registration of the SOLSTICE mark with the USPTO sufficiently establishes its rights in the mark pursuant to 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 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.").
Complainant alleges that Respondent’s <solsticeoptical.com> and <solsticesunglassboutique.com> domain names are confusingly similar to Complainant’s SOLSTICE mark. The Panel agrees, as both disputed domain names fully incorporate the SOLSTICE mark, and simply add the generic terms “optical,” “sunglass,” and “boutique,” all of which are descriptive of Complainant’s retail sunglass business. Under the UDRP, it is well-established that the addition of descriptive terms in a disputed domain name does not negate any confusing similarity between a mark and a corresponding domain name. Moreover, the addition of the generic top-level domain “.com” to both of the disputed domain names is irrelevant for the purposes of Policy ¶ 4(a)(i), as a top-level domain is a required element of all domain names. Thus, the Panel finds that the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names are confusingly similar to Complainant’s SOLSTICE mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names. Once Complainant has established a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. In the instant case, the Panel finds that Complainant has made a prima facie case under the Policy. See 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); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Based on Respondent’s failure to answer the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain names. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Nevertheless, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s <solsticeoptical.com> and <solsticesunglassboutique.com> domain names currently resolve to websites featuring links to third-party websites unrelated to Complainant. The Panel infers that Respondent accrues click-through fees from these links. The Panel finds that such use does not constitute 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Pursuant to Policy ¶ 4(c)(ii), Complainant further alleges that Respondent is not commonly known by the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names, which indicates that Respondent lacks rights and legitimate interests in the disputed domain names. Respondent’s WHOIS information does not indicate, and there is nothing further in the record to suggest, that Respondent is commonly known by the disputed domain names. In addition, Respondent is not authorized to use Complainant’s SOLSTICE mark in any way. Thus, the Panel concludes that Respondent lacks rights and legitimate interests in the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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 lack of rights and legitimate interests in the <solsticeoptical.com> and <solsticesunglassboutique.com>
domain names is further evidenced by Respondent’s offer to sell the disputed
domain names to Complainant for an amount in excess of its out-of-pocket
costs. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar.
4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name
is further evidenced by Respondent’s attempt to sell its domain name
registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
As mentioned previously, the Panel presumes that Respondent benefits commercially when Internet users are redirected to the websites that resolve from the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names. The Panel thus finds that Respondent is capitalizing on the likelihood that Internet users, seeking Complainant’s business, will confuse the source of the disputed domain names as being affiliated with Complainant. Under Policy ¶ 4(b)(iv), this is evidence that Respondent registered and is using the disputed domain names in bad faith. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); 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).
Furthermore, Respondent’s offer to sell the <solsticeoptical.com> and <solsticesunglassboutique.com>
domain names to Complainant for an amount in excess of its out-of-pockets costs
is also evidence of Respondent’s bad faith registration and use of the disputed
domain names under Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <solsticeoptical.com> and <solsticesunglassboutique.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 31, 2007
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