The Gale Group, Inc. v. Domain Administration Limited c/o David Halstead
Claim Number: FA0707001043035
Complainant is The Gale Group, Inc. (“Complainant”), represented by Mark
Lerner, of Satterlee Stephens Burke & Burke LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thorndikepress.com>, registered with Enom, 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 J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thorndikepress.com> domain name is identical to Complainant’s THORNDIKE PRESS mark.
2. Respondent does not have any rights or legitimate interests in the <thorndikepress.com> domain name.
3. Respondent registered and used the <thorndikepress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gale Group, Inc., through its Thorndike Press division, is the world’s leading large-print book publisher. Complainant’s large-print book list contains over 2,300 up-to-date and high quality editions of current, well-reviewed and award-winning titles. Complainant and its predecessors have conducted business under the THORNDIKE PRESS mark for nearly thirty years and Complainant has accrued substantial goodwill in providing large-print books to libraries, consumers, schools, and bookstores. Complainant holds a trademark registration for the THORNDIKE PRESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,725,504 issued October 20, 1992). Complainant offers its large-print books online at a website located at the <gale.com/thorndike> domain name.
Respondent registered the <thorndikepress.com> domain name on
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.
Complainant asserts that, under Policy ¶ 4(a)(i), it has rights in the THORNDIKE PRESS mark through its
registration with the USPTO. The Panel agrees
with this assertion, as a USPTO registration sufficiently establishes rights in
a mark under the Policy. See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Respondent’s <thorndikepress.com> domain name is identical to
Complainant’s THORNDIKE PRESS mark, as it fully incorporates the mark and adds
the generic top-level domain (“gTLD”) “.com.”
It is well-established under the Policy that the addition of a gTLD to a
mark is irrelevant to determining whether a disputed domain name is identical
to a mark, as a top-level domain is required of all domain names. Thus, the Panel finds that, pursuant to
Policy ¶ 4(a)(i), the <thorndikepress.com> domain name is identical to
Complainant’s THORNDIKE PRESS mark. See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant next asserts that Respondent lacks rights and legitimate interests in the <thorndikepress.com> domain name pursuant to Policy ¶ 4(a)(ii). Complainant has the initial burden of proving this assertion, but the burden shifts to Respondent once Complainant has made a prima facie case. 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 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”); 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 respond to the Complaint raises the
presumption that Respondent lacks rights and legitimate interests in the <thorndikepress.com> domain
name. See Broadcom
Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
The Panel finds that there is no evidence in the record to
suggest, and Respondent’s WHOIS information does not indicate, that Respondent
is commonly known by the <thorndikepress.com>
domain name. Respondent has not
received permission from Complainant to use the THORNDIKE PRESS mark for any
purpose. Thus, Respondent lacks rights
and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent’s <thorndikepress.com> domain name resolves to a website featuring links to various third-party websites, some of which are in direct competition with Complainant’s large-print book business. The Panel presumes that Respondent accrues click-through fees when Internet users click on these links. The Panel finds that this does not constitute either 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant further asserts that Respondent registered and
is using the <thorndikepress.com> domain
name in bad faith under Policy ¶ 4(a)(iii). Respondent’s disputed domain name resolves to
a website featuring links to third-party websites, some of which are in direct
competition with Complainant. The Panel
finds that this constitutes a disruption of Complainant’s business and
qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum
As mentioned previously, Respondent is using the <thorndikepress.com> domain name, which is identical to Complainant’s THORNDIKE PRESS mark, to redirect Internet users to a website from which Respondent benefits commercially. Respondent is therefore capitalizing on the likelihood that Internet users, seeking Complainant’s products, will be confused as to Complainant’s sponsorship or affiliation with the disputed domain name. The Panel finds that this is further evidence that Respondent registered and is using the <thorndikepress.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”)
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 <thorndikepress.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 7, 2007
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