William H. Ross, III, and Office Playground, Inc. v. Havaco Direct, Inc.
Claim Number: FA0707001045845
is William H. Ross, III, and Office Playground, Inc. (“Complainant”),
represented by John W. Dozier, Jr.,
of Dozier Internet Law, PC, 301
Concourse Blvd., West Shore III, Suite 300, Glen Allen, VA 23059. Respondent is Havaco Direct, Inc. (“Respondent”), 9901 IH 10 West
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officeplayground.net>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 26, 2007.
On July 26, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <officeplayground.net> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 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.
A timely Response was received and determined to be complete on August 20, 2007.
On August 21, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant, William H. Ross, III, and Office Playground, Inc., makes the following assertions:
1. Respondent’s <officeplayground.net> domain name is confusingly similar to Complainant’s OFFICE PLAYGROUND mark.
2. Respondent does not have any rights or legitimate interests in the <officeplayground.net> domain name.
3. Respondent registered and used the <officeplayground.net> domain name in bad faith.
B. Respondent, Havaco Direct, Inc., makes the following assertions:
Respondent says “Havaco Direct, Inc.’s (“Havaco”) response to this complaint is a courtesy, as we do not own or control the domain names referenced in this complaint.” Respondent maintains that the disputed domain name is owned by an “Internet service provider which nullifies the ‘bad faith’ element required in this dispute.” Respondent asserts that “The actual registrant of the disputed domain names has the rights to, and a legitimate interest in, these domain names.”
Additionally, Respondent maintains that bad faith can only be found if the disputed domain name was registered with the intent to sell it to the trademark holder, which Respondent contends it has never tried to do.
Respondent contends that Complainant has engaged in reverse domain hijacking.
Complainant has continuously used the OFFICE PLAYGROUND mark in connection with office toys such as stress relievers, executive toys, desk toys, etc., since it registered the <officeplayground.com> domain name and established its online business on April 26, 1999. Complainant has registered the OFFICE PLAYGROUND mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,451,921 issued May 15, 2001).
Respondent’s <officeplayground.net> domain name was registered on February 6, 2007. The disputed domain name redirects online traffic to the <kleargear.com> domain name. This website then once again automatically redirects online traffic to <klearconnect.com>. The website that resolves from that domain name is a direct competitor of Complainant, offering the same and similar goods and services as those offered under Complainant’s OFFICE PLAYGROUND mark.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
Respondent contends it does not own the disputed domain name. In its Response, Respondent states that it is responding as “a courtesy, as we do not own or control the domain names referenced in this complaint.” Respondent asserts that the disputed domain names are “owned and controlled by an Internet service provider….” However, Respondent provides no support for this assertion. As Respondent is the holder (registrant) of the disputed domain name, Respondent is the proper respondent in this proceeding. Rules 1 & 3 (b)(v), Uniform Domain Dispute Resolution Policy.
Identical and/or Confusingly Similar
Complainant has sufficiently established its rights in the OFFICE PLAYGROUND mark through registration with the USPTO. 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.”).
The Panel finds that the <officeplayground.net> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD) “.net.” The Panel finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis as a top-level domain is required of all domain names. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 WHOIS information indicates that Respondent is “Havaco Direct, Inc.” and there is no other information in the record to suggest that Respondent is or has ever been known by the disputed domain name. Complainant also contends that Respondent is not authorized to use Complainant’s mark in any way. The Panel finds that Respondent is not commonly known by <officeplayground.net> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); 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).
Complainant contends that the <officeplayground.net> domain name redirects to a competitor’s website at the <kleingear.com> domain name, where goods in direct competition with Complainant are marketed. The Panel finds that such use is 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent is attempting to commercially benefit from the use of the <officeplayground.net> domain name by redirecting Internet users attempting to locate Complainant’s website to a website in direct competition with Complainant. The Panel finds that the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, endorsement and affiliation with the disputed domain name and corresponding website, thereby constituting bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
The use of the <officeplayground.net> domain name to redirect Internet users to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also 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).
Respondent maintains that the disputed domain name is owned by an “Internet service provider which nullifies the ‘bad faith’ element required in this dispute.” No support for this contention is provided.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent has alleged that Complainant’s actions in this case amount to reverse domain name hijacking. The Panel finds that Complainant’s filing of the instant Complaint was based on a good faith belief in its rights to the <officeplayground.net> domain name through its registration with the USPTO of the OFFICE PLAYGROUND mark, and as such, Complainant’s filing is not an abuse of the UDRP Policy. See Rusconi Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001) (“[G]iven the Complainant’s trade mark rights, the similarity of the Domain Name to Complainant’s trade mark and the failure (albeit for good reason) of the Respondent to respond to the Complainant’s letters, the Panel does not believe that this complaint constitutes an abuse of the Policy.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <officeplayground.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 31, 2007
National Arbitration Forum