Powell's
Books, Inc. v. Dotsan
Claim
Number: FA0202000104943
PARTIES
Complainant is Powell's Books, Inc., Portland, OR
(“Complainant”) represented by Devon J.
Zastrow, of Klarquist Sparkman, LLP. Respondent is Dotsan, Mumbai, INDIA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <powels.com>,
registered with BulkRegister.com, Inc.
PANEL
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.
James A. Carmody,
Esq., as Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
19, 2002; the Forum received a hard copy of the Complaint on February 20, 2002.
On February 20, 2002, BulkRegister.com,
Inc. confirmed by e-mail to the Forum that the domain name <powels.com> is registered with BulkRegister.com, Inc. and
that Respondent is the current registrant of the name. BulkRegister.com, Inc. has verified that
Respondent is bound by the BulkRegister.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 February 20, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 12, 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@powels.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 March 19, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the Forum appointed James A. Carmody, Esq., 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
Respondent’s <powels.com> domain name is confusingly similar to
Complainant’s POWELL’S mark.
Respondent does not have any rights or legitimate interests in the
disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
B. Respondent
No Response was
received.
FINDINGS
Complainant
operates a nationally known bookstore business based in Portland, Oregon. Complainant has used the POWELL’S name since
at least 1971 and owns a service mark registration for POWELL’S registered on
the Principal Register of the United States Patent and trademark Office on June
6, 2000, Reg. No. 2,355,077.
Complainant registered the POWELL’S mark in connection with retail and
online retail store services featuring new and used books, books on recorded
media, maps, calendars, and magazines.
Respondent
registered the disputed domain name on July 28, 2001. Respondent has linked the disputed domain name to online casino
advertisements and an advertisement for an online business unrelated to
Complainant or Respondent. Respondent
has a history of registering infringing domain names in which it linked them to
online casino websites. See Tony
Orlando v. Dotsan, FA 100246 (Nat. Arb. Forum Nov. 16, 2001) (transferring <tonyorlando.com> to Complainant and
finding Respondent’s use of Complaiannt’s name to link to a gambling website to
be in bad faith); see also Orbitz, LLC v. Dotsan and Iskra Serv., D2001-1359
(WIPO Jan. 20, 2002) ( finding bad faith due to Respondent’s use of
Complainant’s name to link to a gambling website).
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 legal
rights in its POWELL’S mark due to its federal registration of the mark.
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent’s use of the confusingly
similar domain name to divert Internet users to unconnected businesses
indicates that it does not have rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See
AltaVista v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to
other, unconnected websites does not constitute a legitimate interest in the
domain name); see also Vapor Blast
Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001)
(finding that Respondent’s commercial use of the domain name to confuse and
divert Internet traffic is not a legitimate use of the domain name).
Respondent, known as Dotsan, does not have rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii)
because it is not commonly known by the disputed domain name. See Great S. Wood Pres., Inc.
v. TFA Assocs., FA 95169
(Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known
by the domain name <greatsouthernwood.com> where Respondent linked the
domain name to <bestoftheweb.com>); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent was not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use)
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Registration
and Use in Bad Faith
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 shall be hereby granted.
Accordingly,
it is Ordered that the domain name <powels.com>
be transferred from Respondent
to Complainant.
James
A. Carmody, Esq., Panelist
Dated:
March 26, 2002
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