Deluxe Corporation v. Dallas Internet
Claim Number: FA0203000105216
Complainant is Deluxe Corporation, Shoreview, MN (“Complainant”) represented by Linda M. Byrne, of Merchant & Gould P.C. Respondent is Dallas Internet, Dallas, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deluxeform.com>, registered with Tucows.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Jo Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 27, 2002; the Forum received a hard copy of the Complaint on February 28, 2002.
On March 4, 2002, Tucows confirmed by e-mail to the Forum that the domain name <deluxeform.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 March 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 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 firstname.lastname@example.org 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 29, 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.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Respondent’s <deluxeform.com> domain name is confusingly similar to Complainant’s DELUXE trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has registered and used the disputed domain name in bad faith.
No Response was received.
Complainant registered the DELUXE trademark at the United States Patent and Trademark Office on August 22, 2000, Reg. No. 2,379, 596.
Complainant has been using the DELUXE name in connection with its printed bank checks since 1915. Complainant owns businesses that provide checks, business forms, labels, self-inking stamps, fraud prevention services, and customer retention programs.
Complainant is the market leader in its industry for bank checks and business forms, and it has invested substantial sums of money into marketing and developing substantial goodwill and customer loyalty under its trademark.
Complainant has a “Deluxeforms Affiliate program” wherein a third party can link its website to Complainant’s <deluxeforms.com> website, and that third party will receive a commission for any sale of Complainant’s business forms that originate from their link. In order to become an affiliate, applicants must fill out and sign an application which includes an agreement that the affiliate will not register any confusingly similar trademarks, service marks, or domain names, among other things.
In August 2001, Complainant noticed that “National Promotions, 15312 Sunset Drive #12, Miami, FL 33193,” an affiliate, had registered <deluxeform.com>, and was attempting to earn commission off sales of Complainant’s forms emanating through this infringing domain name.
Dallas Internet is the Respondent in this case, but Mike Torres, the listed regsitrant agent for “National Promotions,” shares the same address as Respondent’s listed mailing address, and is presumed to be Respondent, or connected with Respondent Accord see Chanel, Inc. v. Torres d/b/a Nat’l Promotions, Inc., D2000-1833, (WIPO Feb. 22, 2001). Moreover, Complainant alleges that Mike Torres has a history of registering domain names that are variations of famous trademarks and service marks, causing a likelihood of confusion.
Complainant sent three letters to three different addresses of Respondent requesting Respondent transfer the disputed domain name to Complainant. Sometime after August 2001, Respondent’s <deluxeform.com> domain name redirected to a search engine which directs customers interested in complainant’s products to its competitors in return for a fee. Subsequently, Complainant sent out letters to Respondent on October 17, 2001 and November 21, 2001 requesting transfer, but these letters were returned.
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
Respondent’s <deluxeform.com> domain name is confusingly similar to Complainant’s DELUXE trademark because its incorporates the trademark in its entirety merely adding a generic word and a generic top-level domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Moreover, Internet users are likely to be confused by the disputed domain name because the added word “form,” describes Complainant’s product. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOT mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent, known as Dallas Internet Services, has not provided any evidence, nor is there any in the record, that it is commonly known by the disputed domain name pursuant to 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Respondent’s use of the confusingly similar domain name to divert Internet traffic to Complainant’s competitors for a fee, as well as to make an unauthorized use of Complainant’s mark to direct Internet traffic to Complainant indicates that Respondent was not making a bona fide offering of goods pursuant to Policy ¶ 4(c)(i). See 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); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).
Respondent’s use of the disputed domain name to link to a search engine directing Internet users to other websites indicates that it was not using it for a legitimate noncommercial or fair use pursuant to 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), because it used Complainant’s trademark to attract Complainant’s customers to its own site to receive a commission from Complainant. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website for commercial gain). Moreover, even though Respondent initially linked Complainant’s customers to Complainant’s website through its own site, Respondent did not have permission from Complainant to do so. As a result, the registration and use of the disputed domain name were in bad faith. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).
Respondent’s unauthorized use of the disputed domain name disrupted Complainant’s business, despite the fact that it was initially linking Complainant’s customers to Complainant’s website. This activity is in bad faith pursuant to Policy ¶ 4(b)(iii). See Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular phone dealer to Complainant).
Finally, Complainant alleges that Respondent is or is connected to Mike Torres, who has a history of registering infringing domain names incorporating famous trademarks. This activity indicates bad faith use and registration under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).
Absent a contrary opinion by Respondent, the Panel will accept Complainant’s assertions as true. See 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”).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <deluxeform.com> be transferred from Respondent to Complainant
Sandra Franklin, Panelist
Dated: April 10, 2002
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