Deluxe
Corporation v. American Medical
Claim
Number: FA0203000105217
PARTIES
Complainant is Deluxe Corporation, Shoreview, MN
(“Complainant”) represented by Linda M.
Byrne, of Merchant & Gould P.C. Respondent is American Medical, New York, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <deluxforms.com>,
registered with Tucows.
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 P. Buchele as Panelist.
PROCEDURAL
HISTORY
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 <deluxforms.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 postmaster@deluxforms.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 29, 2002, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed James P. Buchele 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 the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The <deluxforms.com>
domain name is confusingly similar to Complainant's DELUXE mark and
<deluxeforms.com> domain name.
Respondent has no
rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to
submit a Response.
FINDINGS
Complainant
has used the DELUXE mark in relation to its check printing service and related
products since 1915. Complainant also
provides business forms, labels, self-inking stamps, fraud prevention services,
and customer retention programs under the DELUXE mark. Complainant owns several United States
Federal Trademark Registrations for the DELUXE mark including Reg. No.
2,379,596.
Complainant
has an affiliate program where a third party entity can link its website to
Complainant’s <deluxeforms.com> website, and when a customer purchases a
business form through that third party’s affiliated website, that third party
earns a commission for the sale.
Potential affiliates must fill out an application and sign an agreement
that expressly states that the affiliate will not attempt to register any
confusingly similar trademarks, service marks, logos, trade names or domain
names.
Respondent
applied to be an affiliate of Complainant in June of 2001. Respondent told Complainant that it was
doing business at <natprom.com>, and did so through June and July of
2001.
In
November of 2000 the disputed domain name <deluxforms.com> was
registered, and in August 2001 Complainant noticed that Respondent’s tracking
identifier was showing a high volume of sales at <deluxforms.com>. Complainant stopped paying Respondent its
commission and Respondent redirected the disputed domain name from
Complainant’s <deluxeforms.com> domain to <clicksearch.com> which
links to a search engine at <turbofind.com>. Complainant was able to trace Respondent’s identity to one
Michael Torres, a known cybersquatter who has engaged in a pattern of
registering famous trademarks for his own commercial gain.
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 rights in its DELUXE mark because it has registered the mark with the
United States Patent and Trademark Office and used it continuously since
1915. Furthermore, Respondent’s <deluxforms.com>
domain name is confusingly similar to Complainant’s DELUXE mark because its
merely a misspelling of Complainant’s trademark with the generic term “forms”
appended to it. Neither the addition of
a generic term to a well-known mark nor the misspelling of a word create a
distinct mark capable of overcoming a
claim of confusing
similarity. See
Reuters Ltd. v. Global
Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that
a domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
that given the similarity of the Complainant’s marks with the domain name,
consumers will presume the domain name is affiliated with the Complainant).
Moreover,
Complainant has done business under the name DELUXEFORMS.COM in relation to its
online sales and affiliate program.
Complainant therefore has established a significant Internet presence
and common law rights to the name DELUXEFORMS.COM. See Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name
Dispute Resolution Policy does not require “that a trademark be registered by a
governmental authority for such rights to exist”).
Respondent’s
<deluxforms.com> domain name is confusingly similar to
Complainant’s common law DELUXEFORMS.COM mark because it incorporates the
entirety of Complainant’s mark and merely deletes the “e” in DELUXE. Domain names that are misspellings of
another’s trademark do not create distinct marks capable of overcoming a claim
of confusing similarity. See
State Farm Mut. Auto.
Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb.
Forum June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to the Complainant’s STATE FARM mark); see also
Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain
name <compq.com> is confusingly similar to Complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Rights
or Legitimate Interests
Respondent
has failed to come forward with a Response and therefore it is presumed that
Respondent has no rights or legitimate interests in the disputed domain
name. See Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Furthermore,
when Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of Complainant. See
Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that Complainant’s allegations are
true unless clearly contradicted by the evidence).
Respondent’s
<deluxforms.com> domain name is confusingly similar to
Complainant’s mark and therefore is attracting Complainant’s customers to
Respondent’s website. The use of a
domain name to divert Complainant’s customers to Respondent’s website by creating
a likelihood of confusion is not considered to be a bona fide offering of goods
or services 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 Big Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when
Respondent was diverting consumers to its own website by using Complainant’s
trademarks).
Respondent,
known as “American Medical,” is not commonly known as <deluxforms.com>
pursuant to Policy ¶ 4(c)(ii). See
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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Furthermore,
Respondent is not making a legitimate, noncommercial or fair use of the
disputed domain name because its primary purpose for registering and using the
domain name is to mislead and divert Internet traffic intended for Complainant
to Respondent’s domain name for commercial gain. See Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has
an intention to divert consumers of Complainant’s products to Respondent’s site
by using Complainant’s mark).
Furthermore, Respondent is currently diverting Internet traffic to a
search engine that is not connected with Complainant’s business in any
way. 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.
Respondent
has been identified by Complainant as a known cybersquatter who routinely
registers domain names that infringe upon the trademarks of others. In the absence of a contrary clain, the
Panel may accept Complainant’s assertion as true. See Talk City 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).
Therefore, Respondent’s registration of <deluxforms.com> is
evidence of Respondent’s continuing pattern of conduct and bad faith pursuant
to 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); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum
Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered
many domain names unrelated to the Respondent’s business which infringe on
famous marks and websites).
Respondent’s
registration of the disputed domain name was done to intentionally attract
Complainant’s customers, without Complainant’s permission, for Respondent’s
commercial gain by creating a likelihood of confusion as to source, sponsorship
and affiliation of the domain name, which is bad faith pursuant to Policy ¶
4(b)(iv). See
State Fair of Texas v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s good will and attract Internet
users to Respondent’s website); see also 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 own website for commercial gain).
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 <deluxforms.com> be
transferred from Respondent to Complainant.
James
P. Buchele, Panelist
Dated: April 1, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page