G Media USA, Inc. v. Dan Zarrella
Claim Number: FA0708001063379
Complainant is G Media USA, Inc., (“Complainant”) represented
by Stephen R. Baird, of Winthrop & Weinstine, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbywinters.us>, registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On August 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 Respondent to Complainant.
1. Respondent’s <abbywinters.us> domain name is identical to Complainant’s ABBYWINTERS mark.
2. Respondent does not have any rights or legitimate interests in the <abbywinters.us> domain name.
3. Respondent registered and used the <abbywinters.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, G Media USA, Inc., is
the American agent for Abbywinters Pty Ltd, a company dealing in downloadable
video game software and assorted adult material. In connection with the provision of these
services, Complainant has registered the ABBYWINTERS mark (Reg. No. 3,171,901
Respondent registered the disputed
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant attempts to assert
rights in the ABBYWINTERS mark through its registration of the mark with the
USPTO. Although the USPTO registration
date postdates Respondent’s registration, Complainant’s filing date for the
mark predates Respondent’s registration date by over two years. The Panel finds that Complainant’s rights in
the ABBYWINTERS mark date back to the USPTO filing date for purposes of Policy
¶ 4(a)(i). See Planetary Soc’y v. Rosillo,
Respondent’s <abbywinters.us> domain name contains
Complainant’s mark in its entirety and merely adds the country code top-level
domain (“ccTLD”) “.us.” The Panel finds
that the mere addition of a gTLD to an otherwise identical mark fails to
sufficiently distinguish the domain name from the mark pursuant to Policy ¶
4(a)(i). See Blue Sky Software Corp. v.
Digital Sierra, Inc., D2000-0165 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
In instances where
Complainant has made a prima facie case
in support of its allegations, the burden shifts to Respondent to set forth
concrete evidence indicating that it has rights or legitimate interests in
accordance with Policy ¶ 4(a)(ii). See SEMCO Prods., LLC v. dmg world media (
Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name, pursuant to Policy ¶ 4(c)(i) nor is it commonly known as the domain name, pursuant to Policy ¶ 4(c)(iii). Given the WHOIS registration information, which lists “Dan Zarella” as the registrant of the <abbywinters.us> domain name, the Panel concludes that Respondent does not have rights and legitimate interests in the domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the 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 the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
currently resolves the <abbywinters.us>
domain name to Respondent’s website, where a “coming soon” advertisement is
displayed along with Complainant’s ABBYWINTERS mark. The Panel finds that Respondent’s use is
neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iv). See eBay
Inc. v. Hong, D2000-1633 (WIPO
Registration and Use in Bad Faith
As indicated above, Respondent is currently
resolving its <abbywinters.us>
domain name to its own website, where Complainant’s ABBYWINTERS mark is
displayed. It is likely that Internet
users, seeking information related to Complainant, will become confused as to
the source and affiliation of the material on Respondent’s website. Further, it is likely Respondent either
currently benefits financially from its use, or will benefit in the future from
its use, of “coming soon” advertising on its website. Consequently, the Panel finds that
Respondent’s use evinces registration and use in bad faith pursuant to Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the United States Department of Commerce’s usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbywinters.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 1, 2007
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