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., Suite 3500, 225 South Sixth Street, Minneapolis, MN 55402.  Respondent is Dan Zarrella (“Respondent”), 7 Unity st #10, Boston, MA 02113.



The domain name at issue is <>, 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 August 14, 2007; the Forum received a hard copy of the Complaint on August 15, 2007.


On August 14, 2007, Enom, Inc. confirmed by e-mail to the Forum that the <> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).


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.


On September 17, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.  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.



A. Complainant


1.      Respondent’s <> domain name is identical to Complainant’s ABBYWINTERS mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> 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 issued November 14, 2006, filed September 27, 2004) with the United States Patent and Trademark Office (“USPTO”).


Respondent registered the disputed domain name on October 18, 2006.  The disputed domain name resolves to a website containing the ABBYWINTERS mark and a “coming soon” advertisement.




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, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).


Respondent’s <> 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 Apr. 27, 2000) (holding that the domain name <> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <> domain name is identical to the complainant’s TROPAR mark).


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 (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under UDRP ¶ 4(a)(ii) and the factors listed in UDRP ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).  The Panel finds that Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy.  See Clerical Med. Inv. Group Ltd. v., 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 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 <> 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).


Respondent currently resolves the <> 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 Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).


Registration and Use in Bad Faith


As indicated above, Respondent is currently resolving its <> 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. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); 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.



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 <> 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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