Cyalume Technologies, Inc. v. Whois Protection
Claim Number: FA0708001068720
Complainant is Cyalume Technologies, Inc. (“Complainant”), represented by Carl
J. Spagnuolo, of McHale & Slavin, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snaplights.com>, registered with Rebel.com.
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 electronically on
On September 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 24, 2007 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <snaplights.com> domain name is confusingly similar to Complainant’s SNAPLIGHT mark.
2. Respondent does not have any rights or legitimate interests in the <snaplights.com> domain name.
3. Respondent registered and used the <snaplights.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cyalune Technologies, Inc., is a producer of chemically activated light sticks. In connection with the provision of these products, Complainant has registered the SNAPLIGHT mark (Reg. No. 1,826,885 issued March 15, 1994) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <snaplights.com>
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 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. 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant attempts to establish rights in the SNAPLIGHT mark through registration of the mark with the USPTO. The Panel finds that Complainant’s timely registration and subsequent use of the mark for over thirteen years sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office established the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s disputed domain name contains Complainant’s
mark in its entirety and adds the letter “s” and the generic top-level domain
(“gTLD”) “.com.” The Panel therefore
finds that the mere addition of the letter “s” and a gTLD to an otherwise
identical mark fails to adequately distinguish the domain name from the mark
pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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’s disputed domain name resolves to a search
engine website, where Internet users are shown advertisements and offered the
opportunity to be redirected to various, commercial websites via the use of
hyperlinks. Such use likely results in
financial benefit for Respondent through the procurement of advertising
revenue. Consequently, the Panel finds
that Respondent’s use is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Wells Fargo
& Co. v. Lin Shun Shing, FA 205699
(Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct
Internet traffic to a website featuring pop-up advertisements and links to
various third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user); see also Trans Global
Complainant avouches that Respondent is not commonly known
by the disputed domain name. With no
evidence on record to suggest that Respondent is commonly known by the disputed
domain name, the Panel finds that Respondent is not commonly known by the <snaplights.com> domain name pursuant to Policy
¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007)
(concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As indicated above, Respondent’s disputed domain name resolves to a website displaying pop-up advertisements and links to various, third-party commercial websites. Respondent presumably enjoys financial enrichment from advertising revenue as a result of its diversionary use. The Panel therefore finds that Respondent’s use of the <snaplights.com> domain name amounts to an attraction for commercial gain, thereby evincing registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <snaplights.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY, (Ret.)
Dated: October 12, 2007
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