Gomi
Claim Number: FA0709001076265
Complainant is Gomi USA LLC (“Complainant”), represented by Daniel
M Press, of Chung & Press P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gomivodka.com>, registered with Domaindiscover.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2007.
On September 13, 2007, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <gomivodka.com> domain name is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 September 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 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 postmaster@gomivodka.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 <gomivodka.com> domain name is confusingly similar to Complainant’s GOMI mark.
2. Respondent does not have any rights or legitimate interests in the <gomivodka.com> domain name.
3. Respondent registered and used the <gomivodka.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gomi USA LLC,
uses its GOMI mark in connection with the promotion of its alcohol product and
other related goods. Complainant has
registered the GOMI mark with the United States Patent and Trademark Office
(“USPTO”) (i.e. Reg. No. 2,950,044 issued May 10, 2005). Complainant’s first use of the GOMI mark in
commerce was May 30, 2005.
Respondent registered the <gomivodka.com> domain name on September 10, 2002. Respondent’s disputed domain name resolves to a website that currently has no active use.
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.
Through virtue of its trademark registration with the USPTO,
Complainant has established rights in the GOMI mark for the purposes of Policy
¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under
The <gomivodka.com> domain name is confusingly similar to Complainant’s GOMI mark under Policy ¶ 4(a)(i) as the disputed domain name incorporates Complainant’s mark in its entirety and adds the generic term “vodka,” which has a direct relationship to the products Complainant markets under the GOMI mark. The addition of this term, as well as the generic top-level domain “.com” do not adequately distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must establish a prima facie case that Respondent lacks rights and legitimate interests in the <gomivodka.com> domain name. Once Complainant has done so, as Complainant has done in the instant case, the burden of proof shifts, and Respondent must demonstrate rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint allows for the inference that Respondent lacks all rights and legitimate interests in the <gomivodka.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel chooses to examine all the evidence in record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not indicate that it is commonly known by the disputed domain name, and there is no other evidence to indicate that Respondent is or has ever been known by the <gomivodka.com> domain name or that it is authorized to use Complainant’s mark. Thus, the Panel finds Respondent is not commonly known by the <gomivodka.com> domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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).
Complainant asserts that Respondent is currently not making an active use of the website that resolves from the <gomivodka.com> domain name. Accordingly, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has failed to present any evidence that the GOMI
mark was in use at the time at which Respondent registered the <gomivodka.com> domain name. Without such an offering, it is impossible to
find that the disputed domain name was registered in bad faith as it is impossible
to infringe on a mark that was not in existence when the disputed domain name
was registered. Thus, the Panel finds
that Complainant has failed to satisfy Policy ¶ 4(a)(iii). See Interep
Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO
May 26, 2000) (finding no bad faith where the respondent registered the domain
prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393
(WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the
domain name in question before application and commencement of use of the
trademark by the complainant); see also Ode
v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the
domain name.”).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 24, 2007
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