Calcar, Inc. v. SOSI c/o Dennis Bell
Claim Number: FA0709001079942
Complainant is Calcar, Inc. (“Complainant”), represented by Gary
J. Nelson, of Christie, Parker & Hale LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calcars.net>, 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 electronically on
On September 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 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 firstname.lastname@example.org 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 <calcars.net> domain name is confusingly similar to Complainant’s CALCAR mark.
2. Respondent does not have any rights or legitimate interests in the <calcars.net> domain name.
3. Respondent registered and used the <calcars.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Calcar, Inc., performs
complete custom publishing products and services for the automotive industry,
specializing in changing complex embedded information into easy to use
products. Since 1993 Complainant has
distributed its products using the CALCAR mark, and has used the CALCAR mark
continuously for at least ten years. Complainant
registered the CALCAR mark with the United States Patent and Trademark Office
Respondent registered the <calcars.net>
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 registered the CALCAR mark with the USPTO, and
thus has established rights to the mark pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <calcars.net> domain name is confusingly similar to the Complainant’s
CALCAR mark. The addition of the letter
“s” is insufficient to distinguish the disputed domain name from the
Complainant’s mark. Further, the
addition of the generic top-level domain name (“gTLD”) “.net” to the domain
name does not distinguish the disputed domain name from Complainant’s mark as a
top-level domain is required for all domain names. The Panel finds that the disputed domain name
is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens,
D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the
complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall
impression of the mark and thus made the disputed domain name confusingly
similar to it); see also Cream Pie Club v. Halford, FA
95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to
the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood
of confusion caused by the use of the remaining identical mark. The domain name
<creampies.com> is similar in sound, appearance, and connotation”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate
interests in the <calcars.net> domain name.
Complainant has the burden of establishing a prima facie case that Respondent has no rights or legitimate
interests in the disputed domain name.
Once Complainant makes a prima facie
case, the burden of proof shifts to Respondent to show that it has rights or
legitimate interest pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie case that Respondent lacks
rights and legitimate interests. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights to or legitimate interests in the <calcars.net> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will now examine the record to see if Respondent has any rights under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by
the <calcars.net> domain name, and is
not authorized to use Complainant’s CALCAR mark. Respondent’s WHOIS information does not
suggest that Respondent is or has even been known by the <calcars.net> domain name. Therefore,
the Panel finds that Respondent is not commonly known by the disputed domain
name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
Complainant asserts that Respondent is not actively using
the disputed domain name. There is no evidence
that Respondent has made any preparation to use the disputed domain name. Thus, the Panel finds that the Respondent has
not made a bona fide offering of
goods or services under Policy ¶ 4(c)(i), and that the
website does not serve a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name); see also Am. Home Prods. Corp.
v. Malgioglio, D2000-1602 (WIPO
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent has registered the <calcars.net> domain name, but has failed to actively use the disputed domain name. The Panel finds that such behavior constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <calcars.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 26, 2007
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