Invisible Fence, Inc. v. Webs Master
Claim Number: FA0709001081994
Complainant is Invisible Fence, Inc. (“Complainant”), represented by Peter
Anthopolos, of Pitts and Brittian, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <inviablefence.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 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@inviablefence.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <inviablefence.com> domain name is confusingly similar to Complainant’s INVISIBLE FENCE mark.
2. Respondent does not have any rights or legitimate interests in the <inviablefence.com> domain name.
3. Respondent registered and used the <inviablefence.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has since as early as 1983 been using the INVISIBLE FENCE mark in connection with electronic animal containment systems and currently holds a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,600,470 issued June 12, 1990). Complainant also markets and sells its products under the INVISIBLE FENCE mark through a website that resolves from the <invisiblefence.com> domain name.
Respondent’s <inviablefence.com> domain name was registered on March 21, 2006 and resolves to a web page that displays hyperlinks to third-party websites, some of which offer electronic pet containment systems like those sold under Complainant’s mark. One of the hyperlinks is labeled with Complainant’s INVISIBLE FENCE mark and when engaged, resolves to another website consisting of over ten additional links to competitors of Complainant.
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 has sufficiently established its rights in the
INVISIBLE FENCE mark through registration with the USPTO pursuant to Policy ¶
4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates; therefore it is sufficient that the
complainant can demonstrate a mark in some jurisdiction).
Respondent’s <inviablefence.com>
domain name features “inviable fence” and the generic top level domain (“gTLD”)
“.com.” “Inviable” is a close
misspelling of “invisible” deleting the letter “s” and replacing the third “i”
with the letter “a.” A close misspelling
and the inclusion of a gTLD do not distinguish Respondent’s <inviablefence.com> domain name. Therefore, the Panel finds that Respondent’s
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000) (finding that the top level of the domain name such as “.net” or “.com”
does not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see
also Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Ty, Inc. v. O.Z.
Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names
<beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are
confusingly similar to the complainant’s mark BEANIE BABIES).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See
TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb.
Forum
Respondent has failed to submit a response to the
Complaint. The Panel thus presumes that
Respondent has no rights or legitimate interests in the <inviablefence.com> domain name but
will nevertheless proceed to consider all the available evidence in
consideration of the factors listed under Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”); 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).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent ever was or is commonly known by
the <inviablefence.com>
domain name. Moreover, Complainant has
not granted permission to Respondent to use the INVISIBLE FENCE mark in any
way. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
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’s <inviablefence.com> domain name resolves to a web page featuring various hyperlinks to third parties, some of which offer products and services in competition with those offered under Complainant’s mark. Moreover, one of the hyperlinks is labeled with Complainant’s mark, and resolves further to another website featuring exclusive links to competititors of Complainant. The Panel finds that this is neither a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <inviablefence.com>
domain name features various links to third party websites, some of which offer
services in competition with those offered under Complainant’s INVISIBLE FENCE
mark. One of the particular links
displays Complainant’s mark and resolves to an additional website containing
links to competititors of Complainant.
The Panel finds this to establish Respondent’s bad faith registration
and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
The Panel presumes that Respondent is financially benefiting from the <inviablefence.com> domain name through click-through fees. The website that resolves wherefrom displays various links to competitors of Complainant, including a hyperlink labeled with Complainant’s mark that when engaged displays links to competitors of Complainant. The Panel finds this to be additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inviablefence.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 6, 2007
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