Doteasy Technology Inc. v. Point Facile
Claim Number: FA0710001102352
Complainant is Doteasy Technology Inc. (“Complainant”), represented by Jonathan
Wong, Suite 210 - 3602 Gilmore Way, Burnaby, BC V5G 4W9, Canada. Respondent is Point Facile (“Respondent”), 1681 Rue Ste Catherine E,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doteasycanada.com>, registered with Network Solutions, Inc.
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 October 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 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 <doteasycanada.com> domain name is confusingly similar to Complainant’s DOTEASY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <doteasycanada.com> domain name.
3. Respondent registered and used the <doteasycanada.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Doteasy Technology Inc., has provided computer
services, including managing and registering domain names for use on a global
computer network and designing, developing, and hosting websites for clients
under the DOTEASY and DOTEASY.COM marks.
Complainant registered the DOTEASY.COM mark with the Canadian
Intellectual Property Office on
Respondent registered the <doteasycanada.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 registered the DOTEASY.COM mark with the
Canadian Intellectual Property Office and the USPTO. The Panel finds that Complainant has rights
to the marks pursuant to Policy ¶ 4(a)(i). See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
domain name is confusingly similar to Complainant’s DOTEASY.COM mark because
the inclusion of a geographic term does not distinguish a disputed domain name
from a registered mark. Further, because
Complainant provides the majority of their services in
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor
legitimate interests in the <doteasycanada.com>
domain name. Complainant has the initial
burden of showing that Respondent lacks rights and legitimate interests in the
disputed domain name. Once
Complainant makes a prima facie case
supporting its assertion that Respondent does not have rights or legitimate
interests, the burden shifts to Respondent to show that it does have rights or
legitimate interests in the disputed domain name. The Panel finds that Complainant has
demonstrated that Respondent lacks rights and legitimate interests, and thus
has made a prima facie case pursuant
to Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); 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). Despite Respondent’s failure to respond, the Panel will examine all evidence in the record to determine if Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been
authorized to use the DOTEASY.COM mark.
Further, the WHOIS does not indicate that Respondent has ever been or is
commonly known by the <doteasycanada.com>
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
In addition, Respondent is using the disputed domain name to
offer web hosting and domain registration services in competition with
Complainant. The Panel finds that this
is not a bona fide offering of goods
and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith because Respondent is offering web hosting and domain registration services for commercial gain. The services offered by Respondent are of the same nature as the services Complainant offers. The Panel finds that Respondent is benefiting from the likely confusion between the DOTEASY.COM mark and the disputed domain name. Such use of the <doteasycanada.com> domain name is capable of creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel finds that such conduct is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
In addition, the Panel finds that Respondent’s use of the
disputed domain name to offer competing services constitutes bad faith
registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
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 <doteasycanada.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 4, 2007
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