Findaway World, LLC v. Rafi Mosseri
Claim Number: FA0710001103293
Complainant is Findaway World, LLC (“Complainant”), represented by Gary
J. Rinkerman, of Baker & Hostetler LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <playaway-digital.com> and <playaway-digital.net>, registered with Godaddy.com, Inc.
The undersigned certifies that she 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
On October 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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@playaway-digital.com and postmaster@playaway-digital.net 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <playaway-digital.com> and <playaway-digital.net> domain names are confusingly similar to Complainant’s PLAYAWAY mark.
2. Respondent does not have any rights or legitimate interests in the <playaway-digital.com> and <playaway-digital.net> domain names.
3. Respondent registered and used the <playaway-digital.com> and <playaway-digital.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Findaway World, LLC, is a distributor of
pre-loaded audio books and music.
Complainant distributes its products worldwide, and its products are
currently available in over 1,400 retail locations and 5,500 libraries. Complainant holds two trademark registrations
with the United States Patent and Trademark Office (“USPTO”) for the PLAYAWAY
mark (Reg. No. 3,091,576 issued
Respondent registered the <playaway-digital.com> and <playaway-digital.net> domain
names 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.
The Panel finds that Complainant’s holding of two trademark
registrations with the USPTO adequately establishes Complainant’s rights in the
PLAYAWAY mark under the requirements of Policy ¶ 4(a)(i).
The <playaway-digital.com> and <playaway-digital.net> domain
names are confusingly similar to Complainant’s PLAYWAY mark under Policy ¶
4(a)(i) as the disputed domain names incorporate Complainant’s mark in its
entirety and add a hyphen, a common term that has a direct relationship to
Complainant’s business, and a generic top-level domain (“gTLD”). The Panel finds that precedent supports the
finding that none of these modifications sufficiently distinguishes the
disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb.
Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not
create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Chanel, Inc. v.
Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient
feature of the Domain Names, is identical to a mark in which Complainant has
shown prior rights. The addition of the
generic term, “perfumes” is not a distinguishing feature, and in this case
seems to increase the likelihood of confusion because it is an apt term for
Complainant’s business.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under the requirements of Policy ¶ 4(a)(ii), Complainant has the burden of establishing a prima facie case that Respondent lacks rights and legitimate interests in the <playaway-digital.com> and <playaway-digital.net> domain names. Once Complainant has met its burden, as the Panel determines Complainant has done here, the burden shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant asserts that there is no evidence indicating
that Respondent is or has ever been commonly known by the <playaway-digital.com> and <playaway-digital.net>
domain names. As Respondent’s WHOIS
information does not indicate such a finding, and Complainant has stated
Respondent is not authorized to use Complainant’s mark, the Panel agrees with
Complainant’s assertions, and finds that Respondent is thus not commonly known
by the <playaway-digital.com> and <playaway-digital.net> domain names under 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 Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
The <playaway-digital.com> and <playaway-digital.net> domain names previously redirected Internet users to the <musicpumps.com> domain name, which offers goods and services in direct competition with Complainant, presumably for Respondent’s own commercial benefit. The Panel finds that the use of disputed domain names that are confusingly similar to Complainant’s mark to redirect Internet users to a website in direct competition with Complainant 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). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Moreover, the current display of websites hosting advertising links to websites in direct competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <playaway-digital.com> and <playaway-digital.net> domain names under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent previously used the <playaway-digital.com> and <playaway-digital.net>
domain names to redirect Internet users to the <musicpumps.com> domain
name, which displays a website in direct competition with Complainant. Such use constitutes a disruption of
Complainant’s business, and is adequate indicia of bad faith registration and
use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure,
Inc., FA 94864 (Nat. Arb.
Forum
In addition to previously resolving to a website in direct
competition with Complainant, the <playaway-digital.com> and <playaway-digital.net>
domain names currently display websites that host hyperlinks to various
third-party websites, some of which are in direct competition with
Complainant. The Panel finds that as
these uses are presumably for Respondent’s own commercial benefit, and because
the disputed domain names are capable of creating confusion as to Complainant’s
affiliation with them, Complainant has adequately shown the elements of bad
faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision
Web Solutions, FA 445601 (Nat. Arb. Forum May 23,
2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website offering competing computer products and
services); see also Univ. of
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 <playaway-digital.com> and <playaway-digital.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 10, 2007
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