James L. Throneburg v. Adtelect Networks, Inc.
Claim Number: FA0711001106069
Complainant is James L. Throneburg (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP, Bank of America
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thorlosshoestore.com>, registered with Godaddy.Com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2007.
On November 05, 2007, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thorlosshoestore.com> domain name is registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the name. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, Inc. 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 November 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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.
On December 4, 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 <thorlosshoestore.com> domain name is confusingly similar to Complainant’s THORLOS mark.
2. Respondent does not have any rights or legitimate interests in the <thorlosshoestore.com> domain name.
3. Respondent registered and used the <thorlosshoestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, James L. Throneburg, is the owner of the
trademarks THORLO and THORLOS.
Complainant, through its exclusive licensee THOR∙LO, Inc., has
utilized the THORLOS mark in connection with footwear since at least June 17,
1963. THOR∙LO, Inc. is one of the
largest and most well known manufacturers of socks and other footwear in the
Complainant alleges that Adtelect Networks, Inc., the current Respondent, was also the Respondent in The Orvis Comp. Inc. v. Adtelect Consult. Inc., FA 1045274 (Nat. Arb. Forum Sept. 2, 2007), in which the domain name <orvisshoestore.com> was transferred to the Complainant.
Respondent registered the domain name <thorlosshoestore.com> on June 26, 2007. Currently the domain name resolves to a website entitled “Thorlos Shoe Store Blog,” that provides links to Complainant’s competitor’s products.
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 established rights in the THORLOS mark. Complainant holds the
Complainant contends that Respondent’s disputed domain name is confusingly similar to Complainant’s THORLOS mark. Complainant contends that the disputed domain name includes the entirety of Complainant’s mark, merely adding the generic terms “shoe” and “store,” both of which directly relate to Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that such minor alterations to an otherwise unchanged mark do not sufficiently distinguish Respondent’s domain name from Complainant’s mark in any meaningful way for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Where Complainant makes a prima facie case under
Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete
evidence that it does possess rights to or legitimate interests in the disputed
domain name. The Panel finds that Complainant has established a prima facie case in the matter at
hand. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent has failed to submit a response to the Complaint. The Panel is entitled to presume that Respondent lacks all rights and legitimate interests in the disputed domain name. 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 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.”). Nonetheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the <thorlosshoestore.com> domain name pursuant to Policy ¶ 4(c).
The disputed domain name, <thorlosshoestore.com>, currently resolves to a website that contains links to websites, including several of Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Furthermore, Complainant contends that Respondent is neither commonly known by the <thorlosshoestore.com> domain name nor was authorized to use Complainant’s THORLOS mark in any way. Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the <thorlosshoestore.com> domain name. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in the domain name in accordance with Policy ¶ 4(c)(ii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent currently utilizes the disputed domain name, <thorlosshoestore.com>, to resolve to a website featuring various links to third-party competitors of Complainant. The Panel finds such use establishes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent is presumed to be benefiting through the use of click-through fees from these links to third-party competitors of Complainant. Internet users searching for Complainant’s THORLOS mark would easily confused by the disputed domain name, which results in additional traffic to Respondent’s websites. The Panel finds such confusion for commercial gain to be further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See 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.’”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees)).
Complainant also contends that Respondent or Respondent’s affiliate has been involved as the Respondent in at least one other UDRP proceeding in which a disputed domain name was transferred to the Complainant. In the absence of any evidence to the contrary, the Panel finds that Respondent has engaged in a pattern of conduct indicative of bad faith pursuant to Policy ¶ 4(b)(ii). See The Orvis Comp. Inc. v. Adtelect Consult. Inc., FA 1045274 (Nat. Arb. Forum Sept. 2, 2007); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
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 <thorlosshoestore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 14, 2007
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