Wick Communications Company
v. Digital Webgroup, Inc. c/o Diana Pollard
Claim Number: FA0711001106317
PARTIES
Complainant is Wick Communications Company (“Complainant”), represented by Flavia
Campbell of Lewis and
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thebestoftucson.com> and <thebestoftucson.net>,
registered with Enom, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically November 2, 2007; the
National Arbitration Forum received a hard copy of the Complaint November 5, 2007.
On November 6, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <thebestoftucson.com> and <thebestoftucson.net>
domain names are registered with Enom, Inc.
and that Respondent is the current registrant of the names. Enom, Inc.
verified that Respondent is bound by the Enom,
Inc. registration agreement and thereby has 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 20, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 10, 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@thebestoftucson.com and postmaster@thebestoftucson.net by e-mail.
On November 16, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Preliminary Issue: Deficient Response
Respondent filed a deficient Response because no hard copy was
received. The Forum received the Response December
8, 2007. The Panel finds that Respondent’s submission
did not comply with ICANN Rule 5 (a). See
Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003)
(holding that the respondent’s failure to submit a hard copy of the response
and its failure to include any evidence to support a finding in its favor
placed the respondent in a de facto default posture, permitting the
panel to draw all appropriate inferences stated in the complaint); see also Talk City Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(concluding that no weight would be afforded to the facts alleged in the
respondent’s deficient submission, partly because it “did not contain any
certification that the information contained in the e-mail was, ‘to the best of
Respondent’s knowledge complete and accurate’” in accordance with Rule
5(b)(viii)). But see Strum v.
Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a
Response inadmissible because of formal deficiencies would be an extreme remedy
not consistent with the basic principles of due process. . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628
(Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely
Response electronically, but failed to submit a hard copy of the Response on
time, “[t]he Panel is of the view that given the
technical nature of the breach and the need to resolve the real dispute between
the parties that this submission should be allowed and given due weight”).
The Panel reviewed the Response to determine if substance should
prevail over procedure; but having determined that the deficient Response
contained nothing more than allegations not supported by proof, the Panel finds
that consideration of the deficient Response would not have required a
different outcome than that set out herein.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this matter:
1. Respondent registered two domain names that
contain Complainant’s protected mark in its entirety and are identical to or confusingly
similar to Complainant’s mark.
2. Respondent has no rights to or legitimate
interests in the mark contained within the disputed domain names.
3. Respondent registered and used the disputed
domain names in bad faith.
B. Respondent asserts in Response in this
matter:
1. That Complainant failed to show confusing
similarity.
2. That Respondent has rights and legitimate
interests in the disputed domain names.
3. That Respondent is using the domain names in
good faith.
FINDINGS
Complainant registered for rights in the THE BEST OF TUCSON mark through
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 76,089,709)
and the USPTO issued notice of such rights August 6, 2002.
Complainant filed the registration application July 14, 2000, and it was
published for opposition May 14, 2002.
Complainant stated two first uses in commerce for the mark, May of 1995
and September of 1987.
Respondent registered the <thebestoftucson.net> domain name
February 4, 2002, and registered the <thebestoftucson.com> domain
name February 14, 2003.
Despite Respondent’s assertions that she had no constructive notice of
Complainant’s rights and legitimate interests in Complainant’s mark, the
documents submitted with the Complaint are sufficient to persuade the
Arbitrator that Respondent had personal knowledge as well as constructive
knowledge of Complainant’s mark, Complainant’s rights to and legitimate
interests in the mark, Complainant’s use of the mark in the same geographical,
area and Complainant’s use of the mark in the same area of commerce in which
Respondent’s representative sought to compete with Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires Complainant to 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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 established that it has rights in the THE BEST OF TUCSON mark
through registration with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 76,089,709 issued August 6, 2002) 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat.
Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination
that a mark is registrable, by so issuing a registration, as indeed was the
case here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
Complainant asserts that the <thebestoftucson.com> and <thebestoftucson.net> domain names are identical to its THE BEST
OF TUCSON mark because they contain the mark in its entirety omitting the
spaces and including either the “.com” or “.net” generic top-level domains
(“gTLDs”). Accordingly, the Panel finds
that the disputed domain names are identical to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See
Additionally,
while Respondent contends that Complainant cannot show confusing similarity
between the Complainant’s mark and <thebestoftucson.com> and <thebestoftucson.net> domain names, Respondent
seems to base that position on a claim that the domain names are comprised of
common, descriptive terms and as such cannot be found to be identical to
Complainant’s mark. It is not necessary
for the Panel to address this issue under Policy ¶ 4(a)(i), as this portion of
the Policy considers only whether Complainant has rights in the mark and
whether the disputed domain name is identical to or confusingly similar to
Complainant’s mark. See Vance Int’l, Inc. v. Abend,
FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the
complainant had received a trademark registration for its VANCE mark, the
respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i));
see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs.,
FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
Respondent further offers a public policy argument that because domain
names are used as a tool for the general public to substitute having to
remember a series of numerals to find Internet IP addresses, the disputed
domain name cannot be identical or similar to Complainant’s mark, because this
would be like comparing “apples to oranges.”
The Panel disagrees.
Respondent additionally contends that the individual terms of “THE,”
“BEST,” “OF,” and “
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant must
make a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii).
Once Complainant does so, the burden shifts to Respondent to show it does have
rights or legitimate interests. See
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 UDRP ¶
4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant asserts that Respondent does not
have Complainant’s permission to use the THE BEST OF TUCSON mark in any way. Additionally, the Panel finds that the record
lacks proof of any sort to suggest that Respondent is known by the disputed
domain names. Respondent may not rely on an argument that it is commonly known
by either of the <thebestoftucson.com> and <thebestoftucson.net> domain names pursuant to Policy ¶ 4(c)(ii) unless Respondent offers some proof to that
effect. See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent
does not have rights in a domain name when the respondent is not known by the
mark); 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 disputed domain names that
Respondent registered, <thebestoftucson.com> and <thebestoftucson.net>, contain various links and advertisements to
both services and goods offered by Respondent and/or various
third-parties. Complainant alleges that
Respondent offers on the websites that resolve from the disputed domain names
entertainment reviews and services that attempt to compete with those offered
under Complainant’s mark. Consequently,
the Panel find that Respondent cannot make this type of use to support an
argument that Respondent is making 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 Disney Enters., Inc. v.
Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
the respondent’s diversionary use of the complainant’s mark to attract Internet
users to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names; see also 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).
The Panel has reviewed the parties’ submissions and
finds that Complainant made a prima facie
case and that Respondent failed to rebut Complainant’s showing.
Respondent urges that
it has “continuously developed, maintained, updated and nurtured its websites
either as stand-alone sites or linked by way of products and services keeping
in spirit of ICANN’s mission” of promoting competition and preserving operational
stability of the Internet. In making
this argument, Respondent cannot overcome the fact that Complainant showed
rights in the mark contained within both of the disputed domain names. Further,
Respondent failed to show a bona fide
or legitimate use under the Policy for these two domain names that contain in
its entirety Complainant’s protected mark.
Respondent
also argues that the terms of the <thebestoftucson.com> and <thebestoftucson.net> domain names are generic and of common use and therefore, Complainant does not have an
exclusive monopoly on the terms on the Internet. Inasmuch as the Panel has found that
Complainant made a showing of rights in the mark based on registration of the
mark by the USPTO, Respondent’s argument fails.
The Panel finds that Complainant satisfied ICANN Policy ¶
4(a)(ii).
Complainant also alleges that
Respondent registered and used the domain names containing Complainant’s
protected mark in bad faith. Upon
receipt of cease and desist letters sent by Complainant, Respondent offered to
sell the disputed domain names to Complainant. Despite Respondent’s contention that she had
spent money developing the two sites, Respondent’s willingness to dispose of
the <thebestoftucson.com> and <thebestoftucson.net> domain names supports findings that
Respondent registered and is using the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y
v. “Infa dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the
domain name, even if no certain price is demanded, are evidence of bad faith”);
see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding the respondent's offer to sell the domain name at issue to
the complainant was evidence of bad faith).
Respondent also is using the
websites that resolve from the <thebestoftucson.com> and <thebestoftucson.net>
domain names to offer entertainment advice and services that seek to compete
directly with those offered under Complainant’s THE BEST OF TUCSON mark. As a result, the Panel finds that Respondent
is intentionally disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant's business and create user confusion); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA
135008 (Nat. Arb. Forum Jan. 2, 2003) (finding
evidence of bad faith use and registration where the respondent and the
complainant both operated in the highly regulated field of radio broadcasting
and the respondent registered a domain name incorporating the complainant’s
call letters); see also Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that
the disputed domain names were registered and used in bad faith where the
respondent registered domain names which infringed upon the complainant’s mark,
had no resemblance to the respondent’s business name and where the respondent’s
competing business was located one and a half blocks from the complainant’s
business).
Moreover, Complainant asserts that
Respondent registered and is using the disputed domain names in bad faith
because it is attempting to commercially gain from their confusing similarity
to Complainant’s mark. In addition to
the competing services offered through the disputed domain names, Respondent
advertises and offers its own various products and services. This conduct also supports findings that
Respondent registered and is using the disputed domain names to attempt to
commercially benefit from their confusing similarity with Complainant’s mark and
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv)
through the respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb.
Forum May 14, 2001) (finding bad faith where the respondent used the domain
name, for commercial gain, to intentionally attract users to a direct
competitor of the complainant); see also 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).
Finally, Complainant contends that Respondent had actual or constructive notice prior to its registration of the <thebestoftucson.com> and <thebestoftucson.net> domain names because of the significant amount of publication and use of Complainant’s mark in the same market and area in which Respondent operates its business. Notwithstanding Respondent’s denial of constructive notice of Complainant’s mark and Complainant’s rights in the mark, the Panel finds that registration provides the constructive notice and Respondent’s expropriation of Complainant’s protected mark and Respondent’s use of the mark in order to attempt to compete with Complainant supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website).
The Panel finds that
Complainant satisfied ICANN
Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thebestoftucson.com> and <thebestoftucson.net>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 2, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum