Red Dingo GmbH v. Whois Privacy Inc
Claim Number: FA0711001106625
Complainant is Red Dingo GmbH (“Complainant”), represented by Barbara
Chalk, Roehrliberg 20, Ch-6330 Cham, Switzerland. Respondent is Whois Privacy Inc. (“Respondent”), General Delivery,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <reddingo.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 12, 2007.
On November 13, 2007, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <reddingo.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com 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 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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@reddingo.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 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <reddingo.com> domain name is identical to Complainant’s RED DINGO mark.
2. Respondent does not have any rights or legitimate interests in the <reddingo.com> domain name.
3. Respondent registered and used the <reddingo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Red Dingo GmbH, is a Swiss company with
affiliates in
The WHOIS information for the <reddingo.com> domain name indicates that the disputed domain name was originally registered on February 6, 2000. After the disputed domain name became available in January 2007, Complainant expressed its interest in the <reddingo.com> domain name to the disputed domain name’s then-owner, D. Hicks of Western Australia. Complainant was told that it had to wait an additional 60 days before it could register the disputed domain name. Sometime in March 2007, before the 60 days were up, an individual purporting to own the disputed domain name obtained registration of the <reddingo.com> domain name and subsequently offered to sell the disputed domain name to Complainant for €2,500 (about $3,500).
The <reddingo.com> domain name currently resolves to a website featuring third-party links offering pet tags and other pet accessories in direct Competition with Complainant’s business.
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 registration of the RED DINGO mark with the Australian Patent Office sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD 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 <reddingo.com>
domain name is identical to Complainant’s RED DINGO mark, as it includes
the entire mark and merely omits the space between the words in the mark, an
alteration that does not render the disputed domain name distinct from the RED
DINGO mark. In the same way,
Respondent’s inclusion of the generic top-level domain “.com” is of no
consequence, as a top-level domain is required of all domain names. Therefore, the Panel finds that the <reddingo.com> domain name is
identical to Complainant’s RED DINGO mark pursuant to Policy ¶ 4(a)(i). See
The Panel thus finds that Policy ¶ 4(a)(i) has been
satisfied.
Once Complainant makes a prima facie case to show that Respondent lacks rights and legitimate interests in the <reddingo.com> domain name, the burden then shifts to Respondent to refute that showing. In the present case, the Panel finds that Complainant has established a prima facie case as required by the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on Respondent’s failure to respond to the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the <reddingo.com> domain name. See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <reddingo.com> domain name, as there is no evidence in the record, including Respondent’s WHOIS information, to indicate the contrary. In addition, Respondent is not authorized or licensed to use Complainant’s RED DINGO mark for any purpose. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the <reddingo.com> domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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).
Respondent is using the <reddingo.com>
domain name to display a website featuring links to third-party websites
that offer pet accessories in competition with Complainant, and the Panel
presumes that Respondent earns click-through fees from these links. The Panel finds that such use constitutes
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), and further indicates Respondent’s lack of rights and
legitimate interests in the <reddingo.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”); 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).
The WHOIS information for the disputed domain name indicates that Respondent is a privacy shield. However, Complainant provides an e-mail from an individual named “Tom Barba” which indicates that Mr. Barba owns the <reddingo.com> domain name and wishes to sell it to Complainant. As there is no evidence in the record to suggest otherwise, the Panel infers that Mr. Barba is the true owner of the disputed domain name behind the “Whois Privacy Inc.” shield. Thus, the Panel finds that Mr. Barba’s offer to sell the <reddingo.com> domain name to Complainant for an amount greater than his out-of-pocket expenses indicates a lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
The Panel thus finds that Policy ¶ 4(a)(ii) has been
satisfied.
Lastly, Complainant argues that Respondent registered and is using the <reddingo.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent’s <reddingo.com> domain name resolves to a website featuring links in direct competition with Complainant. The Panel finds that this qualifies as a disruption of Complainant’s business and indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Through the accrual of click-through fees, Respondent is taking commercial advantage of the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to the source of the <reddingo.com> domain name and Complainant’s affiliation with the corresponding website. The Panel finds that this further indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, as mentioned previously, the Panel presumes
that Tom Barba, the individual who purported to sell the <reddingo.com> domain name to Complainant, is the true Respondent
in this case. The Panel finds that Mr.
Barba’s offer to sell the disputed domain name for an amount clearly in excess
of his out-of-pocket costs also points to bad faith registration and use of the
<reddingo.com> domain name
under Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For
The Panel thus 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 <reddingo.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 2, 2008
National
Arbitration Forum
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