The Pilot Ink Co., Ltd. v. PunjabDomains c/o Vinu Vishnu
Claim Number: FA0711001106690
Complainant is The Pilot Ink Co., Ltd. (“Complainant”), represented by Barry Hutsel, of Moffat & Co., Suite 1200 - 427 Laurier Avenue West, Ottawa, ON K1R 7Y2, Canada. Respondent is PunjabDomains c/o Vinu Vishnu (“Respondent”), A1/749 NewvistaPl, Andheri, Mumbai 400-062, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aquadoodle.com>, registered with Enom, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 8, 2007.
On November 9, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aquadoodle.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <aquadoodle.com> domain name is identical to Complainant’s AQUA DOODLE mark.
2. Respondent does not have any rights or legitimate interests in the <aquadoodle.com> domain name.
3. Respondent registered and used the <aquadoodle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Pilot Ink Co., Ltd., is the oldest and
largest writing instrument manufacturer in
Respondent registered the <aquadoodle.com> domain name on June 11, 2004. The website that resolves from the disputed domain name advertises links to toy-related websites as well as websites that purport to sell Complainant’s product.
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 registered the AQUA DOODLE mark with the CIPO, the JPO, and the USPTO. Therefore, the Panel finds that Complainant has established rights to the mark under 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 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.").
Respondent’s <aquadoodle.com> domain name is identical
to Complainant’s AQUA DOODLE mark because the disputed domain name incorporates
the Complainant’s entire mark. Because domain
names cannot have spaces, Respondent’s removal of the space between the two
individual terms of the AQUA DOODLE mark does not sufficiently distinguish the
disputed domain name from Complainant’s mark.
Moreover, all domain names are required to have a top-level domain;
therefore, Respondent’s inclusion of the generic top-level domain (“gTLD”)
“.com” does not distinguish the disputed domain name from the AQUA DOODLE
mark. The Panel finds that the <aquadoodle.com> domain name is identical
to Complainant’s AQUA DOODLE mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant must first present a prima facie case establishing that Respondent lacks all rights and legitimate interests in the <aquadoodle.com> domain name. Once Complainant has met the burden and made a prima facie case supporting the assertion that Respondent lacks rights and 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 in the <aquadoodle.com> domain name, and thus made a prima facie case pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).
Because Respondent failed to respond to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. See 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.”); 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 examine all evidence in the record to determine if Respondent does have rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent has never been commonly known by the <aquadoodle.com> domain name, and has never been authorized to use the AQUA DOODLE mark. Moreover, the WHOIS information does not indicate that Respondent is commonly known by the disputed 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 Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
In addition, Respondent is currently using the disputed domain name to advertise links to Complainant’s products and toy-related products. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The website that resolves from the <aquadoodle.com> domain name advertises links to Complainant’s product and other toy-related products, from which Respondent is likely commercially benefiting. Respondent’s use of the disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the <aquadoodle.com> domain name. The Panel finds Respondent’s commercial use of the disputed domain name to host a click-through site is evidence of registration and use in bad faith under 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
In addition, the Panel finds that Respondent’s use of the disputed domain name to advertise links to related products constitutes bad faith registration and use under 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 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).
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 <aquadoodle.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 26, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum