Cambridge Pavers, Inc. v. Versata Software, Inc. c/o Versata Hostmaster
Claim Number: FA0711001112558
Complainant is Cambridge Pavers, Inc. (“Complainant”), represented by Lawrence
D. Mandel, of Mandel & Peslak, New Jersey,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cambridgepavingstone.com>, registered with Red Register, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2007.
The National Arbitration Forum attempted to verify that the <cambridgepavingstone.com> domain name was registered with Red Register, Inc. and that Respondent was the current registrant of that domain name. Red Register, Inc., however, did not respond to multiple contact attempts from the National Arbitration Forum. The National Arbitration Forum then contacted ICANN regarding Red Register, Inc.’s lack of response to the verification request. ICANN made contact with Red Register, Inc., but Red Register, Inc. was non-reponsive to ICANN’s requests for compliance with the UDRP regarding verification of the status of the <cambridgepavingstone.com> domain name. ICANN then instructed the National Arbitration Forum to proceed without verification of the <cambridgepavingstone.com> domain name, with the consent of Complainant. Complainant’s counsel consented in writing on January 16, 2008 to proceed with the Complaint without verification or a Registrar Lock.
On January 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 2008 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 February 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant manufactures and markets paving stones.
Complainant uses a special manufacturing process which produces paving stones that maintain their proper color and texture longer than competing products.
Complainant registered the CAMBRIDGE PAVINGSTONES trademark with the United States Patent and Trademark Office (“USPTO”) on February 20, 2007 (Reg. No. 3,210,417).
Complainant utilizes the CAMBRIDGE PAVINGSTONES mark to market its products and services, which include: paving stone systems, permeable pavements, wall systems, barbeques, fire pits and related outdoor landscaping products.
Complainant has not authorized Respondent to use its CAMBRIDGE PAVINGSTONES trademark.
Respondent registered the <cambridgepavingstone.com> domain name on June 2, 2007.
The disputed domain name resolves to a website that contains links and advertisements for products and services that directly compete with Complainant’s products and services.
Respondent’s <cambridgepavingstone.com> domain name is confusingly similar to Complainant’s CAMBRIDGE PAVINGSTONES mark.
Respondent does not have any rights or legitimate interests in the domain name <cambridgepavingstone.com>.
Respondent has registered and uses the <cambridgepavingstone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant registered the CAMBRIDGE PAVINGSTONES mark with the USPTO. This registration is sufficient to establish Complainant’s rights in the CAMBRIDGE PAVINGSTONES mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008):
Complainant asserts rights
in the mark through its registration of the mark with the
domain name is substantively identical to Complainant’s CAMBRIDGE PAVINGSTONES
mark pursuant to Policy ¶ 4(a)(i). The domain name fully incorporates
Complainant’s CAMBRIDGE PAVINGSTONES mark, with the mere deletion of an
“s.” See Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000) (finding
<americanairline.com> "effectively identical and certainly
confusingly similar" to a complainant's AMERICAN AIRLINES registered
marks); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain
name <victoriasecret.com> to be confusingly similar to a complainant’s
The addition of the generic top-level domain “.com” is, of course, irrelevant in evaluating whether Respondent’s domain name is substantively identical to Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is… without legal significance since use of a gTLD is required of domain name registrants . . . .
The Panel therefore finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case in support of its allegations, the burden shifts to Respondent to establish that it does have rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has established a prima facie case to support its allegations, and Respondent has failed to submit a response to the Complaint. We are thus permitted to presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).
We will, however, examine the record to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
We first note in this connection that there is no dispute that Respondent uses the disputed domain name to display links to products and services that compete with the business of Complainant. Respondent presumably receives click-through fees for displaying these links. This use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001): “Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.” See also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used a domain name to take advantage of a complainant's mark by diverting Internet users to a competing commercial web site).
In addition, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) because there is no evidence that Respondent is commonly known by <cambridgepavingstone.com> domain name. Neither the record before us nor the pertinent WHOIS information provide evidence that Respondent is commonly known by the disputed domain name. And Respondent does not deny the allegation that Complainant has not authorized Respondent to use the CAMBRIDGE PAVINGSTONES mark. See Michael Smith Custom Clothiers, Inc. v. Custom Shirt Shop, FA 1109402 (Nat. Arb. Forum Jan. 4, 2008):
Other ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the “commonly known” provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.
See also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent uses the <cambridgepavingstone.com> domain name to operate a website containing links to products and services that compete with Complainant’s business, and that Respondent presumably receives click-through fees for displaying these links on the website that resolves from the disputed domain name. This behavior is an attempt by Respondent to profit from the goodwill associated with Complainant’s CAMBRIDGE PAVINGSTONES mark, and it constitutes registration and use of the domain name in 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain).
In addition, it appears that Respondent registered the <cambridgepavingstone.com> domain name with at least constructive knowledge of Complainant’s rights in the CAMBRIDGE PAVINGSTONES trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a substantively identical domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <cambridgepavingstone.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 18, 2008
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