National Paintball Supply, Inc. v. Mercenar S.R.L.
Claim Number: FA0204000112607
Complainant is National Paintball Supply, Inc., Sewell, NJ, USA (“Complainant”) represented by Michael F. Snyder, of Drinker, Biddle & Reath LLP. Respondent is Mercenar S.R.L., Constanta, ROMANIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalpaintballromania.com>, registered with Tucows, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 30, 2002; the Forum received a hard copy of the Complaint on May 3, 2002.
On May 1, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <nationalpaintballromania.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 2002 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, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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.
1. Respondent’s domain name <nationalpaintballromania.com> is confusingly similar to Complainant’s NATIONAL PAINTBALL mark and <nationalpaintball.com> domain name.
2. Respondent has no rights or legitimate interests in respect of the disputed domain name.
3. Respondent registered and used the disputed domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant is the owner of U.S. Trademark Reg. No. 2,074,871, for NATIONAL PAINTBALL SUPPLY, issued April 9, 1997. Complainant’s NATIONAL PAINTBALL SUPPLY mark is often abbreviated to NATIONAL PAINTBALL.
Since as early as June 1991, Complainant has used the trademark NATIONAL PAINTBALL in connection with paintball products and accessories. Complainant owns several domain names incorporating the NATIONAL PAINTBALL mark, including the following: <nationalpaintball.com> (1997), <nationalpaintball.org> (1999), <nationalpaintballca.com> (2000), <nationalpaintballsupply.net> (2000), among others. Complainant has expended hundreds of thousands of dollars over the last ten years promoting its NATIONAL PAINTBALL mark.
Respondent registered the disputed domain name <nationalpaintballromania.com> on March 29, 2001 and has used it to advertise and promote the sale of paintball-related goods to the public.
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 the 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.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
The dominant portion of Respondent’s infringing domain name is identical to Complainant’s established NATIONAL PAINTBALL mark. Certain abbreviations of registered marks are protected under ICANN Policy because the primary subject of the domain name still exists, and the inference is clear. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).
The addition of a geographic qualifier to a domain name that incorporates a mark in its entirety fails to detract from the overall confusion generated among Internet users when conducting a Policy ¶ 4(a)(i) analysis. See Sunkist Growers, Inc. v. SG & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to complainant’s registered SUNKIST mark and identical to complainant’s common law SUNKIST GROWERS mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).
Moreover, Respondent is using the disputed domain name to operate a website offering paintball products identical to those offered by Complainant. Internet users will be led to believe that Respondent’s domain name and affiliated website are sponsored by Complainant. See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship exists).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response, and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
By infringing upon Complainant’s registered mark in order to solicit purchases from Internet users based on the established goodwill associated with Complainant’s mark, Respondent fails to demonstrate its rights to and legitimate interests in the <nationalpaintballromania.com> domain name. Specifically, Respondent is opportunistically trading on Complainant’s mark by reproducing Complainant’s NATIONAL PAINTBALL logo in nearly identical form on its competing website, furthering confusion while attempting to pass its services off as Complainant’s. Respondent’s activities lack a connection to a bona fide offering of goods and services under Policy ¶ 4(c)(i). See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).
Respondent does not accrue legitimate rights and interests by way of trademark infringement. Thus, Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii) because it is attempting to benefit commercially from infringing on Complainant’s mark. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).
Additionally, no evidence here suggests that Respondent is commonly known as “nationalpaintballromania” or <nationalpaintballromania.com>, nor was it authorized as a licensee of Complainant’s mark to trade on the value of the mark. Therefore Respondent fails to meet the minimum threshold established by Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent linked the disputed domain name to a website offering merchandise similar to that offered by Complainant. Due to the competitive relationship between Complainant and Respondent it can be inferred that Respondent registered the confusingly similar domain name primarily for the purpose of disrupting the business of its competitor, namely, the Complainant. Respondent’s actions evidence bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).
By linking the contested domain name to a website that commercially benefited by creating a likelihood of confusion with Complainant’s mark as to the source of the website, Respondent acted in bad faith under Policy ¶ 4(b)(iv). Specifically, Respondent designed advertisements and logos that were nearly identical to Complainant’s established mark and corresponding emblems to create this confusion. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).
Furthermore, Respondent illustrated its knowledge of Complainant’s mark by designing the insignia for its own website and corresponding merchandising business on Complainant’s logo. Because Respondent has copied and partially altered Complainant’s logos, adding only the geographic term “Romania,” there can be no question that Respondent was aware of Complainant’s existence. Intentionally registering and using the disputed domain name despite knowledge to another’s established rights in the same mark represents bad faith use and registration under 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. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
Accordingly, 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 the requested relief should be hereby GRANTED.
Accordingly, it is Ordered that the <nationalpaintballromania.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 17, 2002
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