Spinestudios, Inc. d/b/a SPINE3D v. Vasiliy Makovetskiy c/o Home
Claim Number: FA0801001126671
Complainant is Spinestudios, Inc. dba SPINE3D (“Complainant”), represented by John
H. Friedhoff, of Fowler White Burnett P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <spline3d.com>, registered with Key-Systems Gmbh.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2008.
On January 10, 2008, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <spline3d.com> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 January 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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 postmaster@spline3d.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <spline3d.com> domain name is confusingly similar to Complainant’s SPINE 3D mark.
2. Respondent does not have any rights or legitimate interests in the <spline3d.com> domain name.
3. Respondent registered and used the <spline3d.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Spinestudios, Inc. d/b/a SPINE3D, is a design company that offers three-dimensional production services, including renderings and animation for architects, developers, and advertising agencies. Since 2000, Complainant has operated under the SPINE 3D mark (Ser. No. 77/327,033 filed November 12, 2007), which has been the subject of a trademark application with the United States Patent and Trademark Office (“USPTO”). Complainant has run its operations through the <spine3d.com> domain name, which has been owned and operated by Complainant since March 1, 2000.
Respondent registered the <spline3d.com> domain name on July 28, 2004. Respondent is using the disputed domain name to divert Internet users to Respondent’s website, which conducts a business substantially similar to Complainant’s operations.
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.
In order to establish sufficient rights in a mark and obtain
standing under the UDRP, Complainant need not demonstrate registration of the
mark with the USPTO or other governmental authority pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also
The Panel finds that Complainant asserts sufficient common law rights in the SPINE 3D mark to grant standing under the UDRP pursuant to Policy ¶ 4(a)(i). Complainant has set forth facts alleging that it has used the mark in conjunction with its three-dimensional design services since 2000, and that such operations have been conducted through the <spine3d.com> domain name, which is identical to the mark. Therefore, the Panel finds that such evidence confirms Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <spline3d.com>
domain name incorporates Complainant’s entire mark while adding an “l” to
“spine,” as well as the generic top-level domain “.com.” The mere addition of one letter typically
fails to render a disputed domain name sufficiently distinct as to hinder a
finding of confusing similarity. Likewise,
the addition of the generic top-level domain “.com” fails to tender any
relevance to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that Respondent’s <spline3d.com> domain name is
confusingly similar to Complainant’s SPINE 3D mark under Policy ¶ 4(a)(i). See
Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are
confusingly similar to the complainant’s mark, ICQ); see also Am.Online, Inc. v.
Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar.
16, 2000) (finding that the respondent’s domain name,
<americanonline.com>, is confusingly similar to the complainant’s famous
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <spline3d.com> domain name. Since Complainant has asserted a sufficient prima facie case supporting its allegations, Respondent receives the burden of showing that it does have rights or legitimate interests. 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).”); 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).
Respondent is currently using the disputed domain name to
resolve to Respondent’s competing website.
There is no evidence in the record to suggest that Respondent has
attempted to use the disputed domain name for any purpose other than to compete
with Complainant. Therefore, the Panel
finds that Respondent’s use of the disputed domain name clearly fails to
constitute 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 Am.
Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding that use of the complainant’s mark “as a portal to suck surfers
into a site sponsored by [the respondent] hardly seems legitimate”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
Respondent offers no evidence in the record, including the
WHOIS domain name registration information, to conclude that it is commonly
known by the <spline3d.com>
domain name. Therefore, the Panel finds
that Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is currently using the disputed domain name to divert
Internet users seeking Complainant’s services to Respondent’s competing website. Such use, combined with the slight variation
of Complainant’s mark in the disputed domain name, fairly points to a primary
intent of Respondent to disrupt Complainant’s business. Therefore, the Panel finds that Respondent
has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Respondent’s <spline3d.com>
domain name diverts Internet users to Respondent’s competing website. Respondent achieves this result through the
registration of the disputed domain name which takes advantage of those users’
common typographical errors. Therefore,
Respondent has created a likelihood of confusion as to the source and
affiliation of the disputed domain name and corresponding website. Thus, the Panel finds that Respondent has
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
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 <spline3d.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 29, 2008
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