Meow Media Inc. v. John Basil a/k/a American Software Factory Corp., Inc.
Claim Number: FA0205000113280
Complainant is Meow Media Inc., Federal Way, WA (“Complainant”). Respondent is John Basil a/k/a American Software Factory Corp., Inc., Jersey City, NJ (“Respondent”) represented by Andrzej Madloch.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <persiankitty.us>, registered with Communi Gal Communications, Ltd.
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 Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 6, 2002; the Forum received a hard copy of the Complaint on May 13, 2002.
On July 23, 2002, Communi Gal Communications, Ltd. confirmed by e-mail to the Forum that the domain name <persiankitty.us> is registered with Communi Gal Communications, Ltd. and that the Respondent is the current registrant of the name. Communi Gal Communications, Ltd. has verified that Respondent is bound by the Communi Gal Communications, Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on July 24, 2002.
On August 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that the domain name at issue is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in the domain name; and that the Respondent registered the domain name in bad faith.
The Respondent contends that it does have rights in the domain name at issue, and did not register the domain name in bad faith.
The Complainant holds a service mark for Persian Kitty’s Adult Links, International Class 041, which was filed on July 29, 1997, and registered September 8, 1998. The Complainant has used this mark in commerce since October 1, 1995. The service mark is clearly for online use, with a disclaimer for the words "adult links."
The Complainant has also filed for an additional use and amendment for the same service mark, International Class 035, to provide hyperlinks to other websites and online directory information services.
The Complainant filed for registration of the domain name at issue during the sunrise signup period on April 2, 2002. The Respondent registered the domain name at issue on April 24, 2002. It appears that the Respondent did not make the website active until May 9, 2002.
The Respondent states that the website has been online from May 1, 2002, and is for information for Persian cat lovers. The Respondent plans to develop an online cat shop.
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.”
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;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
The domain name at issue is confusingly similar to Complainant’s service mark, while being identical to its existing domain names, the only difference being the addition of the top-level domain designations. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that “[t]he addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks).
Further, the domain name at issue mirrors the Complainant’s service mark, rendering the domain name at issue confusingly similar to Complainant’s service mark. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).
Rights or Legitimate Interests
The Respondent has not presented any convincing evidence of its rights or legitimate interests in the domain name, as the printouts from the website provided by the Complainant appear to be a quick attempt on the Respondent's part to show that it was providing a bona fide offering of goods and services, or a legitimate non-commercial use of the domain name. However, as the website is crude at best, it only reinforces Complainaint's contention that the Respondent is using the domain name to confuse internet users. 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 Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).
Also, no evidence has been presented to show that the Respondent is commonly known by the domain name. Further, it does not appear that the Respondent is the owner or beneficiary of a trademark or service mark that is identical to the domain name at issue. 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Registration and Use in Bad Faith
Further, the use of the domain name at issue by the Respondent would certainly cause confusion among internet users as to the source or sponsorship of the wibsite, as Complainaint currently holds registrations for the majority of the available generic top-level domains, more specifically, “.com,” “.net,” “.info,” and “.biz.” It is likely that internet users will associate the domain name at issue with the Complainant's adult services as it is essentially identical to Complainant’s four other domain names. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
As all three elements required by the usTLD Policy have been satisfied, it is the decision of this Panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name <persiankitty.us> be transferred from Respondent to Complainant.
Honorable Paul A. Dorf,
Dated: August 20, 2002
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