DECISION

 

Kimmel Gerke Assoc. Ltd. v. Individual a/k/a Anil K. Sastry

Claim Number: FA0205000113979

 

 

PARTIES

 

Complainant is Kimmel Gerke Assoc. Ltd., West St. Paul, MN (“Complainant”) represented by Allan L. Harms of Cedar Rapids, Iowa.  Respondent is Anil K. Sastry, Frederick, MD (“Respondent”), pro se.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

           

The domain names at issue are <emiguru.net> and <emiguru.org>, registered with Tera-Byte Dot Com, Inc.

 

PANEL

 

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.

 

            Rudolph J. Gerber as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 14, 2002; the Forum received a hard copy of the Complaint on May 15, 2002. 

On May 16, 2002, Tucows, Inc. confirmed by Email to the Forum that the domain names <emiguru.net> and <emiguru.org> are registered with Tera-Byte Dot Com, Inc. and that the Respondent is the current registrant of the names.  Tera-Byte Dot Com, Inc. has verified that Respondent is bound by the Tera-Byte Dot Com, 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 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 5, 2002 by which Respondent could file a Response, was transmitted to the Respondent via Email, post and fax, and to all entities listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@emiguru.net and postmaster@emiguru.org by Email.

 

Respondent’s timely Response was received and determined to be complete on June 4, 2002.

 

Additional timely submissions from both parties, dated June 7, 10 and 17 were received and considered fully. 

 

On June 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the above Rudolph J. Gerber as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant; Respondent seeks denial of such transfer and dismissal of this case.

 

PARTIES’ CONTENTIONS

 

A.    Complainant

 

Complainant alleges that the names in question are confusing, do not properly identify Respondent’s services, that Respondent does not actively use these names in his business, that Respondent knew of Complainant’s registration and use of these names, and that Respondent’s use is in bad faith.

 

In particular in both submissions, Complainant alleges that the domain names in question are confusingly similar to Complainant’s EMI GURU service mark and its unregistered service mark EMIGURU.COM.  Complainant owns Service Mark Reg. No. 2,220,003 with the United States Patent and Trademark Office (“USPTO) for EMI GURU.  Complainant uses the EMI GURU mark in relation to consultation and engineering services dealing with the attenuation and avoidance of electromagnetic interference. 

 

Complainant further alleges that Respondent does not use anything similar to the EMI GURU mark in connection with its business services.  Complainant notes that Respondent uses the domain names in connection with a website that advertises links for the following services: analog and RF design; digital design; mechanical design/electronics packaging engineering; industrial design; printed circuit board design; prototype product design consultants; and other services related to consultation and engineering services dealing with electromagnetic interference.  Thus, Respondent uses the domain names to highlight services similar to Complainant’s line of business. 

 

In fact, Respondent owns a registered Service Mark for DESIGNGURU with the USPTO (Reg. No. 2,427,446).  Complainant claims that Respondent could have just as easily used its own DESIGNGURU mark for the same purpose, rather than infringing on Complainant’s EMI GURU mark.

 

Complainant further asserts that Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating confusion with Complainant’s mark.

 

B.    Respondent

 

Respondent denies the allegations above and asserts a bona fide acquisition and use of the names in question. In particular, Respondent asserts lack of identity and little chance of confusion in the names at issue.

 

In particular, Respondent, both in his Response and his subsequent submission, asserts that there is no evidence of confusion between the terms because Complainant’s clients have no reason to become confused because the names in question are different.  Furthermore, Respondent asserts that he does not provide the same services as Complainant and that he, Respondent, has no affiliation with any of the companies listed on the engineering Email list.  He offers, if Complainant wishes, to list Complainant’s domain names on this website list in order to make the names readily available in the public domain. 

 

Respondent contends that he does not provide the same services as Complainant and that the intent of the list, found at the domain names’ attached website, is to help the engineering community by providing a list of all companies involved in this particular kind of engineering work. 

 

Respondent also asserts that the registration of the domain names in question does not cause any confusion with Complainant or Complainant’s services and that the intent of the websites at issue is simply to organize what is already available in the public domain. 

 

C.            Additional Submissions

 

The additional submissions of the parties referenced above elaborate on the original contentions.  Respondent in particular urges that the names in question are redirected to a site “nothing more than a directory of links,” and are intended not for advertisement or compensation and that therefore no confusion is likely. 

 

FINDINGS

 

The Complainant has satisfied the three elements below necessary for relief under the ICANN policy.  See the detailed findings immediately below. 

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 prove each of the following elements to obtain an order that a domain name be cancelled or transferred:  1) the domain 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 interest in respect to the domain name; and 3) the domain name has been registered and is being used in bad faith. 

 

1.                  Identical or Confusingly Similar

 

EMI GURU and EMIGURU.COM both identify Complainant’s business and services.  Complainant has established its rights in the EMI GURU mark through registration with the USPTO and use of the mark in connection with its engineering related services.

 

Respondent’s <emiguru.net> and <emiguru.org> domain names are confusingly similar to Complainant’s EMI GURU mark, indeed the domain names are identical to the EMI GURU mark.  The absence of a space is an insignificant difference between the names and the addition of a generic top-level domain, such as “.net” and “.org” is irrelevant when conducting an analysis under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Accordingly, Complainant has established this element.

 

2.            Rights or Legitimate Interests

 

Respondent’s <emiguru.net> and <emiguru.org> domain names resolve to a website that offers a list of services similar to those provided by Complainant, including consulting and engineering services dealing with electromagnetic interference.  Using domain names that are identical to another entity’s mark to divert Internet traffic to a website that provides information about competing entities does not constitute a bona fide offering of goods or services, nor does it represent a legitimate fair use.  It matters not that the information provided by Respondent was already in the public domain.  It is only relevant that the domain names infringe on Complainant’s EMI GURU mark by having a connection with Complainant’s industry.  Therefore, Respondent has no rights or legitimate interests in the domain names pursuant to Policy ¶¶ 4(c)(i) and (iii).  See 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); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); 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).

 

Complainant asserts that Respondent “makes no use of EMIGURU or EMI GURU with its services and has no right to do so.”  Respondent is not commonly known by EMIGURU, <emiguru.net> or <emiguru.org>.  In fact, Respondent has rights in the DESIGNGURU mark but Respondent uses Complainant’s EMI GURU mark for its domain names.  Furthermore, Complainant never granted Respondent permission to use the EMI GURU mark.  See 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).

 

Complainant has satisfied this element of proof. 

 

3.            Bad Faith

 

Instead of incorporating Respondent’s own DESIGNGURU mark in the domain names, Respondent uses Complainant’s EMI GURU mark in the offending domain names.  It is evident that Respondent profits from the use of the domain name, since Respondent never refuted Complainant’s allegations that the related website was commercially advantageous.  Given the evidence before the Panel, it is apparent that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s EMI GURU mark as to the source of Respondent’s website.  Therefore, Respondent’s registration and use of the domain names constitutes bad faith pursuant Policy ¶ 4(b)(iv).  See 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); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant).

 

Complainant has satisfied this element of proof. 

 

DECISION

 

It is the decision of this Panel that the two domain names at issue, <emiguru.net> and <emiguru.org>, are to be transferred from Respondent to Complainant. 

                       

 

Hon. Rudolph J. Gerber

Arbitrator/Panelist

Dated:  August 19, 2002