International Publications, Inc. d/b/a The Shepherd's Guide, Inc. v. Keenan Ventures
Claim Number: FA0801001140697
Complainant is International Publications, Inc. d/b/a The
Shepherd's Guide, Inc. (“Complainant”), represented by Cheryl L. Slay, of Law Offices of Cheryl L. Slay, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <shepherdsguide.org>, <theshepherdsguide.org>, and <houstonshepherdsguide.com> registered with Dotregistrar.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 28, 2008, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <shepherdsguide.org>, <theshepherdsguide.org>, and <houstonshepherdsguide.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 February 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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@shepherdsguide.org, postmaster@theshepherdsguide.org, and postmaster@houstonshepherdsguide.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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shepherdsguide.org>, <theshepherdsguide.org>, and <houstonshepherdsguide.com> domain names are identical to Complainant’s THE SHEPHERD’S GUIDE mark.
2. Respondent does not have any rights or legitimate interests in the <shepherdsguide.org>, <theshepherdsguide.org>, and <houstonshepherdsguide.com> domain names.
3. Respondent registered and used the <shepherdsguide.org>, <theshepherdsguide.org>, and <houstonshepherdsguide.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, International Publications, Inc. d/b/a The Shepherd's Guide, Inc., compiles and publishes a business and phone directory it calls “The Shepherd’s Guide.” Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the THE SHEPHERD’S GUIDE mark (Reg. No. 1,630,844 issued January 8, 1991).
Respondent registered the <shepherdsguide.org> domain name on October 28, 2002 and the <theshepherdsguide.org> and <houstonshepherdsguide.com> domain names on February 19, 2003. Respondent utilizes the <sheperdsguide.org> to pass itself off as Complainant, displaying an earlier version of Complainant’s website. The <theshepherdsguide.org> and <houstonshepherdsguide.com> domain names currently do not resolve to a webpage.
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.
Complainant has established rights in the THE SHEPHERD’S
GUIDE mark. Complainant holds a
trademark registration in the
Complainant contends that Respondent’s disputed domain names
are identical to Complainant’s THE SHEPHERD’S GUIDE mark pursuant to Policy ¶
4(a)(i). The
Panel agrees with regard to the <theshepherdsguide.org> domain
name. See U.S.
News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the
words of Complainant’s mark, as well as the addition of a gTLD does not
sufficiently distinguish the disputed domain name from the mark pursuant to
Policy ¶ 4(a)(i).”); see also Sea World, Inc. v. JMXTRADE.com, FA
872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely
a functional element required of every domain name, the <shamu.org>
domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
However, the Panel finds the <shepherdsguide.org> and <houstonshepherdsguide.com> domain
names are not identical, but rather confusingly similar to Complainant’s THE
SHEPHERD’S GUIDE mark. Both of the disputed
domain names include the entirety of Complainant’s mark, merely omitting the
article “the,” adding a generic top-level domain (“gTLD”) of either “.com” or
“.org,” and, in the case of <houstonshepherdsguide.com>, the common
term “
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Where Complainant makes a prima facie case under
Policy ¶ 4(a)(ii), the burden shifts to Respondent to
set forth concrete evidence that it does possess rights to or legitimate
interests in the disputed domain names. The Panel finds that Complainant
has established a prima facie case in
the matter at hand. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Respondent has failed to submit a response to the
Complaint. Therefore, the Panel is
entitled to presume that Respondent lacks all rights and legitimate interests
in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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 American Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum
Complainant contends Respondent has not used the disputed
domain names in connection with a bona
fide offering of goods or services.
Complainant contends that the <theshepherdsguide.org>, and <houstonshepherdsguide.com>
domain names are “passive sites,” and do not resolve to active
websites. The Panel finds Respondent’s failure
to make use of the disputed domain names as neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12,
2001) (finding that no rights or legitimate interests can be found when the
respondent fails to use disputed domain names in any way); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO
Nov. 13, 2000) (finding no rights or legitimate interests where the respondent
failed to submit a response to the complaint and had made no use of the domain
name in question).
Complainant contends Respondent is utilizing the <shepherdsguide.org> domain name to pass
itself off as Complainant. The disputed
domain name resolves to a website which is identical to an earlier version of
one of Complainant’s websites. The Panel
finds such use of the <shepherdsguide.org>
domain name to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that
the respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Respondent is not commonly known by the disputed domain names. Nothing in the WHOIS information nor within the record suggests Complainant is known by the <shepherdsguide.org>, <theshepherdsguide.org>, and <houstonshepherdsguide.com> domain names. The Panel finds the Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the domain names because the WHOIS information listed others as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has failed to make an active use of the <theshepherdsguide.org>, and <houstonshepherdsguide.com>
domain names. The Panel concludes
that this indicates Respondent has registered and used the disputed domain
names in bad faith pursuant to Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v.
Respondent utilizes the <shepherdsguide.org>
domain name to pass itself off as Complainant. The resulting website from the disputed
domain name is identical to Complainant’s earlier webpage. The Panel finds such use to indicate bad
faith registration and use pursuant to Policy 4(a)(iii). See Monsanto Co. v.
Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001)
(finding that the respondent's use of <monsantos.com> to misrepresent
itself as the complainant and to provide misleading information to
the public supported a finding of bad faith); see also American Int’l Group,
Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding
that the disputed domain name was registered and used in bad faith where the
respondent hosted a website that “duplicated Complainant’s mark and logo,
giving every appearance of being associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shepherdsguide.org>, <theshepherdsguide.org>, and <houstonshepherdsguide.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: March 17, 2008
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