Jonathan Drew, Inc. v. Comdot Internet Services Private Limited
Claim Number: FA0801001141945
Complainant is Jonathan Drew, Inc. (“Complainant”), represented by Philip
J. Foret, of Dilworth Paxson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drewestates.com>, registered with Lead Networks Domains Pvt. 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <drewestates.com> domain name is confusingly similar to Complainant’s DREW ESTATE mark.
2. Respondent does not have any rights or legitimate interests in the <drewestates.com> domain name.
3. Respondent registered and used the <drewestates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant produces and sells cigars and cigar-related
products under the DREW ESTATE mark.
Complainant has used the mark continuously in commerce since 1995 to
market and promote its products. Complainant applied for registration of the
mark with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <drewestates.com>
domain name on
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.
While Complainant provides evidence of several trademark
registrations with the USPTO for other marks, Complainant does not assert
ownership of a trademark registration with regards to the DREW ESTATE
mark. However, if the Panel is satisfied
that Complainant has established common law rights in the DREW ESTATE mark,
this is sufficient to satisfy Policy ¶ 4(a)(i).
See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)
(finding that Policy ¶ 4(a)(i) does not require a trademark registration if a
complainant can establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Complainant contends that it has used the DREW ESTATE mark since at least 1995 in connection with the promotion and sale of cigars and cigar-related products. Since that time, Complainant has used its mark continuously and extensively in commerce in order to sell its products, and even operates a website at the <drewestate.com> domain name. Complainant has provided evidence of such use in commerce, as well as pending trademark applications with the USPTO for the mark. The Panel is satisfied that Complainant has used its mark in such a way as to acquire secondary meaning, and thus the Panel determines this portion of Policy ¶ 4(a)(i) to be satisfied. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
The <drewestates.com> domain name is
confusingly similar to Complainant’s DREW ESTATE mark under Policy ¶ 4(a)(i) as
the disputed domain name contains Complainant’s mark in its entirety and adds
the letter “s” to the end of the mark, as well as the generic top-level domain
“.com.” These slight modifications do
not distinguish the disputed domain name from Complainant’s mark under Policy ¶
4(a)(i). See Nat’l Geographic Soc’y v.
Stoneybrook Invs., FA 96263 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must present a prima facie case under Policy ¶ 4(a)(ii) before the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. Upon a review of the Complaint, the Panel is satisfied that Complainant has met its burden with regards to the <drewestates.com> domain name, however, the Panel chooses to examine the elements of Policy ¶ 4(c) before rendering a final decision with regards to Respondent’s rights and legitimate interests. See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Respondent’s WHOIS information identifies Respondent as “Comdot Internet Services Private Limited,” and there is no indication in the record that Respondent has ever been commonly known by the disputed domain name, or authorized to use Complainant’s mark. Thus, the Panel determines that Respondent is not commonly known by the <drewestates.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The website that resolves from the <drewestates.com> domain name displays hyperlinks to various third-party websites in direct competition with Complainant and its business. As such, the Panel determines that Respondent has failed to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <drewestates.com> domain name to display hyperlinks to various third-party websites which compete with Complainant. Respondent is presumably using the disputed domain name in such a way in order to commercially gain through the accrual of click-through fees from Internet users attempting to find Complainant who instead proceed to Respondent’s disputed domain name and resolving website. As such, the Panel determines that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Moreover, as the disputed domain name displays hyperlinks to competitors of Complainant, there is sufficient evidence that Respondent is using the <drewestates.com> domain name to disrupt Complainant’s business. Accordingly, the Panel finds evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
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 <drewestates.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 5, 2008
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