Alinco Inc. v. David Phillips a/k/a
Rummi.com
Claim Number: FA0205000114384
PARTIES
Complainant
is Alinco Inc., Murray, UT, USA
(“Complainant”) represented by Harold C.
Verhaaren, of Nielsen & Senior. Respondent is David Phillips a/k/a Rummi.com, St. Thomas, VIRGIN ISLANDS
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <alincocostume.com>,
registered with eNom, 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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 22, 2002; the Forum received a hard copy of the Complaint
on May 23, 2002.
On
May 22, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <alincocostume.com> is registered
with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is
bound by the eNom, 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
June 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 26,
2002 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@alincocostume.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 11, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<alincocostume.com> domain name is confusingly similar to
Complainant’s common law ALINCO COSTUMES mark.
Respondent
has no rights or legitimate interests in the <alincocostume.com>
domain name.
Respondent
registered and used the <alincocostume.com> domain name in bad
faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant has been doing business and
using the ALINCO COSTUMES mark to designate its products since 1977. Complainant manufactures and sells
promotional and character costumes under the ALINCO COSTUMES mark. Complainant has established itself as a
leader in the mascot industry by manufacturing high profile characters for
amusement parks, high schools and professional sports teams. Complainant manufactures mascots for over 40
percent of the National Basketball Association (NBA) teams.
Complainant has aggressively marketed
itself and the ALINCO COSTUMES mark on the Internet since 1995. Moreover, Complainant has used the
<alincocostumes.com> domain name to promote its business since 1997.
Respondent registered the <alincocostume.com>
domain name on April 25, 2002.
Respondent has not developed a use for the domain name.
Prior to registering the domain name, Respondent
took possession of one of Complainant’s parrot costumes for its business and
stopped making payments on it.
Complainant offered a complete refund if Respondent’s costume was
returned safely. On the date of
registration, Respondent sent correspondence to Complainant that stated, “I got
a real surprise for you…guess who owns the URL www.alincocostume.com.” Subsequently, Respondent sent an email to
Complainant’s attorney that notified Complainant it would have to purchase the
domain name from Respondent and noted that “any legal proceeding can take
years…and during this time it can cost your client numerous sales…”
DISCUSSION
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 the 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.
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; and
(2)
the 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.
Identical and/or Confusingly Similar
In order to satisfy the standing
requirement of Policy ¶ 4(a)(i) Complainant need not have a registered
trademark because rights at common law, by way of continuous use in commerce,
will suffice. Complainant has
established common law rights in the ALINCO COSTUMES mark through continuous
use in association with its character costumes for twenty-five years. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name
[<keppelbank.com>] in connection with its banking business, it has acquired
rights under the common law”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000)
(finding that the Complainant has common law rights in the mark FISHTECH, which
it has used since 1982); 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 <alincocostume.com>
contains Complainant’s ALINCO COSTUMES mark with the omission of an “s.” It has been held that the deletion of an “s”
from a mark that is incorporated in a domain name does not differentiate the
domain name from the incorporated mark.
See Victoria's Secret v.
Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding
the domain name <victoriasecret.com> to be confusingly similar to
Complainant’s trademark, VICTORIA’S SECRET); see also American
Airlines Inc. v. Data Art Corp.,
FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com>
"effectively identical and certainly confusingly similar" to
Complainant's AMERICAN AIRLINES registered marks).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has
no rights or legitimate interests in the <alincocostume.com>
domain name and Respondent did not respond to refute Complainant’s
assertions. Therefore, the Panel may
presume Respondent has no such rights or legitimate interests in the domain
name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names). Furthermore, in the absence of a Response,
all reasonable inferences may be drawn in favor of the Complainant. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Respondent sent multiple correspondences
to Complainant that informed Complainant of Respondent’s registration of the <alincocostume.com>
domain name and Respondent’s desire to sell the domain name to
Complainant. Respondent has made no use
of the domain name except to hold it hostage for sale to Complainant. Because Respondent had prior business
contacts with Complainant, it can be inferred that Respondent registered the
domain name with the intention of selling it to Complainant. Respondent’s actions do not constitute a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor do
they represent a legitimate noncommercial fair use pursuant to Policy ¶
4(c)(iii). See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where the Respondent registered the domain name with
the intention of selling the domain name); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27,
2000) (finding that the Respondent has no rights or legitimate interests in the
domain name where it appeared that the domain name was registered for ultimate
use by the Complainant).
Complainant never authorized Respondent
to use the ALINCO COSTUMES mark for any purpose. Respondent is not commonly known by ALINCOCOSTUME or <alincocostume.com>.
Respondent is known to this Panel as
David Phillips a/k/a Rummi.com. 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the disputed domain name,
thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Prior to registering the <alincocostume.com>
domain name, Respondent conducted business with Complainant and failed to
provide full payment for a costume it purchased. Therefore, Respondent knew of Complainant’s interests in the
ALINCO COSTUMES mark, as Complainant used the mark on the costume Respondent
purchased. Also, Respondent’s knowledge
of Complainant’s interests in the mark is further evidenced by Respondent’s
actions notifying Complainant that if it wanted the domain name it would have
to buy the domain name. Hence,
Respondent’s registration of the <alincocostume.com> domain name,
despite its apparent knowledge of Complainant’s rights in the ALINCO COSTUMES
mark, constitutes bad faith registration.
See also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); see also CBS
Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000)
(“There is nothing inherently wrongful in the offer or sale of domain names,
without more, such as to justify a finding of bad faith under the Policy.
However, the fact that domain name registrants may legitimately and in good
faith sell domain names does not imply a right in such registrants to sell
domain names that are identical or confusingly similar to trademarks or service
marks of others without their consent”).
Respondent registered and held the <alincocostume.com>
domain name to coerce Complainant into buying it. All of Respondent’s correspondence with Complainant indicates
that the domain name was registered with the primary intent to sell it to
Complainant. Therefore, Respondent’s
use of the domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to Complainant amounts to a use of the domain name in bad faith); see
also Pocatello Idaho Auditorium Dist. v. CES Mark. Group, Inc., FA
103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a
domain [name] bad faith is some accompanying evidence that the domain name was
registered because of its value that is in some way dependent on the trademark
of another, and then an offer to sell it to the trademark owner or a competitor
of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that the requested relief should be
hereby GRANTED.
Accordingly, it
is Ordered that the <alincocostume.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 17, 2002
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