Alinco Inc. v. David Phillips a/k/a Rummi.com
Claim Number: FA0205000114384
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent failed to submit a Response in this proceeding.
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…”
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.
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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