Smith Sport Optics, Inc. v. mk a/k/a Mike
Flynn
Claim Number: FA0206000114590
PARTIES
Complainant
is Smith Sport Optics, Inc.,
Ketchum, ID (“Complainant”) represented by James
E. Griffith, of McDermott, Will
& Emery. Respondent is mk a/k/a Mike Flynn, New
York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <smithsunglasses.com>,
registered with ENOM, Inc.
PANEL
On
July 24, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James P. Buchele as Panelist. The
undersigned Panelist 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 14, 2002; the Forum received a hard copy of the
Complaint on June 10, 2002.
On
June 14, 2002, ENOM, Inc. confirmed by e-mail to the Forum that the domain name
<smithsunglasses.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 26, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 16,
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@smithsunglasses.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.
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
1. Respondent’s <smithsunglasses.com>
domain name is confusingly similar to Complainant’s registered SMITH mark.
2. Respondent does not have any rights or
legitimate interests in the <smithsunglasses.com> domain name.
3. Respondent registered and used the <smithsunglasses.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns numerous trademark
registrations with the U.S. Patent and Trademark Office (“USPTO”) for its SMITH
mark.
Since 1969, Complainant has continually
used the SMITH mark, and variations of said mark, in commerce in connection
with the sale and offering of sunglasses, goggles, ski wear, sporting
equipment, clothing and related parts and accessories. Complainant also
operates a website located at <smithsport.com>, which serves dual
functions in advertising its products and providing news and information with
regards to the fields of skiing, motocross, snow boarding and biking.
|
MARK |
REG. NO. |
REG. DATE |
DATE OF FIRST USE |
GOODS/SERVICES |
SMITH
|
1,805,877 |
11/23/1993 |
12/1969 in Class 9; 3/1991 in Class 21; 1979 in Class 25; 12/1969 in Class 28 |
Spectacles; eyeglasses; sunglasses; face
shields; goggle film advancement systems comprising clear plastic film for
use with goggles to provide clear vision, apparatus for advancing said film
and film replacement rolls; motorcycling goggles and replacement lenses
therefore, in Class 9 Clothes and sponges for wiping and defogging
eyeglasses, goggles and ski lenses, in Class 21; T-shirts, hats and headbands, in Class 25 |
SMITH
|
1,189,158 |
2/9/1982 |
12/1969 |
Sport goggles |
|
BOB SMITH GOGGLE
COMPANY |
1,989,172 |
7/23/1996 |
3/1995 |
Sport goggles for use in skiing, snowboarding,
bicycling, motorcycling, and other active outdoor sports |
Several of Complainant’s SMITH trademark
registrations, including Reg. No. 1,805,877, have achieved incontestable status
pursuant to § 15 of the Lanham Act, as amended. 15 U.S.C. § 1065 (2002).
As a result of Smith’s widespread,
longstanding continuous and prominent use, the SMITH mark has acquired
significant goodwill and fame within its specialized field. Complainant’s SMITH
mark and products are known to the public who recognize the source and origin
of the mark and associate it with Complainant.
Respondent registered the <smithsunglasses.com>
domain name on January 18, 2002. Complainant’s Submission reveals that in
January 2002, Domain Bank, Inc., a company specializing in the bulk
registration, warehousing and sale of domain names, had registered the subject
domain name. After Complainant attempted to contact Domain Bank regarding the
registration of the domain name, Domain Bank transferred <smithsunglasses.com>
to Domainsaleinc.com, an entity also engaged in the practice of trafficking
domain names. A subsequent inquiry by Complainant with Domainsaleinc.com on
January 21, 2002 led to an e-mail from Respondent offering to sell the <smithsunglasses.com>
domain name for $1000. Since then, the disputed domain name has been
transferred twice and was temporarily being used as an anti-abortion website.
Currently, Respondent retains rights in the domain name and is linking <smithsunglasses.com>
to commercial pharmaceutical websites located at <cyberpills.com> and
<e-scripts-md.com>.
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.
Complainant has established rights in the
SMITH mark through registration with the USPTO and continuous use of the mark
in commerce since 1969.
Respondent’s <smithsunglasses.com>
domain name is confusingly similar to Complainant’s SMITH mark.
Respondent’s domain name incorporates Complainant’s SMITH mark in its entirety,
deviating only by the addition of the industry-related word “sunglasses,” the
products that Complainant sells under its mark. The word “sunglasses” contains
no source identifying significance, and consumers who visit <smithsunglasses.com>
are likely to associate the domain name with Complainant and its registered
mark. Respondent’s second level domain name holds no significance without the
addition of Complainant’s SMITH mark. See
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum
Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity); see
also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s mark
with a generic term that has an obvious relationship to the Complainant’s
business).
Furthermore, Respondent’s
addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark
fails to distinguish the domain name and is inconsequential when conducting a
“confusingly similar” analysis under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the gTLD “.com”
after the name POMELLATO is not relevant).
Accordingly, the Panel finds that
Respondent’s <smithsunglasses.com> domain name is confusingly
similar to Complainant’s SMITH mark, thereby satisfying Policy ¶ 4(a)(i).
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <smithsunglasses.com>
domain name. See Canadian Imperial
Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept.
23, 2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to
submit a Response in this proceeding, the Panel is permitted to make all
reasonable inferences in favor of Complainant. See 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”).
Respondent currently links the disputed
domain name to websites that offer pharmaceutical products over the Internet.
Although the domain name has been the subject of previous improprieties (e.g., sold
by Domain Bank, transferred by Domainsaleinc.com and linked to an anti-abortion
website), Respondent’s opportunistic registration of the infringing domain name
satisfies Policy ¶ 4(a)(ii) requirements by itself. Respondent intentionally
sought registration of a domain name that incorporated Complainant’s famous
SMITH mark in order to divert Internet users to its commercial websites.
Respondent’s attempt to opportunistically trade off the goodwill associated
with Complainant’s mark is not in connection with a bona fide offering of goods
or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev,
188
F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the Respondent's sole purpose in
selecting the domain names was to cause confusion with the Complainant's
website and marks, it's use of the names was not in connection with the
offering of goods or services or any other fair use).
There is no evidence that
suggests Respondent is commonly known by <smithsunglasses.com>.
Complainant’s investigation revealed that there is no reference to or any use
of either the SMITH mark, any person with the name of Smith, or anything
pertaining to “sunglasses” anywhere on the pharmaceutical websites linked to
the subject domain name. Because Complainant’s SMITH mark has been in use for
over thirty years and has acquired a significant amount of fame, and
Respondent’s domain name has no apparent connection with the SMITH sunglasses
it denotes, there is a presumption that Respondent does not have any rights or
legitimate interests in a domain name that incorporates Complainant’s SMITH
mark in its entirety. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark).
Accordingly, the Panel determines that
Respondent has no rights or legitimate interests in <smithsunglasses.com>;
thus, Policy ¶ 4(a)(ii) has been satisfied.
The criterion specified in ¶ 4(b) of the
Policy does not represent an exhaustive list of bad faith evidence. The Panel
must take into consideration the totality of circumstances in order to
determine if Respondent registered or used the domain name in bad faith. See
Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith evidence).
Because of the fame associated with
Complainant’s SMITH mark in the optical industry and Complainant’s listing on
the Principal Register of the USPTO, Respondent had constructive notice of
Complainant’s rights in the SMITH mark. Respondent’s subsequent registration of
an infringing domain name, despite knowledge of Complainant’s preexisting
rights, represents bad faith pursuant to Policy ¶ 4(a)(iii). See Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of
Complainant’s widespread promotional efforts coupled with diversion from
Complainant’s site to Respondents for competing commercial gain is sufficient
evidence of bad faith registration and use); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Additionally,
Respondent’s intent to profit from exploitation of the infringing domain name
by linking it to the <e-scripts-md.com> and <cyberpills.com>
websites represents bad faith registration and use under Policy ¶ 4(b)(iv).
Circumstances indicate that Respondent is intentionally attempting to attract,
for commercial gain, Internet users to its website by creating confusion as to
the source of the website. See 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 web site without permission
from Complainant); see also 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).
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 relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <smithsunglasses.com>
domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated:
July 30, 2002
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