Jostens, Inc. v. Kyle Nash c/o Mobi Assist c/o Mobi Group
Claim Number: FA0802001152237
Complainant is Jostens, Inc. (“Complainant”), represented by Erin
C. Skold, of Leonard, Street and Deinard,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jostens.mobi>, registered with Abacus America 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2008.
On February 29, 2008, Abacus America Inc. confirmed by e-mail to the National Arbitration Forum that the <jostens.mobi> domain name is registered with Abacus America Inc. and that Respondent is the current registrant of the name. Abacus America Inc. has verified that Respondent is bound by the Abacus America 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 March 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 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@jostens.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a leading
provider of yearbooks, memory books, class rings, graduation products, and
products for athletic teams.
Complainant, which has been
in business since 1897, owns a trademark registration in the JOSTENS mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,381,423, issued
August 29, 2000).
Respondent is not
commonly known by the disputed domain name nor licensed to register a domain
name bearing Complainant’s JOSTENS mark.
Respondent registered the <jostens.mobi> domain name on November 12, 2006.
Respondent’s domain name resolves to a website that features links to various websites through a series of hyperlinks from which Respondent presumably receives referral fees.
Respondent has attempted to sell the <jostens.mobi> domain name to Complainant for an amount in excess of Respondent’s out-of-pocket costs.
Respondent’s <jostens.mobi> domain name is substantively identical to Complainant’s JOSTENS mark.
Respondent does not have any rights to or legitimate interests in the <jostens.mobi> domain name.
Respondent registered and uses the <jostens.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the JOSTENS mark
through its registration of the mark with the USPTO. This evidence is sufficient to satisfy Policy
¶ 4(a)(i). See Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.” See also Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”
Complainant contends that Respondent’s <jostens.mobi> domain name is identical to Complainant’s JOSTENS mark. We agree. Respondent’s domain name contains Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.mobi.” Respondent’s domain name is therefore substantively identical to Complainant’s mark under Policy ¶ 4(a)(i), because a gTLD is not a distinguishing characteristic. See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007):
The
suffix .mobi should be treated the same way as .com and should be ignored when
comparing the mark and the disputed domain name.
See also Vanderbilt
Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19,
2007) (finding the <vanderbilt.mobi> domain name to be identical to the
VANDERBILT mark because it did not add anything except the generic top-level
domain “.mobi”).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to or legitimate interests in the <jostens.mobi> domain name. In instances where Complainant has made out 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 name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has established a prima facie case by the allegations of its Complaint. Respondent, for its part, has failed to respond to the Complaint. We are therefore justified in concluding that Respondent has no rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). We will therefore examine the record under the provisions of Policy ¶ 4(c) to determine whether there is any basis for concluding that Respondent has such rights or interests.
We begin by noting that there is no dispute on the record
before us that Respondent is using the <jostens.mobi>
domain name to operate a website that connects Internet users to various
unrelated commercial websites through a series of hyperlinks from which
Respondent presumably receives referral fees.
Such use of the <jostens.mobi>
domain name is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to
websites unrelated to a complainant’s mark, websites where that respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy).
Moreover,
Complainant contends that Respondent is not commonly known by the disputed
domain name nor licensed to register a domain name bearing Complainant’s JOSTENS
mark. Respondent does not contest these
allegations. Without evidence suggesting otherwise, we must conclude that
Respondent is not commonly known by the <jostens.mobi> domain name and, therefore, does not have rights to or
legitimate interests in its domain name for purposes of Policy ¶ 4(c)(ii). See Ian Schrager
Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, that assertion must be rejected); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail").
Complainant also contends that Respondent offered to sell Complainant the <jostens.mobi> domain name for an amount in excess of its out-of-pocket costs. Respondent’s willingness to sell the domain name suggests that it registered the domain name for the purpose of selling it, which is evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003): “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.” See also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that, under the circumstances there presented, a respondent’s apparent willingness to dispose of its rights in a disputed domain name suggested that it lacked rights to or legitimate interests in the domain).
The Panel thus finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has submitted evidence of Respondent’s admission
that it registered the <jostens.mobi>
domain name with the intention of selling it.
Moreover, Complainant contends, and Respondent does not deny, that
Respondent’s offering price of $500 is more than its out-of-pocket costs. In these circumstances, we conclude that
Respondent’s admission is evidence of bad faith registration and use of the <jostens.mobi> domain name pursuant
to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v.
Bosman, D1999-0001 (WIPO Jan. 14, 2000) (finding that a respondent used a
domain name in bad faith because it offered to sell the domain for valuable
consideration in excess of any out-of-pocket costs); see also
Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000)
(finding that a respondent demonstrated bad faith where it requested monetary
compensation beyond out-of-pocket costs in exchange for a registered domain
name).
Further, Complainant contends, and Respondent does not deny,
that Respondent uses the <jostens.mobi>
domain name identical to Complainant’s mark for the purpose of operating a
website that features links to various unrelated commercial websites, and which
presumably generate referral fees for Respondent. This is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because such use of Complainant’s mark will likely cause
confusion as to the possibility of Complainant’s sponsorship of or affiliation
with Respondent’s website. See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that a respondent registered and used a domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) where that respondent was using the domain name
to attract Internet users to its commercial website); see also Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat.
Arb. Forum Nov. 19, 2003): “Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the misleading
domain name by receiving ‘click-through-fees.’”
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <jostens.mobi> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 14, 2008
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