Pathlink Technology Corp. v.
Featureprice.com Client Domain
Claim Number: FA0207000115688
PARTIES
Complainant
is Pathlink Technology Corp.,
Sunnyvale, CA (“Complainant”) represented by Gary R. Gleason, of Farbstein
& Blackman. Respondent is Featureprice.com d/b/a Featureprice.com a/k/a Hosting-Network, Inc., Ft. Myers, FL
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <newsguys.net>,
registered with DotRegistrar.com.
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 July 16, 2002; the Forum received a hard copy of the
Complaint on July 15, 2002.
On
July 24, 2002, DotRegistrar.com confirmed by e-mail to the Forum that the
domain name <newsguys.net> is
registered with DotRegistrar.com and that Respondent is the current registrant
of the name. DotRegistrar.com has
verified that Respondent is bound by the DotRegistrar.com 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
August 13, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
3, 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@newsguys.net 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
September 23, 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
<newsguys.net> domain name is confusingly similar to Complainant’s
NEWSGUY mark.
Respondent
has no rights or legitimate interests in the <newsguys.net> domain
name.
Respondent registered and used the <newsguys.net>
domain name in bad faith.
B.
Respondent
Respondent has failed to come forward
with a Response.
FINDINGS
Complainant holds Reg. Nos. 2,225,792
and 2,499,279 with the United States Patent and Trademark Office (“USPTO”) for
the NEWSGUY mark, both of which are registered on the Principle Register. Complainant primarily uses the NEWSGUY mark
to disseminate newsworthy information on the Internet. The information and associated services are
provided on a website located at <newsguy.com>. Complainant also uses the NEWSGUY mark for ancillary products
designed to promote and enhance the services offered under the mark. In an effort to promote and develop the
NEWSGUY mark and associated services, Complainant has invested a substantial
amount of money.
Respondent registered the <newsguys.net>
domain name on February 17, 2002.
Respondent subsequently used the domain name in connection with a
website that distributes photos of newsworthy events. Complainant notified Respondent of its protest to the infringing
domain name and ordered Respondent to cease and desist its use of the domain
name. Respondent did not reply to
Complainant’s correspondence and continues to actively use the domain name.
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
Complainant has established its rights to
the NEWSGUY mark through proof of registration with the USPTO and continuous
use of the mark in e-commerce.
Respondent’s <newsguys.net>
domain name is merely the plural form of Complainant’s NEWSGUY mark. The focus of a confusingly similar analysis
remains on the second level domain, which in this case is “newsguys.” It is well established that merely adding an
“s” on the end of one’s mark and, thus, pluralizing the mark does not create a
distinct domain name capable of overcoming a confusingly similar claim. In addition, the generic top-level domain
has no relevance in the analysis as it is required in all domain names. Hence, the “.net” part of Respondent’s
domain name has no distinguishing significance. Therefore, Respondent’s <newsguys.net> domain name
is confusingly similar to Complainant’s NEWSGUY mark. See Nat’l Geographic
Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding
that the domain name <nationalgeographics.com> was confusingly similar to
Complainant’s “National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream
Pie’ does not prevent the likelihood of confusion caused by the use of the
remaining identical mark. The domain name <creampies.com> is similar in
sound, appearance, and connotation”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant successfully alleges all the
required elements of a Complaint, including Complainant’s assertions that
Respondent has no rights or legitimate interests in the <newsguys.net>
domain name. Complainant’s contentions
shift the burden to Respondent to affirmatively demonstrate rights or
legitimate interests in the domain name.
Respondent, however, has failed to answer the Complaint. Therefore, the Panel may presume that
Respondent has no such rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also 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, all reasonable inferences
may be drawn in favor of Complainant because Respondent has failed to come
forward and defend its registration and use of the <newsguys.net>
domain name. 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”); see also 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 uses the <newsguys.net>
domain name for a website that is designed for the purpose of releasing the
works of press photographers.
Distributing photos of newsworthy events is similar to Complainant’s
NEWSGUY related business of disseminating information of newsworthy events. Thus, Respondent is using a substantially
similar variation of Complainant’s NEWSGUY mark for a website that serves a
similar business purpose. Respondent’s
behavior is likely to confuse and divert unsuspecting Internet users searching
for Complainant’s services to Respondent’s website. Respondent’s diversionary use of Complainant’s NEWSGUY mark does
not constitute a connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate fair use
pursuant to Policy ¶ 4(c)(iii). See
Big Dog Holdings, Inc. v. Day, FA
93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent
was diverting consumers to its own website by using Complainant’s trademarks); see
also N. Coast Med., Inc. v. Allegro
Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use
where Respondent used the domain name to divert Internet users to its competing
website).
Respondent has no business affiliation
with Complainant and, therefore, has no authority to use the NEWSGUY mark. There exists no evidence on the record and
Respondent has failed to come forward to establish that it is commonly known by
the <newsguys.net> domain name.
Complainant’s research has disclosed the identity of the <newsguys.net>
website operator as Rick Moran.
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
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 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <newsguys.net>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Policy ¶ 4(b) lists a number of
circumstances that support a finding of bad faith. However, the same section states that the list is non-exhaustive
and, therefore, the Panel is permitted and encouraged to look at the totality of
circumstances when determining the crucial bad faith registration and use
issues. See 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); see also 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”).
Complainant’s NEWSGUY mark is registered
twice on the Principle Register of the USPTO.
Thus, Complainant’s registration of the NEWSGUY mark imparts
constructive knowledge to all potential infringing parties. A registering party is responsible to make
sure its desired domain name does not infringe on someone else’s trademark
rights. At present, Respondent was
under constructive knowledge of Complainant’s mark when it registered the
domain name because the mark is registered on the Principle Register. This constructive knowledge imparts the
burden on Respondent to ensure that its domain name is not confusingly similar
to another entity’s mark. A rudimentary search with the USPTO would have
uncovered Complainant’s interests in NEWSGUY.
Therefore, Respondent registered the confusingly similar <newsguys.net>
domain name in bad faith. See 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).
In addition, a few months after learning
of Respondent’s registration rights in <newsguys.net> Complainant
notified Respondent of its infringement.
Respondent never replied to Complainant’s correspondence and currently
continues to use the domain name for the aforementioned confusingly similar
purpose. Because Complainant and
Respondent disseminate information that is similar, for purposes of Policy ¶
4(b)(iii), they are in a competitive relationship. Hence, Respondent is using the domain name as a way of disrupting
Complainant’s business, while at the same time fully aware of Complainant’s
interest in the NEWSGUY mark.
Furthermore, the Panel has determined that Respondent has no rights or
legitimate interests in the domain name because of the confusingly similar
content provided under the auspices of the domain name, and Respondent’s
failure to affirmatively make a case in favor of such rights or legitimate
interests. Therefore, Respondent is actively using the domain name in bad faith
under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22,
2000) (finding bad faith where Respondent attempted to attract customers to its
website, <efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant).
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
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <newsguys.net> be transferred from Respondent
to Complainant.
John J. Upchurch, Panelist
Dated: October 1, 2002
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