Claim Number: FA0803001157312
Complainant is Bondurant School of High Performance Driving, Inc. (“Complainant”), represented by John
D. Titus, of The Cavanagh Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bondurantschool.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2008.
On March 6, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <bondurantschool.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.
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:
1. Respondent’s <bondurantschool.com> domain name is confusingly similar to Complainant’s BONDURANT mark.
2. Respondent does not have any rights or legitimate interests in the <bondurantschool.com> domain name.
3. Respondent registered and used the <bondurantschool.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <bondurantschool.com> domain name on February 14, 2006, and is currently using the disputed domain name to resolve to a website that features links to driving schools that are in direct competition with Complainant.
Respondent has also been the respondent in several other UDRP cases, wherein the disputed domain names have been transferred from Respondent to the respective complainants.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 alleges rights to the BONDURANT mark based upon its USPTO trademark registration. Under the Policy, registration of a mark with an appropriate government authority, such as the USPTO, confers rights in the mark to complainant. Therefore, the Panel determines Complainant has successfully established rights to the BONDURANT mark for the purposes of Policy ¶ 4(a)(i). See 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.”); see also 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.”).
Complainant also alleges Respondent’s <bondurantschool.com> domain name is confusingly similar to its BONDURANT mark. The disputed domain name contains Complainant’s mark in its entirety, adds the generic word “school”, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term “school” adds to the confusing similarity between Complainant’s mark and the <bondurantschool.com> because “school” describes services offered by Complainant. In addition, the Panel finds the addition of descriptive words and gTLDs do not distinguish a domain name from complainant’s mark. Based on the above, the Panel concludes that Respondent’s <bondurantschool.com> domain name is confusingly similar to Complainant’s BONDURANT mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <bondurantschool.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. Because Respondent has failed to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Further, Complainant alleges Respondent is not commonly known by disputed domain name <bondurantschool.com>. Based on the WHOIS information, Respondent is identified as “Belize Domain WHOIS Service Lt.” The Panel finds no other evidence in the record suggesting Respondent may be commonly known by the disputed domain name. Therefore, the Panel concludes that, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the <bondurantschool.com> domain name. 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, the assertion must be rejected); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent is also using the <bondurantschool.com> domain name to redirect Internet users to a web page containing links to competitors of Complainant. The Panel assumes Respondent earns click-through fees for each redirected Internet user. Therefore, the Panel concludes that Respondent’s use of the <bondurantschool.com> domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously stated, Respondent is using the <bondurantschool.com> domain name to redirect Internet users to a website that displays links to Complainant’s competitors. This use of the disputed domain name likely disrupts Complainant’s business by diverting potential customers to websites of Complainant’s competitors in violation of Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <bondurantschool.com> domain name resolves to a website that features links to Complainant’s direct competitors. Respondent presumably receives referral fees from these advertisers. By incorporating Complainant’s BONDURANT mark within its confusingly similar disputed domain name, Respondent has created a likelihood of confusion as to the affiliation and endorsement of the disputed domain and corresponding website. The Panel therefore finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant also alleges Respondent has a pattern of registering domain names to prevent the owner of a Trademark from reflecting the mark in a corresponding domain name. Evidence shows that Respondent has been involved in 34 UDRP arbitration proceedings in which Respondent was ordered to transfer the disputed domain name to Complainant. See Fertur Peru E.I.R.L. v. Belize Domain WHOIS Service Lt., FA 1111951 (Nat. Arb. Forum Dec. 7, 2007); see also SkinMedica, Inc. v. Belize Domain WHOIS Service Lt., FA 1112556 (Nat. Arb. Forum Nov. 27, 2007). The Panel further concludes that Respondent’s registration and use of <bondurantschool.com> is in bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in 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 relief shall be GRANTED.
Accordingly, it is Ordered that the <bondurantschool.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr., Panelist
Dated: April 14, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum