Dialight Corporation v. Component Enterprises a/k/a David Hoffman
Claim Number: FA0803001159928
Complainant is Dialight Corporation (“Complainant”), represented by Jonathan Hudis of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Virginia USA. Respondent is Component Enterprises a/k/a David Hoffman (“Respondent”), of Pennsylvania USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dialight.net>, registered with Register.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 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.
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 <dialight.net> domain name is identical to Complainant’s DIALIGHT mark.
2. Respondent does not have any rights or legitimate interests in the <dialight.net> domain name.
3. Respondent registered and used the <dialight.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dialight Corporation, is in the business of applying light emitting diode technology to various visual applications. Complainant possesses two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DIALIGHT mark (Reg. No. 1,422,681 issued Dec. 30, 1986 and Reg. No. 3,015,206 issued Nov. 15, 2005). Complainant is also the registrant of the <dialight.com> domain name since at least as early as 1998.
Respondent registered the disputed domain name on
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’s registration of the DIALIGHT mark with the
USPTO satisfies Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb.
Forum May 17, 2007) (finding “no difficulty” in holding that the complainant
had established rights in its asserted marks for the purposes of Policy ¶
4(a)(i) through its trademark registrations with the USPTO); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum
The disputed domain
name is identical to Complainant’s mark.
The <dialight.net> domain
name is comprised solely of Complainant’s entire mark and the generic top-level
domain (“gTLD”) “.net.” Every domain
name requires a top-level domain of some type, so the addition of the “.net” suffix
is irrelevant to a Policy ¶ 4(a)(i) analysis. See Katadyn N. Am. v.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Where Complainant makes 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. The Panel finds that Complainant has
established a prima facie case in the
matter at hand. See Domtar, Inc. v. Theriault., FA
1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima
facie case that [the] respondent lacks rights and legitimate interests in
the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts
to [the] respondent to show it does have rights or legitimate
interests.”). Here, Respondent has
failed to submit a response to the Complaint.
Therefore, the Panel is entitled to presume that Respondent lacks all rights
and legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“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 Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum
The disputed domain name, <dialight.net>, currently resolves to a website that promotes both Complainant’s products and the products of Complainant’s competitors. Complainant contends, and Respondent has not denied, Respondent’s promotion of Complainant’s products is unauthorized. The Panel finds Respondent’s use to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also 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).”).
Complainant contends that Respondent is not commonly known
by the <dialight.net> domain
name and is not authorized to use Complainant’s DIALIGHT mark in any way.
Nowhere in Respondent’s WHOIS information or elsewhere in the record does it
indicate that Respondent is or ever was commonly known by the <dialight.net> domain name. Absent evidence suggesting otherwise, the
Panel finds that Respondent has not established rights to or legitimate
interests in the disputed domain name in accordance with Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent currently utilizes the disputed domain name in
connection with the unauthorized promotion of Complainant’s products as well as
the promotion of the products of Complainant’s competitors. The Panel finds such use to establish that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See St.
Lawrence Univ. v. Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by
redirecting Internet users seeking information on Complainant’s educational
institution to competing websites, Respondent has engaged in bad faith
registration and use pursuant to Policy ¶
4(b)(iii).”); see also
Moreover, Respondent is presumed to be benefiting through the use of click-through fees from these links to Complainant’s competitors. Internet users searching for Complainant’s DIALIGHT mark would easily be confused by the disputed domain name, which results in additional traffic to Respondent’s websites. The Panel finds such confusion for commercial gain to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dialight.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: May 5, 2008
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