TM Acquisition Corp. v. Peter Carrington
d/b/a Party Night, Inc.
Claim Number: FA0207000116764
PARTIES
Complainant
is TM Acquisition Corp., Las Vegas,
NV, USA (“Complainant”) represented by Kathryn
S. Geib. Respondent is Party Night, Inc., Amsterdam, THE
NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <jacksonhewit.com>,
registered with Key-Systems GmbH.
PANEL
The
undersigned certifies that he as acted independently and impartially and to the
best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 18, 2002; the Forum received a hard copy of the
Complaint on July 19, 2002.
On
August 6, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the
domain name <jacksonhewit.com>
is registered with Key-Systems GmbH and that Respondent is the current
registrant of the name. Key-Systems
GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 26,
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@jacksonhewit.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.
On
September 12, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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
<jacksonhewit.com> domain name is confusingly similar to
Complainant's JACKSON HEWITT mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant holds a registered trademark
with the United States Patent and Trademark Office for JACKSON HEWITT (Reg. No.
2,138,700) in relation to tax preparation.
Complainant is also the owner of four other trademarks registered with
the United States Patent and Trademark Office, incorporating the JACKSON HEWITT
name. Complainant is a franchiser of a
system of business for the promotion and assistance of independently owned and
operated tax return preparation offices, designed to enable such offices to
compete more effectively in the tax return preparation market. Complainant has offered tax return
preparation services under the JACKSON HEWITT mark since 1987. Presently, Complainant’s services are
available in 47 states at 3,816 locations.
Complainant has expended over 8 million
dollars in the promotion and advertising of its JACKSON HEWITT mark in
association with its tax preparation business.
Complainant operates a website located at <jacksonhewitt.com>.
Respondent registered the disputed domain
name, <jacksonhewit.com>, on March 10, 2002. Respondent is using the disputed domain name
in order to automatically link Internet users to a pornographic website located
at <hanky-panky-college.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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the JACKSON HEWITT mark through registration and continuous use since
1987. Respondent’s <jacksonhewit.com>
domain name is confusingly similar to Complainant’s mark because it
incorporates Complainant’s entire mark and merely omits the letter “t” at the
end of HEWITT. The omission of a single
letter from Complainant’s mark does not create a distinct mark capable of
overcoming a claim of confusing similarity.
See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a Respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
Complainant’s marks); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain name does not significantly change the overall impression of the mark).
The Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See 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, when Respondent fails to
submit a Response the Panel is permitted to make all 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’s only use of the disputed
domain name is to hyperlink Internet users to pornographic websites. This type of use is not considered to create
rights or legitimate interests because it is not a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent
had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where Respondent linked
these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use); see also MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material where such use is calculated to mislead consumers and to tarnish
Complainant’s mark).
Furthermore, there is no evidence on
record, and Respondent has not come forward to offer any proof that it is
commonly known as JACKSON HEWIT or <jacksonhewit.com>. Therefore, Respondent has failed to
establish that it has rights or legitimate interests in the disputed 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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent is using a domain name that is
confusingly similar to Complainant’s mark in order to divert Internet users to
a pornographic website located at <hanky-panky-college.com>. This type of use is considered to be
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148
(WIPO Apr. 26, 2000) (finding that “this association with a pornographic web
site can itself constitute bad faith”).
Respondent is engaging in a practice
called typosquatting. This practice of “typosquatting” has been recognized as a
bad faith use of a domain name under the UDRP. See e.g. Hewlett-Packard Co.
v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding
<hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see
also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com>
and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to
Complainant).
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 the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <jacksonhewit.com> be transferred from
Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 13, 2002
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