Image Concepts, Incorporated v. Whois Protection
Claim Number: FA0803001169792
Complainant is Image Concepts, Incorporated (“Complainant”), represented by Ken
Williams,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <imageconcepts.com>, registered with Rebel.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 26, 2008; the National Arbitration Forum received a hard copy of the Complaint March 26, 2008.
On March 26, 2008, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <imageconcepts.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com verified that Respondent is bound by the Rebel.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April
8, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 28, 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@imageconcepts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 <imageconcepts.com> domain name is identical to Complainant’s IMAGE CONCEPTS mark.
2. Respondent has no rights to or legitimate interests in the <imageconcepts.com> domain name.
3. Respondent registered and used the <imageconcepts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Image Concepts, Inc., provides graphic design and commercial photography services for companies. Complainant registered as a corporate entity in 1981 but has been in business since 1978. Complainant asserts common law rights to the IMAGE CONCEPTS mark based on printed materials used in commerce displaying the IMAGE CONCEPTS mark dating back to 1978. Complainant contends that it registered the <imageconcepts.com> domain name in 1993, and was continuously using it until January 2008 when it decided to move the disputed domain name to a different registrar. Complainant has provided a renewal notice for the <imageconcepts.com> domain name from 2003, showing its previous ownership of the disputed domain name.
Respondent registered the <imageconcepts.com> domain name January 16, 2008. Respondent has been using the disputed domain name to redirect Internet users to unrelated websites.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 is not
required to own a trademark registration to establish rights in the IMAGE
CONCEPTS mark under Policy ¶ 4(a)(i). See
British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist).
Complainant asserts that it has common law rights to the disputed domain name through extensive and continuous use of the IMAGE CONCEPTS mark since 1978. Respondent has not responded, and has therefore not denied Complainant’s assertion. Complainant is well-known for its graphic design services, and has previously promoted its services through use of the <imageconcepts.com> domain name. Therefore, Complainant’s IMAGE CONCEPTS mark has acquired secondary meaning sufficient to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <imageconcepts.com>
domain name is identical to Complainant’s IMAGE CONCEPTS mark because it wholly
incorporates Complainant’s mark.
Previous panels have concluded that the addition of a generic top-level
domain (“gTLD”) does not distinguish the disputed domain name from the
mark. Therefore, the Panel finds that
the disputed domain name is identical to the IMAGE CONCEPTS mark under Policy ¶
4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov.
15, 2000) (stating that the panel should resolve whether a mark is identical or
confusingly similar “by comparing the trademark and the disputed domain name,
without regard to the circumstances under which either may be used”).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(i).
Complainant has the initial burden of showing that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleged that Respondent lacks rights or legitimate interests in the <imageconcepts.com> domain name. In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held 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.” The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and the burden shifts to Respondent. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted to the Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to respond to the Complaint allows the Panel to presume that Respondent has no rights or legitimate interests in the disputed domain name. Nonetheless, the Panel will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant does not indicate that it has authorized Respondent to use the IMAGE CONCEPTS mark. Moreover, the WHOIS information does not indicate that Respondent is commonly known by the <imageconcepts.com> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is using the disputed domain name to redirect Internet users to websites unrelated to Complainant’s graphic design business. In Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002), the panel held that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name. Here also, the Panel finds that Respondent’s use of the <imageconcepts.com> domain name 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). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Moreover, Complainant’s contention that it was the previous owner of the <imageconcepts.com> domain name further demonstrates Respondent’s lack of rights and legitimate interests. The panel in RH-Interactive Jobfinance v. Mooburi Services, FA 137041 (Nat. Arb. Forum Jan. 16, 2003) held in that the complainant’s “prior registration of the domain name, coupled with [r]espondent’s failure to respond” was evidence that the respondent had no rights or legitimate interests in the domain name. The Panel concludes that Complainant’s prior ownership of the disputed domain name is evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)).”
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s diversionary use of the
<imageconcepts.com> domain
name to redirect Internet users to websites unrelated to Complainant’s business
may cause confusion as to the source or sponsorship of the websites that
resolve from the disputed domain name.
Respondent is commercially benefiting from the goodwill associated with
the IMAGE CONCEPTS mark by redirecting Internet users. The Panel finds that Respondent’s use of the
disputed domain name demonstrates registration and use in bad faith under
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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition,
Complainant’s previous ownership of the disputed domain name also demonstrates
registration and use in bad faith by Respondent. In BAA
plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) the panel found
bad faith where the respondent took advantage of the complainant’s failure to
renew a domain name. Here also, the
Panel concludes that Respondent registered the disputed domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133
(Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was
previously held, developed and used by Complainant, opportunistic registration
of the domain name by another party indicates bad faith, absent any
justification that illustrates legitimate use.”).
The Panel finds that Complainant 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 <imageconcepts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 16, 2008.
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