Ali Wing, Inc. v. sysadmin admin c/o balata.com ltd
Claim Number: FA0803001169833
Complainant is Ali Wing, Inc. (“Complainant”), represented by David
A. W. Wong of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gigglemagazine.com>, registered with Black Ice Domains, Inc.
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 27, 2008.
On April 3, 2008, Black Ice Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <gigglemagazine.com> domain name is registered with Black Ice Domains, Inc. and that Respondent is the current registrant of the name. Black Ice Domains, Inc. verified that Respondent is bound by the Black Ice Domains, Inc. 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 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 29, 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@gigglemagazine.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. The domain name that Respondent registered, <gigglemagazine.com> is confusingly similar to Complainant’s GIGGLE HEALTHY. HAPPY. BABY. mark.
2. Respondent has no rights to or legitimate interests in the <gigglemagazine.com> domain name.
3. Respondent registered and used the <gigglemagazine.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant markets products and offers informational and educational services to new parents at its online website and retail stores. Complainant registered the GIGGLE HEALTHY. HAPPY. BABY. mark with the United States Patent and Trademark Office (“USPTO”) on August 1, 2006 (Reg. No. 3,122,969). Complainant also filed for registration of the GIGGLE BETTER BASICS mark with the USPTO on May 29, 2007, (Ser. No. 77/192,173). In addition, Complainant owns the <giggle.com> domain name.
Respondent registered the <gigglemagazine.com> domain name December 27, 2006, one year and four months after Complainant’s Registration of the GIGGLE.HEALTHY.HAPPY.BABY, dated August 1, 2006. Application for the Registration preceded registration of the domain name. Respondent has been using the disputed domain name to display links to both unrelated and competing baby product 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 registered the GIGGLE HEALTHY. HAPPY. BABY. mark with the USPTO, thereby establishing rights to the mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Registration is sufficient to show rights in the mark for all purposes.
Complainant also has alleged that it acquired common law rights to the GIGGLE mark as well through Complainant’s continuous and extensive use of the GIGGLE mark and domain names. Because Complainant has shown legal rights in a mark containing the key word GIGGLE, under the Policy, the Panel does not examine common law rights.
The <gigglemagazine.com>
domain name combines the first term of Complainant’s GIGGLE HEALTHY. HAPPY. BABY. mark
with the generic term “magazine.” Because
Respondent had actual and constructive notice of Complainant’s rights in the
mark; and because Respondent uses the domain name in the same general area of
commerce as Complainant, the Panel finds that the disputed domain name is not sufficiently
distinguished from Complainant’s mark. The <gigglemagazine.com>
domain name incorporates only one of the
four terms of the mark and adds the generic word “magazine;” but the Panel
finds that the word used is the key word in the mark and thus the disputed
domain name is confusingly similar to the GIGGLE HEALTHY. HAPPY.
BABY. mark under Policy ¶ 4(a)(i). See Asprey
& Garrard Ltd v. Canlan Computing,
D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to the complainant’s ASPREY &
GARRARD and MISS ASPREY marks); see also WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to the complainant’s mark, where the
complainant holds the
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant established rights in the GIGGLE.HEALTHY.HAPPY.BABY. mark. Complainant alleges that Respondent has no such rights. Once Complainant makes a prima facie showing of rights, the burden shifts to Respondent to show that it has rights to and legitimate interests in the disputed domain name. Respondent has the greatest access to any information to show that it has rights to and legitimate interests in the disputed domain name. Here, Complainant alleges that Respondent is using the disputed domain name to advertise products that attempt to compete directly with Complainant in Complainant’s area of commerce. Therefore, Respondent’s use creates a greater likelihood of confusion between the disputed domain name and Complainant’s mark.
See 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.”).
Therefore, the Panel
finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii)).
Complainant alleges that Respondent acted in bad faith in
registering and using a domain name that contains Complainant’s protected
mark. Complainant also alleges additional
facts to show that Respondent has engaged in a previous pattern of registration
and use in bad faith. Respondent offered to sell the domain name for an amount
in excess of expected reasonable registration costs. This is sufficient to support findings of bad
faith registration and use. See Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the site); see also Arai
Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the
disputed domain name, <aria.com>, to prevent Complainant from registering
it” and taking notice of another UDRP proceeding against the respondent to find
that “this is part of a pattern of such registrations”).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <gigglemagazine.com> domain name be transferred from Respondent to Complainant.
.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 16, 2008.
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