Mark Kane v. Katch Enterainment c/o Daniel Katchka
Claim Number: FA0804001181568
Complainant is Mark Kane (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <entertainmart.com>, registered with Enom, 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
On May
2, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 22, 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@entertainmart.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <entertainmart.com> domain name is identical to Complainant’s ENTERTAINMART mark.
2. Respondent does not have any rights or legitimate interests in the <entertainmart.com> domain name.
3. Respondent registered and used the <entertainmart.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mark Kane, is the primary shareholder of
Entertainmart. Entertainmart is a retail
operation that specializes in the buying and selling of new and used movies,
music, video games and related products.
Complainant operates three stores under the ENTERTAINMART mark and is planning
on opening another store in the summer of 2008.
Complainant owns a federal trademark registration with the United States
Patent and Trademark Office (“USPTO”) for the ENTERTAINMART mark (Reg. No.
3,025,938 filed
Respondent registered the <entertainmart.com> 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 asserts rights in the ENTERTAINMART mark through
its trademark registration with the USPTO.
Complainant filed for registration with the USPTO on
Complainant alleges that Respondent’s <entertainmart.com> domain name is confusingly
similar to Complainant’s ENTERTAINMART mark.
However, the Panel finds that Respondent’s disputed domain name is
identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because
Respondent’s disputed domain name contains Complainant’s mark in its entirety
and adds the generic top-level (“gTLD”) “.com,” which is irrelevant in
distinguishing a disputed domain name from a mark. See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir.
2002) (“Internet users searching for a company’s Web site often assume, as a
rule of thumb, that the domain name of a particular company will be the company
name or trademark followed by ‘.com.’”); see
also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and
legitimate interests in the <entertainmart.com>
domain
name. When Complainant makes a prima facie case in support of its
allegations, the burden is shifted to Respondent to prove that it does have
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). The Panel finds that in this
case, Complainant has established a prima
facie case. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO
Due to Respondent’s failure to respond to the Complaint, the
Panel assumes that Respondent does not have rights or legitimate interests in
the disputed domain name. See CMGI,
Inc. v. Reyes, D2000-0572 (WIPO
Complainant does not allege that Respondent is neither
commonly known by the disputed domain names, nor licensed to register domain
names using the ENTERTAINMART mark.
However, Respondent’s WHOIS information identifies Respondent as “Katch
Entertainment, Daniel Katchka,” therefore providing no affirmative evidence
that Respondent is commonly known by the disputed domain name. The Panel finds that, without any affirmative
evidence of being commonly known by the disputed domain name, Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum
Complainant alleges that Respondent used the <entertainmart.com> domain name for the
operation of a commercial website in two instances: first, when the disputed
domain name resolved to the <kathupadvertising.com> domain name in January
of 2005, and second, when the disputed domain name resolved to a non-working
website that bought and sold tickets to entertainment events at the end of the
year in 2005. The Panel finds that
Respondent’s uses of the disputed domain name to divert Internet users by
creating a likelihood of confusion between the disputed domain name and
Complainant’s mark for Respondent’s commercial benefit were neither a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See 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).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795
(Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for
products relating to the famous SEIKO mark, to a website unrelated to the mark
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor
does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
In addition, Complainant asserts that Respondent’s <entertainmart.com> domain name was inaccessible
for a period of time in 2007. The
Panel finds that this inactive use of the disputed domain name was neither a bona fide offering of goods and services
under Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See LFP, Inc. v. B
& J Props., FA 109697 (Nat. Arb. Forum
Lastly, Complainant alleges that Respondent’s <entertainmart.com> domain name is currently being used to promote the sale of DVDs and Blu-Ray discs, which is Complainant’s major form of business. The Panel finds that such use of the disputed domain name to pass itself off as Complainant is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant failed to make a bad faith argument that
Respondent has inactively used the <entertainmart.com> domain name in the
past. However, Respondent has
failed to make an active use of the disputed domain name, and it led to a website that was
inaccessible for a period of time. The
Panel finds that this inactive use of the disputed domain name is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See
DCI
Complainant alleges that Respondent’s past use of the <entertainmart.com> domain name to intentionally cause a likelihood of confusion between the disputed domain name and Complainant’s mark to commercially benefit is evidence of bad faith. The Panel finds that Respondent’s use of the disputed domain name to commercially benefit is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant also asserts that Respondent’s use of the
disputed domain name to offer goods in direct competition with Complainant is
evidence of bad faith. The Panel finds
that Respondent’s use of the disputed domain name to offer goods in direct
competition with Complainant, thus disrupting Complainant’s business is further
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure,
Inc., FA 94864 (Nat. Arb.
Forum
Lastly, Respondent’s use of the disputed domain name to pass itself off as Complainant by offering goods in the same product line as Complainant and in the same fashion as Complainant’s official website is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
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 <entertainmart.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum