Mya Saray, LLC v. itsamall.com
Claim Number: FA0806001210153
Complainant is Mya
Saray, LLC (“Complainant”), represented by M. Keith Blankenship,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myahookahs.com>, registered with Godaddy.com, 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 June 16, 2008; the National Arbitration Forum received a hard copy of the Complaint June 20, 2008.
On June 17, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myahookahs.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, 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 June 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 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.
On July 22, 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, <myahookahs.com>, is confusingly similar to Complainant’s MYA mark.
2. Respondent has no rights to or legitimate interests in the <myahookahs.com> domain name.
3. Respondent registered and used the <myahookahs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mya Saray, LLC, manufactures and distributes tobacco-related products, including hookahs and hookah accessories. Complainant markets these products internationally under its MYA mark. Complainant registered its MYA mark with the United States Patent and Trademark Office (“USPTO”) on December 20, 2005 (Reg. No. 3,031,439). Complainant registered the <myahookah.com> and <myasaray.com> domain names to use in conjunction with its business.
Respondent registered the <myahookahs.com> domain name December 9, 2007. Respondent’s disputed domain name resolves to a website that markets hookah and other tobacco-related products, which compete with Complainant’s business.
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 its MYA mark with the USPTO December
20, 2005. The Panel finds Complainant’s
evidence of this registration establishes its rights in its MYA mark pursuant
to Policy ¶ 4(a)(i). See
Respondent’s <myahookahs.com> domain name incorporates Complainant’s MYA mark with the additions of the descriptive term “hookahs” and the generic top-level domain “.com.” The term “hookahs” refers to tobacco-related products that Complainant markets. The Panel finds the mere additions of a descriptive term and a top-level domain name do not sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds Respondent’s <myahookahs.com> domain name is confusingly similar to Complainant’s MYA mark pursuant to Policy ¶ 4(a)(i). See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant is required to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden of proof then shifts to Respondent to demonstrate it does possess rights or legitimate interests in the disputed domain name. The Panel finds Complainant established a sufficient prima facie case. Respondent failed to submit a Response to these proceedings and in such cases, the Panel may presume that Respondent lacks such rights and legitimate interests in the disputed domain name. The Panel, however, also examines the record to determine whether evidence before the Panel suggests that Respondent has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Respondent’s disputed domain name resolves to a website that markets hookah and other tobacco-related products of Complainant’s competitors. The Panel finds that Respondent’s competing use of the disputed domain name 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Also, Respondent does not appear to be commonly known by the <myahookahs.com> domain name. The WHOIS information lists Respondent as “itsamall.com,” and the record indicates Complainant has not authorized Respondent to use its MYA mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website that markets hookah products which directly compete with Complainant’s business. The Panel finds Respondent’s disruptive use of the disputed domain name is 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 July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Respondent is using the website resolving from the confusingly similar disputed domain name to market competing tobacco and hookah products. Respondent presumably profits from this use through the sale of these products or in the form of click-through fees. Also, Respondent’s use of Complainant’s MYA mark creates a likelihood of confusion regarding the source of the content resolving from the disputed domain name. The Panel finds this is an attempt by Respondent to profit from the goodwill associated with Complainant’s MYA mark. Therefore, the Panel finds Respondent’s attempt to profit from its use of the confusingly similar disputed domain name constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Complainant satisfied the elements of ICANN 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 <myahookahs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 5, 2008.
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