Royal Victorian Inc. v. Monaco Jewelers
Complainant is Royal Victorian Inc. (“Complainant”), represented by Isaac
Dweck, of Royal Victorian, New
York, USA. Respondent is Monaco Jewelers (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
The domain name at issue is <green4gold.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge has no
known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on July 16, 2008;
the National Arbitration Forum received a hard copy of the Complaint on July
On July 16, 2008,
Network Solutions, Inc. confirmed by
e-mail to the National Arbitration Forum that the <green4gold.com> domain
name is registered with Network Solutions, Inc.
and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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
28, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 18, 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
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On August 21, 2008, pursuant to Complainant's
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
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
Complainant requests that the domain
name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
<green4gold.com> domain name
is identical to Complainant’s GREEN4GOLD mark.
does not have any rights or legitimate interests in the <green4gold.com> domain name.
registered and used the <green4gold.com>
domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant, Royal Victorian Inc.,
is in the business of dealing scrap, buying jewelry, precious metal services
and buying and dealing diamonds.
Complainant registered its GREEN4GOLD mark with the United States Patent
and Trademark Office (“USPTO”) on January 29, 2008 (Reg. No. 3,375,629), which lists a first
used in commerce date of June
13, 2006. Respondent
previously offered to sell the disputed domain name to Complainant.
Respondent, Monaco Jewelers, registered
the <green4gold.com> domain name on August 2, 2006,
which resolves to a website featuring identical services offered by Complainant
and content taken from Complainant’s 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."
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:
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
has no rights or legitimate interests in respect of the domain name; and
domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that Complainant’s registration with the
USPTO of its GREEN4GOLD mark does not predate the registration of the disputed
domain name. However, in Great Plains Metromall, LLC v. Creach, FA 97044
(Nat. Arb. Forum May 18,
2001), the panel stated that “[t]he Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.” Therefore, if Complainant can
prove that it has established secondary meaning with its clients and customers,
the Panel will find common law rights sufficient for Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass,
FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant
established rights in the descriptive RESTORATION GLASS mark through proof of
secondary meaning associated with the mark).
Complainant’s USPTO trademark registration indicates that it
first used the GREEN4GOLD mark in commerce on June 13, 2006.
According to Complainant, its customers and clients have come to
identify the GREEN4GOLD mark in association with Complainant’s goods and
services. Additionally, Complainant
provided UPS receipts, business transaction proposals and advertisement
proposals that demonstrate Complainant’s achievement of secondary meaning in
the GREEN4GOLD mark. Based on the
evidence in the record, the Panel finds that Complainant has established
sufficient rights in the mark through secondary meaning, which predate the
registration of the disputed domain name 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 S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding
that the complainant established rights in the descriptive RESTORATION GLASS
mark through proof of secondary meaning associated with the mark); see also BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
the complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
domain name fully incorporates Complainant’s GREEN4GOLD mark with the addition
of the generic top-level domain “.com,” which is irrelevant in determining if
the mark is identical to the disputed domain name. 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). Therefore, the Panel finds
that the <green4gold.com>
domain name is identical to Complainant’s GREEN4GOLD mark pursuant to Policy ¶
4(a)(i). See Blue Sky Software Corp. v.
Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that
the domain name <robohelp.com> is identical to the complainant’s
registered ROBOHELP trademark, and that the "addition of .com is not a
distinguishing difference"); see
also Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Rights or Legitimate Interests
Complainant must initially establish a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain name to shift the burden of proof to
Respondent pursuant to Policy ¶ 4(a)(ii).
Respondent’s failure to respond to the Complaint furthers the
presumption that Respondent has no rights or legitimate interests in the domain
name. The Panel finds that Complainant
has established a prima facie case
pursuant to Policy ¶ 4(a)(ii) but still chooses to evaluate all of the evidence
according to Policy ¶ 4(c). 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 on to the
shoulders of 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.”); see
also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (“Because Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent is not commonly known
by the disputed domain name based on the evidence in the record and the WHOIS
contact information. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), the panel found that without
demonstrable evidence to support the assertion that a respondent is commonly
known by a domain name, the assertion must be rejected. Similarly, the Panel finds that
Respondent is not commonly known by the disputed domain name such that Respondent
has not demonstrated rights or legitimate interests in the <green4gold.com> domain name
sufficient to satisfy Policy ¶ 4(c)(ii).
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); 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).
Moreover, Complainant contends that Respondent offered to
sell the disputed domain name to Complainant and is using the resolving website
to offer Respondent’s services that are in direct competition with services
provided by Complainant. The panel in Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) found that the respondent was not
using the domain names for a bona fide offering of goods or services or
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks. Similarly, this Panel finds that Respondent’s
competing use of the identical <green4gold.com>
domain name does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); 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”); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4,
2003) (“Respondent’s lack of rights and legitimate interests in the domain name
is further evidenced by Respondent’s attempt to sell its domain name
registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Registration and Use in Bad Faith
Complainant alleges that Respondent attempted to sell the
disputed domain name to Complainant. In Bank of America Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the Panel stated that
“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).” Likewise, the Panel
finds Respondent’s offer to sell the disputed domain name as evidence of bad
faith registration and use in violation of Policy ¶ 4(b)(i). See Am.
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb.
Forum Mar. 16, 2000)
(finding bad faith where the respondent offered domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
contends and the Panel finds that Respondent is attempting to commercially
benefit from the identical <green4gold.com>
domain name. Respondent is attempting to
attract Internet users searching for Complainant to Respondent’s own website
for its own gain by offering competing services. Complainant contends that Respondent is
utilizing identical language and content from Complainant’s previous websites
thus increasing the likelihood of confusion as to Complainant’s sponsorship of the
disputed domain name. The Panel finds
that Respondent is attempting to commercially gain from the disputed domain
name in violation of Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(finding that the respondent’s use of the <saflock.com> domain name to
offer goods competing with the complainant’s illustrates the respondent’s bad
faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also 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).
Complainant asserts that it has had to stop advertising its
own <greenforgold.com> domain name because customers are confused and
mistype the disputed domain name resulting in diversion of Internet users to
Respondent’s website. In Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12,
2000), the panel found that the respondent has diverted business
from the complainant to a competitor’s website in violation of Policy ¶
4(b)(iii). Therefore, the Panel finds
that Respondent is diverting Internet users from Complainant to Respondent’s
competing resolving website, which constitutes 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 EBAY, Inc. v.
MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <green4gold.com> domain name be TRANSFERRED
from Respondent to Complainant.
Ralph Yachnin, Panelist
Supreme Court, NY (Ret.)
Dated: September 4, 2008
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