Comfortaire Corporation v.
Claim Number: FA0808001218584
Complainant is Comfortaire Corporation (“Complainant”), represented by Douglas
W. Kim, of McNair Law Firm, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <comfortairedirect.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 8, 2008.
On August 4, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <comfortairedirect.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 "Policy").
On August
18, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 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@comfortairedirect.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <comfortairedirect.com> domain name is confusingly similar to Complainant’s COMFORTAIRE mark.
2. Respondent does not have any rights or legitimate interests in the <comfortairedirect.com> domain name.
3. Respondent registered and used the <comfortairedirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Comfortaire Corporation, has manufactured and distributed beds and mattresses since 1982. Complainant uses the COMFORTAIRE mark to promote its business, and holds a registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,275,216). The COMFORTAIRE trademark was originally registered on April 24, 1984, and was assigned to Complainant on November 12, 1999.
Respondent registered the <comfortairedirect.com> domain name on November 11, 2004, and uses it to display a list of hyperlinks advertising competing beds and mattresses.
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.
The assignment of the COMFORTAIRE registered trademark to Complainant adequately establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”); see also remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the registered mark, REMITHOME, by virtue of an assignment).
Respondent’s <comfortairedirect.com> domain name contains Complainant’s COMFORTAIRE mark in its entirety and merely adds the generic word “direct” and the generic top-level domain “.com.” In accordance with previous panels, the Panel finds that the additions of the word “direct” and “.com” do not sufficiently distinguish the disputed domain name, so the Panel concludes that the <comfortairedirect.com> domain name is confusingly similar to Complainant’s COMFORTAIRE mark pursuant to Policy ¶ 4(a)(i). See Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to the complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the complainant, and thus the respondent’s domain names are confusingly similar); see also State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to the complainant’s registered mark); 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 Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <comfortairedirect.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The WHOIS information identifies Respondent as “Belize Domain WHOIS Service Lt,” and the Panel can find no other evidence in the record indicating that Respondent may be commonly known by the <comfortairedirect.com> domain name. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant states that Respondent is using the <comfortairedirect.com> domain name to display links advertising the products of Complainant’s competitors. Numerous UDRP panels have previously ruled that such a use does not constitute 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). See, e.g., Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)). Therefore, the Panel concludes that Complainant cannot establish rights or legitimate interests in the <comfortairedirect.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s use of the <comfortairedirect.com> domain name to advertise competing products disrupts Complainant’s business by diverting customers to the websites of Complainant’s competitors. Therefore, Respondent’s registration and use of the <comfortairedirect.com> domain name was in bad faith in accordance with Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’ use of the <comfortairedirect.com>
domain name is also likely to cause confusion among customers searching for
Complainant’s products. Specifically,
customers may mistakenly believe that the beds and mattresses advertised on
Respondent’s website that resolve from the disputed domain name are sponsored
or endorsed by Complainant. The Panel
infers that Respondent receives click-through fees for each redirected Internet
user, and is profiting from the goodwill associated with Complainant’s
COMFORTAIRE mark. Thus, the Panel
concludes that Respondent’s registration and use of the <comfortairedirect.com> domain name
was in bad faith pursuant to Policy ¶ 4(b)(iv). See
Metro. Life Ins. Co. v. Bonds,
FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds
such use to constitute bad faith registration and use pursuant to Policy ¶
4(b)(iv), because Respondent is taking advantage of the confusing similarity
between the <metropolitanlife.us> domain name and Complainant’s METLIFE
mark in order to profit from the goodwill associated with the mark.”); see also Asbury Auto. Group,
Inc. v.
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 <comfortairedirect.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: October 1, 2008
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