Small Dog Electronics, Inc.
v. Hyun-Ock Song
Claim Number: FA0810001229355
PARTIES
Complainant is Small Dog Electronics, Inc. (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smalldogelectronics.com>, registered
with Korea
Information Certificate Authority, Inc. d/b/a Domainca.com.
PANEL
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.
Hong Oo Baak as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On October 28, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 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 postmaster@smalldogelectronics.com
by e-mail.
A Response was submitted electronically on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Comlainant contends as follows.
Don Mayer started a business in 1994 selling Apple
computer products and products to be used with Apple computers under the name
Small Dog Electronics.
Don Mayer registered SMALL DOG ELECTRONICS as a trade name with
the State of
On or about April 10, 1997, Don Mayer filed and
registered a limited partnership in the State of Vermont with the name SMALL
DOG ELECTRONICS, LTD, CO, which acquired the entire business of Small Dog
Electronics operated by Don Mayer, and registered Domain Name <smalldog.com> on March 6, 1998.
On or about January 5, 1999, SMALL DOG
ELECTRONICS, INC, Complainant, was incorporated and acquired all the business
of the partnership of SMALL DOG ELECTRONICS, LTD, CO.
Then Complainant registered the service mark SMALL DOG (Registration
Number 2,251,497) on June 8, 1999, and the service
mark SMALL DOG ELECTRONICS AND LOGO (Registration Number 3,109,261) on June 27,
2006,
with the United States Patent and Trademark Office, whose designated services
are retail stores and mail order services featuring computer hardware, computer
peripherals, computer software and computer supplies by conventional means and
via global networks in class 35
and computer
services for maintenance of computer hardware and computer peripherals in class
37.
Complainant is an Apple specialist and its business has since grown to more than forty employees,
a large warehousing operation, and two retail stores. It has developed a well deserved and highly
recognized reputation for excellence in selling and supporting Apple products. Complainant is amongst a core group of the largest Apple resellers in the
The
Disputed
Domain Name <smalldogelectronics.com>
was registered on
Each
and every sub-page that is linked from Respondent’s home page are meant to drive traffic,
for economic gain, from Respondent’s website
to third party competitive sellers of Apple products. Respondent is not using
the domain name for the bona fide
offering of goods or services. Respondent
is not known as the <smalldogelectronics.com>
domain name. Thus, Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name.
The
use of the
Disputed Domain Name <smalldogelectronics.com> is to divert Internet users to other
commercial websites for its own commercial gain. Therefore, the Disputed Domain Name has been registered
and is being used in bad faith.
B.
Respondent
As stated above, Respondent failed to meet the
deadline of submitting a response. (However, the Panel has reviewed Respondent’s
positions before making a decision.)
FINDINGS
1.
Don Mayer started a business in 1994 selling Apple computer products and products to be
used with Apple computers under the name Small Dog Electronics.
2.
On or about
3.
On or about
4.
Complainant registered the service mark SMALL DOG (Registration
Number 2,251,497) on June 8, 1999, and the service
mark SMALL DOG ELECTRONICS AND LOGO
(Registration Number 3,109,261) on June 27,
2006,
with the United States Patent and Trademark Office, whose designated services
are retail stores and mail order services featuring computer hardware, computer
peripherals, computer software and computer supplies by conventional means and
via global networks in class 35
and computer
services for maintenance of computer hardware and computer peripherals in class
37.
5.
Complainant
specializes in selling Apple products, and has developed a reputation in selling and
supporting Apple products.
6.
The Disputed Domain Name <smalldogelectronics.com>
was
registered on October 27, 2004, more than five years
after Complainant started its business by the acquisition and registered the
MARK in 1999.
7.
The Disputed Domain Name <smalldogelectronics.com>
is used by Respondent to
divert Internet users to other commercial websites for businesses
related to sales of Apple products and other computer products for Respondent’s own commercial gain,
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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 part of
‘SMALL DOG’ in the mark SMALL
DOG ELECTRONICS
AND LOGO (Registration Number 3,109,261) and the mark
SMALL DOG (USPTO Registration Number 2,251,497)
(hereinafter,
together referred to as “the Marks”) are not descriptive as far as they are
concerned with those mark’s designated services related to computer products in
classes 35 and 37. Thus, the Marks are
entitled to protection.
The Disputed Domain Name <smalldogelectronics.com> comprises of three parts, “smalldog,” “electronics,” and “.com.” The word “.com” is
descriptive because it is a well-known top level domain and indicates to most
people a company on the Internet.
The other two parts of the Disputed Domain
Name, i.e. “smalldog” and “electronics” are identical to the part SMALL DOG ELECTRONICS in the service mark registration
number 3,109,261 but-for the space in it.
In relation to the Mark SMALL DOG, since the term ‘electronics’ of the Disputed
Domain Name <smalldogelectronics.com> is also descriptive and generic so far as it is used in connection with
products of electronics and computer hardware, the main part of the Disputed Domain Name is “smalldog,”
which is also identical to the Mark SMALL DOG
but-for the space. The Mark SMALL DOG’s designated services are retail stores
and mail order services featuring computer hardware, computer peripherals,
computer software and computer supplies by conventional means and via global
networks in class 35 and computer services for
maintenance of computer hardware and computer peripherals in class 37 and the Disputed Domain Name <smalldogelectctronics.com> is
used for diverting Internet users to commercial websites for businesses
related to sales of Apple products and other computer products which falls
within the categories of the Mark SMALL DOG’s designated services. Therefore,
the Disputed Domain name is also confusingly
similar
to the Mark SMALL DOG.
Complainant contends that Respondent’s use of the Disputed
Domain Name <smalldogelectronics.com>
is just to divert Internet
users to other commercial websites for competitive businesses related to sales of Apple
products and other computer hardware for Respondent’s own commercial
gain, and thus, Respondent has no rights or legitimate interests
in the Disputed Domain Name.
Respondent’s diverting Internet users intentionally to Complainant’s competitor sites does
not constitute a bona fide offering
of services and it is interpreted that Respondent has no rights or legitimate interests in the Disputed
Domain Name, for the purpose of Policy ¶ 4(c)(i). See
Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally and misleadingly
diverting users away from the Complainant's site to a competing website).
Accordingly, the Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
The fact that Respondent has used
the Disputed Domain Name to divert web users to websites for Complainant’s competitors
indicates that Respondent registered the Disputed
Domain Name to attract, for commercial gain, Internet users to its website or
online location by
creating a likelihood of confusion with Complainant's Mark as to the source,
sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Policy ¶ 4(b)(iv)
provides that, for
the purposes of Paragraph
4(a)(iii), if a person who registered a domain name has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other online
location, by creating a likelihood of confusion with the complainant's mark as
to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a
product or service on his/her website or location, it shall be evidence of the registration and use of a domain
name in bad faith.
Accordingly, the Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smalldogelectronics.com> domain name
be TRANSFERRED from Respondent to Complainant.
Hong Oo Baak, Panelist
Dated:
National
Arbitration Forum
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