National Arbitration Forum

 

DECISION

 

Small Dog Electronics, Inc. v. Hyun-Ock Song

Claim Number: FA0810001229355

 

PARTIES

Complainant is Small Dog Electronics, Inc. (“Complainant”), Vermont, USA.  Respondent is Hyun-Ock Song (“Respondent”), South Korea.

 

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 October 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2008.

 

On October 15, 2008, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <smalldogelectronics.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that the Respondent is the current registrant of the name.  Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.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 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 November 17, 2008, however, the hard copy of that response was received on November 21, 2008. Since the ICANN Supplemental rule Paragraph 5(a) provides that the response shall be submitted in hard copy and in electronic form within twenty (20) days of the date of commencement of the administrative proceeding, Respondent failed to meet the deadline for the Response.

 

On November 24, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hong Oo Baak as Panelist.

 

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 Vermont (Trade Name Registration No. 0103646) on October 19, 1995.

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 United States.

 

The Disputed Domain Name <smalldogelectronics.com> was registered on October 27, 2004, long after Complainant’s adoption and use of SMALL DOG ELECTRONICS. But for the spaces between the words, The Disputed Domain Name is identical to Complainant's registered trademarks.

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 April 10, 1997, Don Mayer filed and registered a limited partnership in the State of Vermont, the United States with the name SMALL DOG ELECTRONICS, LTD, CO, which acquired the entire business of Small Dog Electronics operated by Don Mayer.

3.      On or about January 5, 1999, Complainant, Small Dog Electronics, Inc, was incorporated and acquired all the business of the partnership of SMALL DOG ELECTRONICS, LTD, CO.

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.

 

Identical and/or Confusingly Similar

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.

 

 

Rights or Legitimate Interests

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.

 

Registration and Use in Bad Faith

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:
 December 5, 2008

 

 

 

National Arbitration Forum

 

 

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