The Gale Group Inc. v. CSharp Development Ltd
Claim Number: FA0810001231429
Complainant is The Gale Group Inc. (“Complainant”), represented by Alexandre
AA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <galereferenceteam.com>, registered with Wild West Domains, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 31, 2008.
On October 29, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <galereferenceteam.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 "Policy").
On November 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@galereferenceteam.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <galereferenceteam.com> domain name is confusingly similar to Complainant’s GALE mark.
2. Respondent does not have any rights or legitimate interests in the <galereferenceteam.com> domain name.
3. Respondent registered and used the <galereferenceteam.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gale Group
Inc., holds a trademark registration with the United States Patent and
Trademark Office (“USPTO”) in the GALE mark (Reg. No. 1,333,193 issued
Respondent registered the <galereferenceteam.com> domain name on April 25, 2006. The disputed domain name is being used to resolve to a website with links to Complainant’s goods and a message board for Internet users to post questions and comments about Complainant’s goods and services. Respondent has responded to some of these inquiries as if it were Complainant.
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 Panel finds that Complainant’s registration of its GALE
mark with the USPTO is sufficient to establish Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb.
Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).
The <galereferenceteam.com>
domain name incorporates Complainant’s mark in its entirety, adding the generic
terms “reference” and “team” and the generic top-level domain (“gTLD”)
“.com.” The gTLD is immaterial to Policy
¶4(a)(i) analysis.
See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <galereferenceteam.com> domain name. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the GALE mark, and the WHOIS information identifies Respondent as “CSharp Development Ltd.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The <galereferenceteam.com> domain name
is used to resolve to a website that fraudulently purports to be Complainant’s
website, offering links to Complainant’s goods on Amazon and competing sites
and a message board to ask questions and post comments about Complainant’s
goods. Respondent’s attempt to pass
itself off as Complainant is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See DaimlerChrysler Corp. v.
Bargman, D2000-0222 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent attempted to pass itself off as Complainant by
imitating Complainant’s official website.
This demonstrates bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb.
Forum Dec. 18, 2001) (finding that the respondent's use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith); see also Vivendi Universal Games v. Ballard,
FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at
registration, and a copy of the complainant’s website was used at the domain
name in order to facilitate the interception of the complainant’s customer’s
account information, the respondent’s behavior evidenced bad faith use and
registration of the domain name).
Respondent’s use of
Complainant’s GALE mark in the disputed domain
name to redirect Internet users to other dealers of Complainant’s goods
suggests that Respondent registered the disputed domain name intending to
disrupt Complainant’s business. The
Panel finds that this is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii).
See Caterpillar Inc. v.
Vine, FA 97097
(Nat. Arb. Forum June 22, 2001)
(“Respondent registered each of the disputed domain names in order to gain
customers and to disrupt Complainant's business of authorizing dealers to sell
its CATERPILLAR equipment.”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
the respondent, a watch dealer not otherwise authorized to sell the
complainant’s goods, to the complainant).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing sources of Complainant’s goods.
Because Respondent’s disputed domain name is confusingly similar to
Complainant’s GALE mark, Internet users accessing Respondent’s disputed domain
name may become confused as to Complainant’s affiliation with the resulting
website. Thus, Respondent’s use of the
disputed domain name for commercial gain constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum
The Panel finds that Complainant has satisfied 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 <galereferenceteam.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 9, 2008
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