Gaiam, Inc. v. Domain Management SPM
Claim Number: FA0812001237207
Complainant is Gaiam,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <baiam.com>, <faiam.com>, <fgaiam.com>, <ga8am.com>, <ga9am.com>, <gaianm.com>, <gaiasm.com>, <gaiwm.com>, <gaixm.com>, <gaizm.com>, <gfaiam.com>, <ggaiam.com>, <ghaiam.com>, <gqiam.com>, <gsaiam.com>, <gwiam.com>, <gxiam.com>, <gziam.com>, <hgaiam.com>, <raiam.com>, <vaiam.com> and <yaiam.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.
Judge RalphYachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 5, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <baiam.com>, <faiam.com>, <fgaiam.com>, <ga8am.com>, <ga9am.com>, <gaianm.com>, <gaiasm.com>, <gaiwm.com>, <gaixm.com>, <gaizm.com>, <gfaiam.com>, <ggaiam.com>, <ghaiam.com>, <gqiam.com>, <gsaiam.com>, <gwiam.com>, <gxiam.com>, <gziam.com>, <hgaiam.com>, <raiam.com>, <vaiam.com> and <yaiam.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. 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 December 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 30, 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@baiam.com, postmaster@faiam.com, postmaster@fgaiam.com, postmaster@ga8am.com, postmaster@ga9am.com, postmaster@gaianm.com, postmaster@gaiasm.com, postmaster@gaiwm.com, postmaster@gaixm.com, postmaster@gaizm.com, postmaster@gfaiam.com, postmaster@ggaiam.com, postmaster@ghaiam.com, postmaster@gqiam.com, postmaster@gsaiam.com, postmaster@gwiam.com, postmaster@gxiam.com, postmaster@gziam.com, postmaster@hgaiam.com, postmaster@raiam.com, postmaster@vaiam.com and postmaster@yaiam.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <baiam.com>, <faiam.com>, <fgaiam.com>, <ga8am.com>, <ga9am.com>, <gaianm.com>, <gaiasm.com>, <gaiwm.com>, <gaixm.com>, <gaizm.com>, <gfaiam.com>, <ggaiam.com>, <ghaiam.com>, <gqiam.com>, <gsaiam.com>, <gwiam.com>, <gxiam.com>, <gziam.com>, <hgaiam.com>, <raiam.com>, <vaiam.com> and <yaiam.com> domain names are confusingly similar to Complainant’s GAIAM mark.
2. Respondent does not have any rights or legitimate interests in the <baiam.com>, <faiam.com>, <fgaiam.com>, <ga8am.com>, <ga9am.com>, <gaianm.com>, <gaiasm.com>, <gaiwm.com>, <gaixm.com>, <gaizm.com>, <gfaiam.com>, <ggaiam.com>, <ghaiam.com>, <gqiam.com>, <gsaiam.com>, <gwiam.com>, <gxiam.com>, <gziam.com>, <hgaiam.com>, <raiam.com>, <vaiam.com> and <yaiam.com> domain names.
3. Respondent registered and used the <baiam.com>, <faiam.com>, <fgaiam.com>, <ga8am.com>, <ga9am.com>, <gaianm.com>, <gaiasm.com>, <gaiwm.com>, <gaixm.com>, <gaizm.com>, <gfaiam.com>, <ggaiam.com>, <ghaiam.com>, <gqiam.com>, <gsaiam.com>, <gwiam.com>, <gxiam.com>, <gziam.com>, <hgaiam.com>, <raiam.com>, <vaiam.com> and <yaiam.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gaiam, Inc., is a
provider of information, goods, and services to customers that value a
sustainable economy, the environment, and healthy lifestyles. Complainant had revenues of US $262.9 million
in 2007, and has over 460,000 monthly visitors to its website at the
<gaiam.com> domain name.
Complainant has several registrations of its GAIAM mark with the United
States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,244,895 issued
Respondent registered the <faiam.com>, <gaianm.com> and <gaiasm.com> domain names on December 11, 2004; the <fgaiam.com>, <gfaiam.com>, <ggaiam.com>, <ghaiam.com>, <gsaiam.com> and <hgaiam.com> domain names on January 8, 2005; and the <baiam.com>, <ga8am.com>, <ga9am.com>, <gaiwm.com>, <gaixm.com>, <gaizm.com>, <gqiam.com>, <gwiam.com>, <gxiam.com>, <gziam.com>, <raiam.com>, <vaiam.com> and <yaiam.com> domain names on June 14, 2005. Each of the disputed domain names resolves to Complainant’s website through Complainant’s affiliate program.
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.
Because Complainant has submitted evidence of its trademark
registrations for the GAIAM mark with the USPTO, the Panel finds that
Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding that the complainant had established rights in the
PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the
USPTO); see also Miller Brewing
Respondent’s disputed domain names contain Complainant’s
GAIAM mark with the generic top-level domain “.com;” though each disputed
domain name contains one of following alterations: (1) the addition of an extra
letter; or (2) the substitution of one letter for another letter or
number. The Panel finds that the
addition of a top-level domain name remains immaterial. See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed
domain names. 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), thus shifting the burden of proof to
Respondent. Since Respondent has not
responded to the Complaint, the Panel may presume that Respondent lacks
rights and legitimate interests in the disputed domain names pursuant to
Policy ¶ 4(a)(ii). However, the Panel in its
discretion chooses to examine the record to determine whether
Respondent has any rights or legitimate interests pursuant to the
factors outlined in 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); see also Broadcom Corp. v. Ibecom
PLC, FA 361190 (Nat. Arb. Forum
Complainant contends that Respondent is not permitted to use
Complainant’s marks in any fashion.
Moreover, the WHOIS information lists Respondent as “Domain Management
SPM.” Without evidence to the contrary,
the Panel finds that Respondent is not commonly known by any of the disputed
domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v.
Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Respondent asserts that the disputed domain names all
resolve to Complainant’s website, but that Respondent has violated the terms of
Complainant’s affiliate program.
Complainant asserts that Respondent thereby profits from this diversion
of Internet users. The Panel finds that
Respondent has diverted Internet users for such presumed commercial gain, and
that therefore Respondent has failed to create a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (concluding that
the respondent had no rights or legitimate interests in disputed domain names
containing the complainant’s marks even though it was a part of the
complainant’s affiliate program, as the affiliate agreement expressly stated
that affiliates could not register domain names containing the CRICKET mark); see also Sports
Complainant asserts that Respondent has engaged in
typosquatting, which is defined as the practice of registering domain names
containing typographical errors of a complainant’s mark. The Panel notes that each of the disputed
domain names in the instant dispute contains solely Complainant’s mark along
with a typographical error. The Panel
finds that Respondent has engaged in typosquatting, which constitutes
additional evidence of Respondent’s lack of rights and legitimate interests
under Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to Complainant’s
website. However, Respondent has
violated Complainant’s terms in its affiliate program. Respondent has sought to obtain commercial
profit by routing Internet users seeking Complainant through the confusingly
similar disputed domain names. The Panel
considers this to be sufficient evidence of Respondent’s bad faith registration
and use under Policy ¶ 4(b)(iv). See Deluxe Corp. v.
The Panel has already
determined that Respondent has engaged in typosquatting. This activity also constitutes additional
evidence of Respondent’s bad faith registration and use under Policy ¶
4(a)(iii). See Sports
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 <baiam.com>, <faiam.com>, <fgaiam.com>, <ga8am.com>, <ga9am.com>, <gaianm.com>, <gaiasm.com>, <gaiwm.com>, <gaixm.com>, <gaizm.com>, <gfaiam.com>, <ggaiam.com>, <ghaiam.com>, <gqiam.com>, <gsaiam.com>, <gwiam.com>, <gxiam.com>, <gziam.com>, <hgaiam.com>, <raiam.com>, <vaiam.com> and <yaiam.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice
Dated: January 19, 2009
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