Quigley-Simpson & Heppelwhite, Inc. v. Quigley c/o Gerald Bagg
Claim Number: FA0901001243445
Complainant is Quigley-Simpson & Heppelwhite, Inc. (“Complainant”), represented by Natasha
Shabani, of Rutter
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <quigley-simpson.net>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 21, 2009.
On January 20, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <quigley-simpson.net> domain name is/are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 January
22, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 11, 2009
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@quigley-simpson.net by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <quigley-simpson.net> domain name is confusingly similar to Complainant’s QUIGLEY SIMPSON mark.
2. Respondent does not have any rights or legitimate interests in the <quigley-simpson.net> domain name.
3. Respondent registered and used the <quigley-simpson.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an advertising agency that advertises and promotes its services under the QUIGLEY SIMPSON mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on May 13, 2008 (Reg. No. 3,426,358). Complainant has used the QUIGLEY SIMPSON mark continuously in commerce since at least as early as July, 2002. Complainant has conducted business with companies such as Visa, Iams, Dawn, Folgers, and CoverGirl as its clients, and has had media coverage of its business since at least July, 2004.
Respondent registered the <quigley-simpson.net> domain name on December 18, 2008. The disputed domain name resolves to Complainant’s actual website at <quigleysimpson.com>.
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 has established rights in
the QUIGLEY SIMPSON mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. 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 U.S. Office
of Pers. Mgmt. v. MS Tech. Inc., FA 198898
(Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that
a mark is registrable, by so issuing a registration, as indeed was the case
here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
Complainant contends that
Respondent’s <quigley-simpson.net> domain name is confusingly similar to its QUIGLEY
SIMPSON mark.
The <quigley-simpson.net> domain name differs from Complainant’s mark in two ways:
(1) a hyphen has been added between the terms in the mark; and (2) the generic
top-level domain (“gTLD”) “.net” has been added. The Panel finds that the addition of a hyphen
to a mark does not reduce or eliminate the possibility that the resulting
domain name will confuse Internet visitors.
See Gen. Elec. Co. v. Bakhit,
D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain
name between “General” and “Electric” is confusingly similar to the
complainant’s mark). The Panel also
finds that top-level domains must be included in every domain name, and so TLDs
also cannot distinguish a domain name from a mark. See
Entrepreneur Media, Inc. v. Smith, 279
F.3d 1135, 1146 (9th Cir. 2002)
(“Internet users searching for a company’s Web site often assume, as a rule of
thumb, that the domain name of a particular company will be the company name or
trademark followed by ‘.com.’”). Therefore, the Panel finds that these changes do not
minimize or eliminate the resulting likelihood of confusion, and so
Respondent’s disputed domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <quigley-simpson.net> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); 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).
Complainant contends that Respondent is not commonly known
by the <quigley-simpson.net>
domain name nor has it ever been the owner or licensee of the QUIGLEY SIMPSON
mark. The WHOIS record for the disputed
domain name lists Respondent as “Quigley c/o
Gerald Bagg.” Respondent holds itself out as doing business as Complainant, but Respondent
has not been licensed by Complainant to act on Complainant’s behalf in any way,
and there is no affirmative evidence that Respondent is actually doing business
on behalf of Complainant. In fact,
Respondent has failed to show any evidence contrary to Complainant’s
contentions, which compels the Panel to find that Respondent is not commonly
known as <quigley-simpson.net> pursuant
to Policy ¶ 4(c)(ii). See Nature’s Path Foods Inc. v.
Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS
contact information, Respondent lists its name and its administrative contact
as ‘Natures Path, Inc.’ However, since
Respondent failed to respond to the Complaint, there has not been any
affirmative evidence provided to the Panel showing that Respondent was commonly
known by the disputed domain name prior to its registration of the domain
name.”); see
also Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
The disputed domain name redirects to Complainant’s website at the <quigleysimpson.com> domain name; Complainant has not licensed Respondent to make this use of the <quigley-simpson.net> domain name, and Respondent is not making any other active use of the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Morgan Stanley v. Morgan Stanley, FA 69733 (Nat. Arb. Forum May 3, 2008) (finding that the respondent was not using the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii) when the respondent presumably received compensation in the form of click-through fees for its use of the disputed domain name to feature a link to the complainant’s website); see also WorldPay Ltd. v. Neely Jones, FA 1169388 (Nat. Arb. Forum May 8, 2008) (finding that the respondent was not using the disputed domain name in connection with 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) because the respondent used the disputed domain name to link to the complainant’s website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The disputed domain name resolves to Complainant’s own website; Complainant contends that Respondent is not making any active use of the disputed domain name. The Panel presumes that Respondent is commercially gaining from its use of the disputed domain name, either from creating a false impression of an affiliation with Complainant, or from accumulating Internet hits from visitors to the disputed domain name. The Panel therefore finds a likelihood of confusion between Complainant’s mark and the disputed domain name for the purposes of commercial gain, which is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
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 <quigley-simpson.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 2, 2009
National
Arbitration Forum