national arbitration forum

 

DECISION

 

Fresnel Prism and Lens, Co. v. Dr. Geeks, Inc. and Stephanie Dibenardo

Claim Number: FA0904001255786

 

PARTIES

Complainant is Fresnel Prism and Lens, Co. (“Complainant”), represented by Michael E. St. George, of Law Offices of Michael E. St. George, P.C., Arizona, USA.  Respondent is Dr. Geeks Inc. and Stephanie Dibenardo (collectively “Respondent”), represented by Sean K. Enos, of Schmeiser, Olsen & Watts, LLP, Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <fresnelprism.com>, registered with Network Solutions, Inc., and <fresnelprism.net>, registered with Melbourne It, Ltd.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2009.

 

On April 3, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <fresnelprism.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 7, 2009, Melbourne It, Ltd. confirmed by e-mail to the National Arbitration Forum that the <fresnelprism.net> domain name is registered with Melbourne It, Ltd. and that Respondent is the current registrant of the <fresnelprism.net> name.  Melbourne It, Ltd. has verified that Respondent is bound by the Melbourne It, Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

 

On April 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 5, 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@fresnelprism.com and postmaster@fresnelprism.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 8, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <fresnelprism.com> and <fresnelprism.net> domain names are identical to Complainant’s FRESNEL PRISM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <fresnelprism.com> and <fresnelprism.net> domain names.

 

3.      Respondent registered and used the <fresnelprism.com> and <fresnelprism.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is in the business of producing eye care products for professional ophthalmologists.  Complainant has used the FRESNEL PRISM mark to advertise and sell its products since at least as early as 1999. 

 

The WHOIS records the disputed domain names report that Respondent registered the <fresnelprism.com> domain name on June 8, 1999, and that Respondent registered the <fresnelprism.net> domain name on February 7, 2009.  The disputed domain names redirect Internet users to Respondent’s website, which is the online presence for Respondent’s web design and Internet services company.

 

DISCUSSION

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.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  The Panel finds that because Stephanie Dibenardo is the President and sole member of the board of directors of Dr. Geeks, Inc., both Respondents are effectively controlled by the same person, namely, Stephanie Dibenardo herself, and should be considered a single Respondent for the purposes of these proceedings.

 

 

Identical and/or Confusingly Similar

 

Although Complainant does not have a trademark registration for the FRESNEL PRISM mark, previous panels have determined that a federal registration is not required to establish rights in a mark.  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

The Panel finds that Complainant has established common law rights in the FRESNEL PRISM mark for purposes of Policy ¶ 4(a)(i) through its continuous use of the mark in commerce since at least as early as 1999.  See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).

 

Complainant contends that Respondent’s <fresnelprism.com> and <fresnelprism.net> domain names are identical to its FRESNEL PRISM mark. Both the <fresnelprism.com> and <fresnelprism.net> domain names differ from Complainant’s mark in the same two ways: (1) in each case, the space has been removed from the mark; and (2) in each case, a generic top-level domain (“gTLD”) – “.com” and “.net,” respectively – has been added to the mark.  The Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s disputed domain names are identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the complainant’s mark, RADIO SHACK); see also Daedong-USA, Inc.  v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

 

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names.  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 names.  The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record.  In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).

 

Complainant contends that Respondent is not commonly known by the disputed domain names, nor has it ever been the owner or licensee of the FRESNEL PRISM mark.  The WHOIS records for the disputed domain names list the Respondent as “Dr. Geeks, Inc.” and “Stephanie Dibenardo.”  In addition, Respondent has failed to show any evidence contrary to Complainant’s contentions that Respondent has never conducted business under the FRESNEL PRISM name.  The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Both disputed domain names redirect Internet visitors to Respondent’s commercial website, which is entirely unrelated to Complainant’s FRESNEL PRISM mark. The Panel finds that this use of the disputed domain names 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is gaining commercially from the diversion of Internet visitors, looking for Complainant’s website, to Respondent’s websites to which the disputed domain names redirect.  The Panel finds that this is an intentional use of the disputed domain names for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is evidence of registration and use in bad faith.  See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). 

 

Complainant also contends that, after Complainant hired Respondent in 2000 to host and maintain Complainant’s website resolving from the <fresnelprism.com> domain name (which Complainant implies that it, and not Respondent, had registered in 1999), Respondent at some point took over and appropriated Complainant’s registration of the <fresnelprism.com> domain name.  Complainant also alleges that Respondent was in no way authorized by Complainant to take over that registration.  In light of Respondent’s agency relationship with Complainant, the Panel presumes that Respondent had notice of Complainant’s rights in the FRESNEL PRISM mark, and therefore, the Panel finds that Respondent’s appropriation of the <fresnelprism.com> domain name is also evidence that Respondent has registered and used the <fresnelprism.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).   

 

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 <fresnelprism.com> and <fresnelprism.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 22, 2009

 

 

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