Straight Arrow Products,
Inc. v. Tom Stevens c/o straightarrow
Claim Number: FA0904001257225
PARTIES
Complainant is Straight Arrow Products, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <straightarrow.us>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that she acted independently and impartially
and that to the best of her knowledge she has no known conflict in serving as
Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically April 10, 2009;
the Forum received a hard copy of the Complaint April
14, 2009.
On April 13, 2009, Godaddy.com, Inc. confirmed by e-mail to the
Forum that the <straightarrow.us> domain name is registered with Godaddy.com,
Inc. and that Respondent is the current registrant of the name. Godaddy.com,
Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with the U.
S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 22, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 12, 2009, by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On May 19, 2009, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the 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 name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following contentions in this proceeding:
1. Respondent registered the domain name <straightarrow.us> that is identical to Complainant’s STRAIGHT ARROW mark.
2.
Respondent has no rights to or legitimate
interests in the <straightarrow.us>
domain name.
3.
Respondent registered and used the <straightarrow.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Straight Arrow Products, Inc., is a leading company in the hair and skin products industry for humans and pets. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STRAIGHT ARROW mark (i.e. Reg. No. 1,923,210 issued October 3, 1995).
Respondent
registered the <straightarrow.us> domain name March 24,
2009. Respondent’s disputed domain name previously resolved to a website offering third-party links
unrelated to Complainant. Currently,
Respondent is failing to make an active use of the disputed domain name.
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.”
Given Respondent's
failure to submit a Response, the Panel shall decide this administrative
proceeding on the basis of the Complainant's undisputed representations
pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw such
inferences as the Panel 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 Complainant to 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; and
(2) Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
to and/or Confusingly Similar
Complainant contends that its
rights in the STRAIGHT ARROW mark have been established pursuant to Policy ¶
4(a)(i) by its trademark registration with the
USPTO. The Panel finds that Complainant
established such rights in the mark pursuant to Policy ¶ 4(a)(i)
based upon the registration with the USPTO.
See McCarthy on Trademarks
and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the Policy);
see also Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant asserts
that Respondent’s <straightarrow.us> domain name is confusingly
similar to Complainant’s STRAIGHT ARROW mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, omits a space and adds the country-code
top-level domain (“ccTLD”) “.us.” The
Panel finds that the addition of a ccTLD and the omission of a space are
irrelevant in distinguishing a disputed domain name from a registered
mark. See Lifetouch, Inc. v. Fox
Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (“The
addition of ‘.us’ to a mark fails to distinguish the domain name from the
mark pursuant to the Policy.”); see also
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights
to or Legitimate Interests
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). Once
Complainant does so, the burden shifts to Respondent to show that it it does have
such rights or legitimate interests in the <straightarrow.us> domain name. The Panel finds that Complainant made the
required prima facie showing. See 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 UDRP ¶ 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 AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first 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
interests in the subject domain names.”).
The Panel finds that Respondent did not present any evidence demonstrating that it is the owner or beneficiary of a mark identical to the <straightarrow.us> domain name. Therefore, the Panel finds that Respondent cannot satisfy Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that
Respondent is neither commonly known by nor licensed to register the disputed domain name. Respondent’s WHOIS information identifies
Respondent as “Tom Stevens, straightarrow.”
The Panel finds that Respondent’s failure to respond to the Complaint
and the absence in the record of any affirmative evidence that Respondent is
commonly known by the disputed domain name, Respondent is not commonly known by
the disputed domain name. Therefore,
pursuant to Policy ¶ 4(c)(iii), the Panel finds that Respondent lacks rights
and legitimate interests in the disputed domain name. 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 Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA
214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though
Respondent’s WHOIS information lists Respondent’s name as ‘o.
operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no
evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>]
domain name.”).
Respondent’s <straightarrow.us> domain name previously resolved to a website offering
third-party links unrelated to Complainant.
The Panel finds that Respondent is using the disputed domain name
to earn click-through fees. The Panel also finds that Respondent’s use of
the disputed domain name is not a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(ii), and it is not a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iv). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27,
2007) (holding that the operation of a pay-per-click website at a confusingly
similar domain name was not a bona fide offering
of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair
use under UDRP ¶ 4(c)(iii)); Constellation
Wines U.S., Inc. v.
In addition, Respondent’s disputed domain name currently
resolves to a blank website. The Panel
finds that Respondent’s failure to make an active use of the disputed domain
name is further evidence that Respondent lacks rights and legitimate interests
in the disputed domain name. See George Weston
Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had
no rights or legitimate interests in a domain name under either UDRP ¶ 4(c)(i)
or UDRP ¶ 4(c)(iii) where it failed to make any active use of the domain name);
see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the
respondent’s failure to use the disputed domain name for several years was not
a bona fide offering of goods or services pursuant to
UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶
4(c)(iii)).
The Panel finds that Complainant satisfied
the elements of ICANN Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Complainant alleges that
Respondent’s prior use of the disputed domain name as a means of intentionally
attracting Internet users to its website by creating a strong possiblity of
confusion with Complainant’s mark and Respondent’s offering of links to
unrelated websites both constitute evidence of bad faith. The Panel finds that Respondent receives
click-through fees for diverting Internet users to such websites. The Panel additionally finds, pursuant to
Policy ¶ 4(b)(iv), that such use of the disputed domain names also constitutes bad faith registration and
use. 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 The Ass’n of Junior Leagues Int’l Inc. v. This Domain
Name My Be For
Further, Complainant argues that Respondent’s current failure to make an active use of the disputed domain name at the current time also supports findings of bad faith. The Panel finds that Respondent’s non-use supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <straightarrow.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 2, 2009.
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