national arbitration forum

 

DECISION

 

Cybertania Inc v. OX5 CONSULTING L.L.C

Claim Number: FA0904001258994

 

PARTIES

Complainant is Cybertania Inc (“Complainant”), represented by Leo Radvinsky, Illinois, USA.  Respondent is OX5 CONSULTING L.L.C (“Respondent”), Delaware, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myfreecam.net>, registered with GoDaddy.com, Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2009.

 

On April 23, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myfreecam.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 18, 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@myfreecam.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 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <myfreecam.net> domain name is confusingly similar to Complainant’s MYFREECAMS.COM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <myfreecam.net> domain name.

 

3.      Respondent registered and used the <myfreecam.net> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Cybertania Inc., is the owner of the MYFREECAMS.COM mark, registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 3,495,750, issued September 2, 2008).  Complainant uses the MYFREECAMS.COM mark in conjunction with the transmission of picture and video in adult-themed interactive discussions on Complainant’s website. 

 

Respondent registered the <myfreecam.net> domain name on May 29, 2005.  Respondent is using the domain name to resolve to a website offering sponsored click-through links that further resolve to various commercial websites, including those of Complainant’s competitors.  Respondent has no affiliation with Complainant’s MYFREECAMS.COM mark. 

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established its rights in its MYFREECAMS.COM mark based on its registration of the mark with the USPTO under Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). 

 

Complainant alleges that the disputed domain name is confusingly similar to Complainant’s MYFREECAMS.COM mark.  Complainant argues that Respondent’s domain name incorporates the dominant portion of Complainant’s MYFREECAMS.COM mark.  Complainant alleges that the substitution of the generic top-level domain “.net” for “.com” does not negate the finding of confusing similarity under Policy ¶ 4(a)(i).  The Panel finds that the top-level of the domain name does not affect the domain name for the purpose of determining whether it is confusingly similar to Complainant’s mark.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Complainant further alleges that the deletion of the letter “s” from Complainant’s mark fails to adequately distinguish Respondent’s <myfreecam.net> domain name from Complainant’s MYFREECAMS.COM mark.  The Panel concludes that the omission of one letter is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). 

Thus, the Panel finds that Complainant’s MYFREECAMS.COM mark and the disputed domain name are confusingly similar under Policy ¶ 4(a)(i). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights or legitimate interests in the <myfreecam.net> domain name.  For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must meet its burden of production for its prima facie case, and then the burden is shifted to Respondent.  Respondent must bring themselves within the purview of Policy ¶ 4(c), or put forward some other reason why it can fairly be said to have relevant rights or legitimate interests in relation to the domain name in question.  In this case, Respondent failed to respond to the Complaint.  Based on Respondent’s failure to contest the allegations against it, the Panel may accept as true all reasonable allegations made by Complainant.  Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence presented produces any rights or legitimate interests for Respondent under Policy ¶ 4(c).  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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 alleges that Respondent is not authorized to use the MYFREECAMS.COM mark and therefore has no rights or legitimate interests in the <myfreecam.net> domain name.  Complainant further alleges that Respondent is not commonly known by the disputed domain name.  The WHOIS information lists Respondent as “OX5 Consulting L.L.C.,” which suggests that Respondent is not commonly known by the disputed domain name.  The Panel finds no evidence in the record to suggest that Respondent is commonly known by the <myfreecam.net> domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). 

 

Complainant also alleges that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is using the domain name solely to divert Internet users, which does not constitute a bona fide offering of goods and services or a noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).  Complainant asserts that Respondent is using the disputed domain name as a parked website containing various links to websites competing with Complainant, presumably earning click-through fees.  The Panel finds that this use is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also 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 Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).  Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name. 

 

Complainant has satisfied Policy ¶ 4(a)(ii).    

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  Complainant asserts that Respondent is using a confusingly similar domain name to attract Internet users to a website containing commercial links to Complainant’s competitors’ websites, and that such use represents bad faith registration and use under Policy ¶ 4(b)(iii).  The Panel finds that appropriating Complainant’s MYFREECAMS.COM mark to divert Internet users seeking Complainant’s website to Respondent’s website at the <myfreecam.net> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). 

 

Complainant also alleges that Respondent’s use of the disputed domain name constitutes bad faith based on Respondent’s intentional attempt to attract Internet users to Respondent’s website for commercial gain under Policy ¶ 4(b)(iv).  The Panel finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is presumably earning click-through fees based on the likelihood of confusion between Complainant’s MYFREECAMS.COM mark and Respondent’s <myfreecam.net> domain name and resolving website.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Complainant has satisfied Policy ¶ 4(a)(iii). 

 

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 <myfreecam.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  June 3, 2009

 

 

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