Two Cats And A Cup Of Coffee, LLC v. Attn: helpalocalreporter.com c/o BlueHost.com- INC
Claim Number: FA0904001259290
Complainant is Two Cats And A Cup Of Coffee, LLC (“Complainant”), represented by Jerry S. Goldman, of Anderson Kill & Olick, P.C., New York, USA. Respondent is Attn: helpalocalreporter.com c/o BlueHost.com- INC (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <helpalocalreporter.com>, registered with FastDomain Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 28, 2009.
On April 28, 2009, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <helpalocalreporter.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 May 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 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@helpalocalreporter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <helpalocalreporter.com> domain name is confusingly similar to Complainant’s HELP A REPORTER mark.
2. Respondent does not have any rights or legitimate interests in the <helpalocalreporter.com> domain name.
3. Respondent registered and used the <helpalocalreporter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Two Cats And A
Cup Of Coffee, LLC, has used its HELP A REPORTER mark continuously since March
20, 2008 in connection with “providing a service of bringing together persons
who have a need for certain information with persons who possess that
information and wish to share it.”
Complainant’s services are offered on the Internet through its website resolving
from the <helpareporter.com> domain name.
Complainant has acquired over 70,000 subscribers to its services, and
has been the subject of unsolicited media attention from various outlets.
Respondent registered the <helpalocalreporter.com> domain name on October 30, 2008. The disputed domain name resolves to a website that offers a similar service of connecting people who have a need for certain information that directly competes with Complainant. In addition, Respondent offered to sell the disputed domain name to Complainant for $8,500.
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.
In order to establish rights in a mark under Policy ¶
4(a)(i), Complainant need not hold a registration of that mark provided Complainant
can show common law rights through sufficient secondary meaning. See Zee TV USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant
need not own a valid trademark registration for the ZEE CINEMA mark in order to
demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant may establish common law rights in the HELP A REPORTER mark by making a sufficient showing of secondary meaning in the mark. The Panel finds that Complainant has made a sufficient showing of secondary meaning, and thus Complainant has established common law rights in the HELP A REPORTER mark under Policy ¶ 4(a)(i) due to its continuous use in commerce, unsolicited media attention, and acquiring over 70,000 subscribers of its service since March 20, 2008. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Respondent’s <helpalocalreporter.com> domain name contains Complainant’s entire mark, merely inserts the term “local” into Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that none of the aforementioned additions to Complainant’s mark sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that Respondent’s <helpalocalreporter.com> domain name is confusingly similar to Complainant’s HELP A REPORTER mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”).
Respondent’s confusingly similar <helpalocalreporter.com> domain name resolves to a website that offers a similar service
that directly competes with Complainant.
The Panel finds that this use diverts Internet users to a competing
website and is therefore not a bona fide offering
of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site);
see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb.
Forum Nov. 20, 2003) (finding that the respondent used a domain name for
commercial benefit by diverting Internet users to a website that sold goods and
services similar to those offered by the complainant and thus, was not using
the name in connection with a bona fide offering of goods or services
nor a legitimate noncommercial or fair use).
Furthermore, Respondent is listed in the WHOIS information
as “Attn: helpalocalreporter.com c/o
BlueHost.com- INC,” which does not indicate that Respondent is commonly
known by the <helpalocalreporter.com>
domain name. Respondent has not offered any evidence to
indicate otherwise. The Panel finds that
Respondent is not commonly known by the disputed domain name under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); 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.”).
Finally, the Panel finds that Respondent’s offer to sell the <helpalocalreporter.com> domain name to Complainant for $8,500, which is more than the out-of-pocket costs associated with registering the disputed domain name, is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s
offer to sell the <helpalocalreporter.com>
domain name to Complainant for $8,500, which
is more than the out-of-pocket costs associated with registering the disputed
domain name, is evidence of bad faith registration and use under Policy ¶
4(b)(i). See George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the
respondent registered and was using the <gwbakeries.mobi> domain name in
bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far
more than its estimated out-of-pocket costs it incurred in initially registering
the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)).
In addition, the Panel finds that Respondent is using the confusingly similar disputed domain name to divert Internet users to its competing website. Therefore, the Panel finds that this diversion disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Finally, Respondent is using
the <helpalocalreporter.com> domain name to promote its own competing business. Accordingly, the Panel finds that
Respondent’s use of the disputed domain name to commercially gain from that use
creates a likelihood of confusion and constitutes bad faith registration and
use under Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)); see
also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
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 <helpalocalreporter.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 15, 2009
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