The Exploratorium v. port80cafe a/k/a Pat Zollinger
Claim Number: FA0906001269220
Complainant is The Exploratorium (“Complainant”), represented by David C. Lee, of Fitzgerald Abbott & Beardsley LLP, California, USA. Respondent is port80cafe a/k/a Pat Zollinger (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <edisonexploratorium.com> and <edisonexploratorium.org>, registered with GoDaddy.com, 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 June 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2009.
On June 19, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <edisonexploratorium.com> and <edisonexploratorium.org> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 June 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 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@edisonexploratorium.com and postmaster@edisonexploratorium.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edisonexploratorium.com> and <edisonexploratorium.org> domain names are confusingly similar to Complainant’s EXPLORATORIUM mark.
2. Respondent does not have any rights or legitimate interests in the <edisonexploratorium.com> and <edisonexploratorium.org> domain names.
3. Respondent registered and used the <edisonexploratorium.com> and <edisonexploratorium.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
In 1969, Dr. Frank Oppenheimer founded The Exploratorium, an innovative science museum, in an effort to advance the joys of discovery and learning. Complainant, The Exploratorium, is the owner of the EXPLORATORIUM mark, registered with the United States Patent and Trademark Office (Reg. No. 936,318 issued June 20, 1972). The primary museum is located in San Francisco, California; however, Complainant’s EXPLORATORIUM exhibits are currently featured in sixty-six museums in the United States and fifty-eight international science centers. Complainant’s prominence extends to its products as well; Complainant distributes scientific books, action figures, educational games, and hobby craft kits.
Respondent registered the <edisonexploratorium.com> and <edisonexploratorium.org> domain names on April 30, 2004. The disputed domain names are being used to resolve to a commercial website that promotes a science museum that specifically competes with the San Francisco Exploratorium, and markets for sale products that are identical to and in direct competition with Complainant’s products.
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.
Complainant satisfied Policy ¶ 4(a)(i) based on the registration of its EXPLORATORIUM mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s disputed domain names each contain Complainant’s EXPLORATORIUM mark in its entirety with the addition of the suggestive term “edison” and the addition of the generic top-level domains “.com” or “.org.” The Panel finds that these alterations are insufficient to create a distinction between Complainant’s EXPLORATORIUM mark and Respondent’s disputed domain name pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also MGW Group, Inc. v. Vivian Kavroudakis d/b/a Staci's Cookie Bouquet, FA 102861 (Nat. Arb. Forum Feb. 4, 2002) (“The addition of a name to another’s mark does not create a distinct mark capable of overcoming a claim of confusingly similar.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Thus, the Panel concludes that Respondent’s <edisonexploratorium.com> and <edisonexploratorium.org> domain names are confusingly similar to Complainant’s EXPLORATORIUM mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must establish that it has rights and that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant produced a sufficient prima facie case showing rights and allegations that Respondent has no such rights. Thus Complainant met its burden and the burden shifts to Respondent to come forward with proof that it has rights to or legitimate interests in the disputed domain names. Respondent failed to respond to the allegations against it. Therefore, the Panel may presume that Respondent lacks rights or legitimate interests in the disputed domain names. Nonetheless, the Panel will examine the record to determine whether evidence suggests that Respondent has any rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The disputed domain names each resolve to a commercial website promoting a museum that is in competition with Complainant. The Panel finds that Respondent’s use of the <edisonexploratorium.com> and <edisonexploratorium.org> domain names, to operate a commercial website in direct competition with Complainant in the museum industry, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); 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).
Complainant further contends that Respondent is attempting to pass itself off as Complainant by prominently displaying its EXPLORATORIUM mark on the disputed domain names’ resolving websites. Complainant also states that Respondent is attempting to solicit donations under Complainant’s mark. The Panel finds that such use of the disputed domain names for financial gain is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Respondent is not commonly known by the disputed domain names and is not authorized to use its EXPLORATORIUM mark. The WHOIS information lists the registrant as “port80cafe a/k/a Pat Zollinger.” This evidence, together with the fact that Respondent has failed to show any evidence contrary to Complainant’s contentions, establishes that Respondent is not commonly known by either the <edisonexploratorium.com> or <edisonexploratorium.org> domain names pursuant to 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the confusingly similar domain names, to divert Internet users to Respondent’s competing website, presumably disrupts Complainant’s business. Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); 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).
Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by intentionally creating a likelihood of confusion for commercial gain as to Complainant’s affiliation with Respondent’s confusingly similar domain names and the resolving websites. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Further, Respondent’s use of the disputed domain names, to pass itself off as being affiliated with Complainant, constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . .”).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edisonexploratorium.com> and <edisonexploratorium.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 4, 2009
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