National Arbitration Forum

 

DECISION

 

Disabled American Veterans v. NA N/A

Claim Number: FA0906001270268

 

PARTIES

 

Complainant is Disabled American Veterans (“Complainant”), represented by Daniel T. Batten, of Greensfelder, Hemker & Gale, P.C., Missouri, USA.  Respondent is NA N/A (“Respondent”), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <dav.com>, registered with Enom, 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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2009.

 

On June 24, 2009, Enom, Inc. confirmed by e-mail to the Forum that the <dav.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 27, 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@dav.com by e-mail.

 

A timely Response was received and determined to be complete on July 20, 2009.

 

A timely Additional Submission was received from the Complainant in accordance with The Forum’s Supplemental Rule No. 7.

 

On July 23, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complainant contends that the domain name is identical to Complainant’s registered trademark, DAV.  Complainant further contends that Respondent has not used the domain name in connection with any legitimate offering of goods or services and that Respondent is not commonly known by the domain name.  Complainant further contends that Respondent registered the domain name for the primary purpose of selling it.  Complainant contends that Respondent “is a known cybersqutter” who has engaged in a pattern of bad faith registrations.

 

B.     Respondent

 

Respondent contends there has been no confusion between the services which it offers and the services offered by the Complainant.  Respondent denies he acquired the domain name for the purpose of selling it, contending that Complainant has offered no evidence to support this contention.  Respondent also contends that Complainant has failed to offer any evidence to support the assertion that Respondent is a cybersquatter.

 

C.     Additional Submissions

 

In its Additional Submission Complainant contends it is not its burden to establish actual confusion between its trademark and Respondent’s domain name.  Complainant states that Respondent has not denied that he knew of the Complainant when he registered the domain name and that the domain name is being used to redirect Internet traffic to a profit-making chat room.

 

 

 

 

 

FINDINGS

 

Complainant has established rights in the DAV mark via its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,620,088 issued Sep. 17, 2002 filed Dec. 21, 2000).  Complainant also has established common law rights in the mark via the continuous use of its well known in connection with services offered to disabled veterans.  The Complainant has established common law rights dating back at least prior to 1997, the year the disputed domain name was registered. 

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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

 

Complainant has established rights in the DAV mark via its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,620,088 issued Sep. 17, 2002 filed Dec. 21, 2000).  Pursuant to Policy ¶ 4(a)(i), the Panel finds that registration of the DAV mark with the USPTO establishes Complainant’s rights in the DAV mark.   Moreover, Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i) prior to the USPTO filing date.  Complainant claims that it has established common law rights in the DAV mark via its continuous use of the mark since 1920 in connection with services offered to disabled veterans.  The Panel finds, and Respondent does not contest, that secondary meaning has been established connecting the DAV mark to Complainant.  Thus, the Panel finds that Complainant has established common law rights under Policy ¶ 4(a)(i) dating back at least prior to 1997, the year the disputed domain name was registered.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); 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 correctly alleges that the <dav.com> domain name contains its DAV mark in its entirety followed by the generic top-level domain (gTLD) “.com.”  It is well established that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  Accordingly, the Panel finds that the <dav.com> domain name is identical to Complainant’s DAV mark under Policy ¶ 4(a)(i).  See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain name.  Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).  The Panel finds Complainant has presented an adequate prima facie case to support its allegations.

 

The record supports Complainant’s assertion that it has not granted Respondent any license to use its DAV mark.   Furthermore, the WHOIS information associated with the <dav.com> domain name lists Respondent as “NA N/A.”  Thus, there is no evidence in the record that Respondent is commonly known by the <dav.com> domain name.   Accordingly, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Furthermore, the Panel finds that Respondent has not used the <dav.com> domain name for 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).  Instead, the Respondent has used the <dav.com> domain name to resolve to click-through advertising websites or redirect Internet users to chat rooms.  Neither of these uses are sufficient to establish that Respondent has rights or legitimate interests in the <dav.com> domain name under Policy ¶¶ 4(c)(i) or (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)).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered the <dav.com> domain name with the primary intent of reselling it for a substantial profit.  Although the Respondent denies this allegation, the Panel concludes that Complainant’s assertion is reasonably supported by the record.  Respondent has made no use of the domain name other than as described herein.  The record indicates that Respondent owns 800 additional domain names, and previously has been found to be in the business of selling domain names for a profit.  Grow.net, Inc. v. Walter Long d/b/a Domains.com, WIPO D2001-0902 (Oct. 22, 2001).   Thus, the Panel concludes that a reasonable inference from the record is that Respondent registered and continues to use the domain name with the intent to sell it and accordingly has done so in bad faith under Policy ¶ 4(b)(i).  Cf.  American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

 

Under Policy ¶ 4(b)(iv), a respondent is acting in bad faith when using a confusingly similar domain name to attract Internet users for commercial gain.   Respondent’s use of the domain name to redirect Internet traffic to a profit-making chat room further establishes Respondent’s bad faith.  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

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 <dav.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Bruce E. Meyerson, Panelist
Dated: August 5, 2009

 

 

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